A name of the place of origin of the product and a geographical indication: what will the difference be?
The creation of a bill draft on amending and supplying the norms of Part 4 of the Civil Code of the Russian Federation that stipulate the introduction of a new subject matter of intellectual property – a geographical indication has become a positive consequence of the state policy regarding the development of folk crafts, as well as of the support of the local manufacturers. Taking into account the availability of the institution of geographical indications in other countries, it is necessary to speak about its novelty within the limits of Russian legislation.
The geographical indication as a designation distinguishing the products
The geographical indications are the means of individualization, however, they are usually compared not with the trademarks that are popular in this field, but with the names of the places of origin of products that are less commonly registered. The reason for such state of affairs lies in the following circumstances:
- Both types of the designations contain an indication to the name of the geographical subject matter, which peculiarities determine the specific characteristics or indicators of the product.
- The territory, which name (or its derivative) is used, must be the place of the manufacture of the product distinguished with the help of this designation.
- It is permissible to use one means of individualization by an unlimited number of the persons, who have obtained the right to use the designation independently from each other.
- There are only a part of the elements of a fantasy character in the geographical indications and the names of the places of origin of products, compared to trademarks. First of all, such designations are aimed at the emergence of a consumer’s association between the peculiarities of the product and the geography of the place of origin. Therefore, the main role is given to the word element pointing to the name of the territory.
The differences of the geographical indications from the names of the places of origin of products
The following can be given as the examples of the means of individualization under consideration:
The similarity of the designations is traced during a comparative analysis, and a doubt in justification of the simultaneous existence of the geographical indication and the name of the place of origin of the product arises. Why is it allowed registering two, as it seems at the first glance, means of individualization being identical in the character and content? In this case, it should be noted that, despite the presence of a number of the similar features, the concepts being studied also possess the peculiarities that will allow explaining the need for both legal institutions.
The differences between the geographical indications (hereinafter referred to as the GI) and the names of the places of origin of products (hereinafter referred to as the NPOP) can be classified according to the following grounds:
- Depending on the designation claimed for the registration.
The protection of any designation that allows associating the product with its place of origin is meant under the GI. Only the word designation including the name of the geographical subject matter may be registered as the NPOP.
- According to the degree of popularity of the means of individualization.
To file an application for the GI, it is permissible to be able to identify the product and the territory of origin. When registering the NPOP, it is important for the designation to become recognizable as a result of its use with respect to the product.
- Depending on the product characteristics.
In order to grant the legal protection to the GI, the applicant shall attach the information about the quality, reputation or other specific indicators of the products determined by the place of origin. In the case with the NPOP, the special properties of the product are required.
- According to the degree of the manufacture location within the geographical formation.
For the designation applying for the GI status, it is sufficient to have at least one manufacturing stage located within the specified territory. When the person applies for obtaining the right to use the NPOP, the location of all manufacture stages at the specified geographical subject matter is a prerequisite.
- Depending on the documents confirming the relationship of the exclusive characteristics of the product and the place of origin.
To register the GI, the applicant shall provide independently the information confirming the particular qualities of the products, the indicators and reputation depending on the location of the manufacture. To obtain a positive decision regarding the grant of a certificate to the NPOP, the opinion letter of the authorized federal or regional authority is required confirming that the applicant manufactures the product with the specific characteristics on the territory of the specified geographical subject matter.
- According to the protection mark, which indicates that the holder has the exclusive rights and that the designation used is registered in the Russian Federation.
The expediency of introducing the institution of geographical indications in the Russian legislation
The analysis of the differences between the legal concepts under consideration allows concluding that the registration of the subject matter as a geographical indication is more accessible and easier for the manufacturers. To obtain the right of the use to the latter, the location of at least one manufacture stage within the geographical subject matter is enough. For example, the raw materials can be brought for processing with the use of the technologies being traditional for the region, or, on the contrary, the crops grown on the territory with the unique and favorable climatic conditions will be processed subsequently at the plant located in an industrial zone. Another positive point is in the absence of the need to submit an opinion letter of the state authority, which often becomes a cornerstone in obtaining a certificate to the name of the place of origin of the product.
As it has been noted at the Federation Council session regarding the registration, legal Protection and defence of geographical indications: “... currently, there are 170 registrations of the NPOP in the Russian Federation, 135 of them are the Russian ones. At the same time, more than 3,000 geographical indications and names of the places of origin of products are protected in the European Union.” Obviously, such modest indicators are largely due to the difficulties arising while filing an application and obtaining subsequently a certificate to the name of the place of origin of the product, as well as due to a weak level of the information awareness of the regional manufacturers on the benefits of using and registering such means of individualization. It is worth assuming that the popularization of the regional brands and the introduction of the institution of geographical indications will lead to an increase in the activity of applicants and an increase in the number of the registered designations containing the geographical names located on the territory of Russia.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63