Geographical Tools for Product (Work, Service) Differentiation

As is known, trademarks (service marks) are the most popular means of individualization of goods (works, services). According to the data of the Ministry of Economic Development of the Russian Federation, as of the end of last year, Rospatent registered 86 thousand trademarks, of which more than half belong to domestic companies and citizens, and over the past year and a half their share has grown by more than a third.

However, a trademark is not the only legally protected method of distinguishing a product from similar and homogeneous ones. According to § 3, Chapter 76 of the Civil Code of the Russian Federation, this function is also performed by such means of individualization as names of places of origin of goods and geographical indications. Their peculiarity lies in the fact that individualization of a product is achieved by direct reference to its place of origin (manufacture), emphasizing the special properties (characteristics) of the product that are directly related to natural conditions or human factors. In this regard, these means of individualization are not accidentally called regional brands.

As with trademarks, geographical indications and appellations of origin are recognized and protected by virtue of their corresponding state registration. However, unlike trademarks, the composition of geographical indications or appellations of origin holders is broader: they can be registered by one or more citizens, one or more legal entities, as well as an association (union) or other union of persons (Article 1518 of the Civil Code of the Russian Federation).

At present, only 358 geographical indications and names of places of origin of goods are registered in Russia. However, despite this, their geography already covers a significant number of subjects of the Russian Federation, and given the high economic potential of such means of individualization, it is assumed that the trend of their registration will increase. In particular, in September 2024 alone, Rospatent registered 4 new geographical indications in the Republic of Crimea, St. Petersburg, Vladimir and Moscow regions.

What designation is recognized as a geographical indication

According to paragraph 1 of clause 1 of Article 1516 of the Civil Code of the Russian Federation, a geographical indication is understood to be a designation that, taken together, has the following properties:

• The designation identifies a product whose quality, reputation or other characteristics are essentially attributable to its geographical origin;
• The production of goods is directly related to the territory of the corresponding geographical object.

Thus, when filing an application for registration of a geographical indication, it is necessary to identify the product and its territory of origin, i.e. indicate the boundaries of the geographic object where it is produced. At the same time, as follows from the recommendations of Rospatent, the applicant's company must be located within the boundaries of the object that is declared. In addition, at least one of the stages of production of the goods must be within the specified territory.

The list of documents required for registration is not established by law. However, it is necessary to confirm a certain quality, reputation or other characteristics of the goods that are largely related to its geographical origin (product characteristics).

In addition, it should be taken into account that the law prohibits registering as a geographical indication designation that is similar to the point of confusion with a previously registered trademark, provided that such registration is capable of misleading the consumer regarding the product or its manufacturer.

The agency officially publishes the application for geographical indication so that the owner of an earlier similar trademark can review the application and file a corresponding protest. The deadline for filing a protest (the so-called "informal opposition") is three months from the date of publication.

This measure is aimed, among other things, at preventing the registration as a geographical indication of a designation that is similar to the point of confusion with a previously registered trademark, if the registration of a geographical indication could mislead the consumer regarding the product or its manufacturer.

An example of a geographical indication is the State Institution "Vologda Ivan Tea", which was registered with the help of experts from our company Zuykov and Partners. In particular, we were able to confirm the connection between the special properties of the product (Ivan tea) and the soil and climatic features of the territory where it grows, which directly affect its quality characteristics.

What designation is recognized as the designation of origin of goods

According to paragraph 2 of clause 1 of Article 1516 of the Civil Code of the Russian Federation, the name of the place of origin of goods is understood to be a designation that, taken together, has the following properties:

• The designation includes the name of a geographical object (country, city, settlement, locality, etc.). The name of this geographical object may be either modern or historical, official or unofficial, full, abbreviated or derived from the name of the geographical object. The main thing is that the name becomes known as a result of its use in relation to a product whose properties are determined by natural conditions and/or human factors characteristic of this object. In other words, a product accompanied by an origin of goods is unique and inimitable precisely due to the corresponding characteristic features.
• All stages of production of goods, which significantly influence the formation of its special properties, are carried out on the territory of this geographical object.

