The first practice of the registration of geographical indications
On July 27, 2020, the amendments to Part 4 of the Civil Code of the Russian Federation dedicated to the introduction of the new legal Institute of the geographical indications in Russia came into force.
A prerequisite was a disproportionate ratio of the high level of the development and promotion of the products manufactured with the use of the preserved folk crafts in the regions of Russia, and the relatively low volume of the registered means of individualization, where an indication to the geography of the place of origin of such products is used. Thus, according to the data presented during the Rospatent conference, only about 150 designations were registered since the establishment of the Institute of the name of the places of origin of products from 1992 and up to 2017.
There are several reasons for such state of affairs. Firstly, local manufacturers do not always understand the expediency of registering the designations that distinguish the product according to a territorial feature. Secondly, many entrepreneurs prefer to register trademarks because of the absolute and monopoly nature of having the exclusive rights. However, not all applicants are aware of the fact that the element indicating to the place of the manufacture in this case will likely be withdrawn from the scope of legal protection and it will become unprotected. Thirdly, in order to register a subject matter as the name of the place of origin of the product, the legislator lodges a number of requirements that not all regional manufacturers can fulfill. Namely: all stages of the manufacture of the products should take place on the territory of the geographical subject matter and the authorized state body should issue its opinion that the product is actually manufactured on the territory of the subject and it complies with the requirements of Paragraph 1 of Article 1516 of the Civil Code of the Russian Federation.
In 2017, the promotion and popularization of regional brands began. From 2017 up to 2019, 133 names of the place of origin of the products were registered. Thus, the indicators obtained over three years of the active state policy in this direction almost reached the number of the subject matters registered over the previous 19 years.
In order to continue the development of the regional manufacture, the increase of the level of the registration of the designations related to the geography of the origin, as well as within the framework of the fulfilment of international agreements, it was decided to introduce a new subject matter of intellectual property – a geographical indication.
The scope of legal protection of this means of individualization and the differences from the name of the place of origin of the products are considered and disclosed in detail in the article: “A name of the place of origin of the product and a geographical indication: what will the difference be?”.
In this article, we offer to consider the specific issues of the registration and the use of the geographical indications, which were raised by the specialists of Rospatent during an online conference:
- According to Paragraph 3 of Article 1522 of the Civil Code of the Russian Federation, to register the geographical indication, one should provide: “... the documents confirming that the applicant manufactures the product that has the relevant characteristics, which are largely related to its geographical origin, as well as the information indicated in Paragraph 2 of this Article.”
When filing an application regarding the name of the place of origin of the product, the opinion of the authorized body plays a confirming role. In the case of the geographical indications, the legislator does not disclose a list of the documents that should be provided. However, it is necessary to confirm a certain quality, reputation or other properties of the products, which are largely related to its geographical origin (the characteristics of the product). The representatives of the Patent Office explained that these should include: the specifications or the standards of the manufacture developed by the manufacturer; a test report of the finished products; publications in scientific, historical and literary sources and mass media; the copies of the diplomas of the national or international exhibitions or the fairs, where the product with that designation had been displayed; the results of the consumer surveys on the special qualities or characteristics of the product, which were largely related to the geography of the place of the manufacture, as well as other documents that, in the applicant’s opinion, confirmed the relationship between the properties of the product and the territory of origin.
- How long will the procedure for the state registration of the geographical indications last?
The Rospatent experts noted that due to the existing legal norms, the minimum period for considering the application and making a decision will be 4 months.
- Is it permitted to register the trademark that includes the geographical indication as an element?
Yes, if the applicant is the owner of the right to the geographical indication, the designation itself will be the unprotected element included in the trademark. The Rospatent representatives also paid special attention to some legal consequences of registering such designation: if the right holder lost subsequently the possibility to use the geographical indication, the trademark could also be invalidated.
- What will the Register of the Geographical Indications look like?
It was decided to create the Unified State Register of the Geographical Indications and the Names of the Places of Origin of the Products of the Russian Federation. Numbering the new registered subject matters will be continued taking into account the certificates that have already been granted.
Despite the fact that less than a month passed since the changes came into force, 3 applications were already filed by the applicants for the registration of the geographical indications. According to the official information, it is planned to protect such designations as:
- “NALCHIKSKIY” for such products as “soft drinks; mineral and sparkling beverages; fruit beverages and juices; syrups and other compositions for the manufacture of soft drinks.”
- “NALCHIKSKIY” for such products as “sparkling beverages and other soft drinks, including sparkling juice-containing beverages and lemonades manufactured in the city of Nalchik from the local fruit and berry raw materials and the local mineral water” (in respect of another applicant).
- “NAPA VALLEY” for the product “wines.”
In conclusion, it should be noted that the main purpose of the introduction of the geographical indications in Russia is to support and to encourage the manufacture of the products at the territory of the regions. The analysis and the character of this legal concept allows making the optimistic forecasts for increasing the applicant activity in the field of the registration of the designations indicating to the territory of the manufacture.