Inclusion of Names of Alcohol Beverages, Which are Geographical Indications, in Composition of Trademarks: Problems of Theory and Practice
Keywords: intellectual property, means of individualization, trademark, exclusive rights, registration of a trademark, examination of application for a trademark, word trademark, registration of a geographical name, Appellation of Origin and a trademark, registration of a trademark for alcohol beverages
Trademarks are the designations that serve to individualize the goods of legal entities or individual entrepreneurs. The legal protection on the territory of the Russian Federation is granted to the trademark subject to its registration by the Federal Executive Authority on Intellectual Property – Rospatent.
In theory, trademarks can be divided into different categories, one of which includes the marks that represent geographical names or which include the name of a particular geographical object as an element. Such trademarks have an individual specificity, which leads to certain peculiarities at the registration.
The requirements for the trademarks are stipulated in the Civil Code as grounds for refusing to register them. Among other things, the following prohibition can be attributed to absolute grounds for refusing the registration: “The designations shall not be registered officially as trademarks, if they represent or contain the elements ... 1) which are false or capable of misleading the consumer about the goods or its manufacturer ...” (Clause 3 of Article 1483 of the Civil Code of the Russian Federation).
As examples of false or misleading designations, it is just possible to bring those in which there is any geographical name without sufficient grounds. For example, the designation contains the name of a particular state or settlement with which the manufacturer of goods and services is neither formally nor actually connected; he is not registered there, he does not carry out activities there, etc. Consequently, the buyer can be misled by assuming that the inclusion of a geographical name in the trademark indicates to the association of the goods with a particular geographical object, although in fact there is no such association. Also, the buyer may think that the goods have individual characteristics associated with such a false “origin,” for example, improved quality, what is also not true. The manufacturer of a product or service, in turn, can get unjustified competitive advantages.
In accordance with Clause 37 of the Rules of Rospatent, “... during the examination of the applied designation, the compliance of the applied designation with the requirements of Clause 3 of Article 1483 of the Code shall be checked. When considering the question of the falsity or the ability of the designation to mislead the consumer about the product or its manufacturer, it shall be taken into account that such designations include, in particular, the designations that generate in the consumer’s mind an idea on a particular quality of the product, its manufacturer or the appellation of origin, which is not true. If at least one of the designation's elements is false or misleading, the designation shall be deemed false or misleading.”
Therefore, when registering the trademarks containing geographical names, the problems may arise: Rospatent may refuse to register them. There is a well-developed practice concerning the designations applied for alcohol products. However, here the possible difficulties of the registration are connected not only with the grounds, which are stipulated in Clause 1483 of the Civil Code of the Russian Federation.
Another aspect of this problem is filing for registration the designations, containing the appellation of origin (hereinafter referred to as “AO”), which are independent subject-matters of intellectual property. In accordance with Article 1516 of the Civil Code, the AO is “... the designation representing or containing either a modern or historical, official or unofficial, full or abbreviated name of the country, urban or rural settlement, locality or other geographical object, as well as the designation, which is a derivative of such a name, and which has become famous as the result of its use with respect to the product, the particular properties of which are exclusively or mainly determined by the natural conditions and (or) human factors, which are characteristic of this geographical object. The use of this name can be recognized as the exclusive right ... of the manufacturers of such a product.”
Currently, the position of Rospatent in this issue is as follows: any designation that includes the registered AO, while the applicant does not have the right to use the AO, can not be registered as a trademark. However, on the territory of the Russian Federation there is an exclusive right to the use of the appellation of origin registered by Rospatent. If the AO is registered on the territory of another state, it shall not receive a legal protection in Russia automatically.
Champagne and Burgundy wines, cognac, port wine, etc., being one of the most well-known in the world AO, are just among those appellations of origin that have not received such formal legal protection in Russia.
If, for example, to take a closer look at “champagne” and “cognac,” then, in accordance with the French legislation, certain alcohol beverages can be called so only if they are produced according to the appropriate technology in particular regions of the country.
For example, champagne is sparkling wine produced in the French region Champagne from particular grape varieties by the method of secondary fermentation of wine in a bottle. The name of the beverage comes from the name of province Champagne, where this region is located. Under the auspices of the “Interprofessional Committee of Champagne Wines,” the comprehensive set of rules and regulations for all wines from this region has been developed.
Cognac is a strong alcohol beverage, which is produced from particular grape varieties by a specific technology in region Charente (France). The beverage has received its name from the name of the city of Cognac, which its appearance is associated with. The geographic boundaries of the area in which the manufacture of cognac is allowed, the production technology and name “Cognac” itself are strictly regulated and enshrined in numerous legislative acts of France. Strong beverages from other countries, as well as the beverages manufactured in France outside the indicated region, shall not have the right to be called cognac on the international market. They are called “brandy.”
The legislation of many countries protects the regions of the wine manufacture, such as Champagne. However, some states do not introduce such rules.
France, since the early 1990s, has been appealing to Russia with the demand not to use for the Russian alcohol products the names that are inextricably connected with France and which are protected within the country. This issue has repeatedly been raised during the official visits.
The fact is that such designations as “champagne” and “cognac” have been famous in the USSR long before the foreigners began to lay claim to them. And they have come into general use as specific names of the goods. So, brand “Sovetskoe Shampanskoe” was developed in 1928 by the Council of National Economy (Sovnarkhoz). The manufacture of this sparkling wine was started in the USSR in 1937, and it became an established brand on the alcohol market of the USSR, and then on the alcohol market of the CIS countries.
Nevertheless, in the long run, Russia has established the legislative requirements related to this problem.
Clause 5 of Article 1483 of the Civil Code of the Russian Federation reads: “In accordance with the international treaty of the Russian Federation, the official registration of designations as trademarks shall not be allowed for the designations representing or containing the elements that are protected in one of the member states to this international treaty as the designations, that allow identifying the wines or alcohol beverages, as originating from its territory (manufactured within the boundaries of the geographical object of this state) and having a particular quality, reputation or other characteristics, that are mainly determined by their origin, if the trademark is intended for the designation of the wines or alcohol beverages not originating from the territory of this geographical object ...”
Apparently, this provision of the Russian legislation contains a reference to the TRIPS, the Agreement on Trade Related Aspects of Intellectual Property Rights, which is a part of the set of the documents on the creation of the World Trade Organization. The TRIPS rules are tougher in this respect: “... Each member shall provide legal measures for the interested parties to prevent the use of a geographical indication identifying wines for the wines, which do not originate from the place that is in the geographical indication or which identify strong alcohol beverages, for strong alcohol beverages that do not originate from the place, which is in this geographical indication, even if the true origin of these goods is indicated, or the geographical indication is used in translation or accompanied by such expressions as “kind,” “type," "in style," “imitation” or “similar to them.”
Currently, the products that in Russia can be called “champagne” and “cognac,” are sent for export under the name “sparkling wine” and “brandy.” Even “Sovetskoe Shampanskoe” can exist only in the Russian language and in this form it can be realized only on the territory of the Russian Federation. It enters the international market as “Soviet Sparkling” (“Sovetskoe Igristoe”).
As follows from the aforesaid, the conditions for the registration of trademarks, which are the geographical names (or which contain the geographical names), for alcohol beverages are quite specific. Currently, Russia recognizes the exclusive rights of the respective manufacturers (and the countries) to such names as “champagne,” “cognac,” etc. As a consequence, the inclusion of the names of the beverages typical for particular territories, such as “brandy,” “champagne,” “tequila,” “calvados” and some others by the manufacturer from another country should result in the refusal of the registration on the grounds of misleading with respect to the country of the origin of the goods.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63