An example of the popularity of a product due to natural conditions is the mineral water "Essentuki", which has been extracted for many years only at the Essentuki deposit. This water has a unique chemical composition, which is due to its exceptional natural location.

An example of the popularity of a product due to the human factor is “Vologda lace” - a type of Russian lace woven on bobbins (wooden sticks), widespread in the Vologda region and existing as a trade from the first quarter of the 19th century to the present day.

Examples of trademarks registered by our company Zuykov and Partners include, in particular, such traditional and widely known domestic products as Kolomenskaya Pastila and Sevanskaya Trout.

Who can register a trademark "with geography"

The amendments to the Civil Code of the Russian Federation came into force, which established new rules for registering trademarks with geography.

It is important to emphasize that we are talking specifically about designations that include specific geographical names, and not concepts from the field of geography (continent, equator, meridian, parallel, mountains, sea, ocean, etc.). Rospatent notes that such concepts do not indicate a specific geographical location, and therefore cannot perform the function of a descriptive designation indicating the place of production of goods and the location of the manufacturer.

Among the most important changes, the following should be highlighted:

• A ban has been established on the registration of trademarks “with geography” in the name of applicants from other regions (for example, the combined designation “Vologda vodka” cannot be registered for an applicant from a region other than the Vologda Oblast).

Otherwise, by virtue of the new version of paragraph 3 of Article 1483 of the Civil Code of the Russian Federation, such registration would mean misleading consumers regarding the place of production of the goods. At the same time, in addition to protecting the interests of consumers, the amendment is aimed at protecting regional manufacturers of goods, for whom the right to register a trademark "with geography" remains open.

• The conditions for opposing designations applied for registration as a trademark, previously registered as geographical indication or origin of goods, have been changed.

Before the adoption of amendments to the Civil Code of the Russian Federation, a ban was established on registering a designation as a trademark if it was identical or similar to the point of confusion with a geographical indication or origin of goods. At the same time, the ban was almost absolute, since it did not depend on the homogeneity of the goods for which trademark registration was requested. The possibility of registering an identical or similar sign was allowed only for holders of the exclusive right to a geographical indication or origin of goods and only in relation to the same goods for which this right was granted.

However, in May 2023, the situation changed, and the legislator relaxed the registration regime for opposing “geographical” designations.

Thus, according to paragraph 7 of Article 1483 of the Civil Code of the Russian Federation, it is impossible to register as a trademark a designation that includes, reproduces or imitates protected geographical indication or origin of goods or designations that are applied for registration as such before the priority date of the trademark, in the following cases:

• the designation is applied for registration in relation to similar goods.

At the same time, according to the new rules, registration of a trademark is allowed in relation to similar goods both for the right holder and for the holder of the right to use the corresponding geographical indication or origin of goods. It is important to note that this element will be present in the trademark only as unprotected, and if the applicant does not have the right to the geographical indication or origin of goods, the agency will not register the trademark even with an unprotected element.

• the designation is applied for registration in relation to heterogeneous goods, but its use as a trademark will be associated by consumers with the corresponding geographical indication or origin of goods and may infringe on the legitimate interests of their owner.

As an explanation for the application of this rule, Rospatent cites the following situation as an example: the combined designation "Vologda Summer" for the product "butter" cannot be registered in the name of a person who has not been granted the right to use the NMP "Vologda Butter". However, if such a designation is applied for registration for a product that will not evoke associations with the production of "butter" and will not be similar to this product, then such a designation can be registered as a trademark.

In conclusion, we note that “geographical” individualization of goods is recognized throughout the world as one of the most effective ways to create recognition and promote goods, and in Russia, in addition, the promotion of regional brands is one of the priority areas of state policy.