The amendments to the Russian Civil Code concerning the legal protection of geographical indications have come into force

Pepeliaev Group advises that the amendments to Part 4 of the Russian Civil Code (the “Civil Code”) made by Federal Law No. 230-FZ dated 26 July 2019 have come into force. These amendments introduce in Russia a new IP item, a geographical indication, and improve the legal protection of the appellations of origin.

The above amendments came into force on 27 July 2020.

The differences between a geographical indication and an appellation of origin

A geographical indication enjoys legal protection as a means of identification if it identifies a product with the characteristics (for example, a specific quality or reputation) that are, to a significant extent, connected with its geographical origin. In addition, at least one of the product manufacturing stages that significantly affects the product’s characteristics should be carried out within the relevant geographical area[1].

The concept of and enforcement conditions for an appellation of origin have been set out in greater detail. Now the protection of an appellation of origin may be granted only to the name of a geographical area (or a derivative of such name) that has become well known as a result of it being used with regard to a product whose specific features are exclusively determined by the natural conditions and/or human factors that are typical for this geographical area. All of the stages of the product manufacturing that substantially affect the product’s specific features must be carried out within this geographical area[2].

An exclusive right to a geographical indication may be granted to any person that manufactures a product with the relevant characteristics within the corresponding geographical area.

When registering a geographical indication the applicant should provide the documents confirming that it has manufactured a product with the characteristics that are connected, to a significant extent, with its geographical origin. However, unlike the situations when an appellation of origin is registered, there is no requirement for providing an opinion of a federal executive body authorised by the Russian Government[3] or of another competent body/organisation[4].

The legal protection of geographical indications is characterised by less stringent requirements for objective characteristics of a product and their unique nature as well as by a simpler procedure for granting the legal protection. As a result a wider range of geographical names and words deriving from them may potentially become enforceable as means of identification.

The scope of the legal protection of geographical indications

The right to use a geographical indication, including on products, labels, packaging, in supporting documents and on the Internet belongs to the holder of a certificate of an exclusive right to the geographical indication.

The products, labels and packaging unlawfully bearing geographical indications or confusingly similar names are regarded as counterfeit.

In particular, the use of a geographical indication is regarded as unlawful in the following situations:

(1) a registered geographical indication is used by persons that do not have the right to use it even if the genuine place of the product’s origin is indicated;

(2) a registered geographical indication is used with respect to a product that does not have appropriate characteristics or that has been manufactured outside of the relevant geographical area;

(3) a name which is confusingly similar to the registered geographical indication is used for any products and may be misleading for the consumers in terms of the product's place of origin or characteristics.

The names which are identical or confusingly similar to a geographical indication may not be registered as trademarks in the names of other persons with regard to any products.

Based on the wording of the law, in the absence of a certificate of an exclusive right to the geographical indication, a manufacturer of any products that uses a registered geographical indication or a name which is confusingly similar to it may potentially be recognised to have violated an exclusive right to the geographical indication.

Liability for an unlawful use of a geographical indication

The counterfeit products, labels and product packaging bearing a geographical indication which is used unlawfully may be removed from the market and destroyed at the offender’s expense at the request of the holder of an exclusive right to the geographical indication.

Also, the rightholder may choose to demand from the offender either a reimbursement of losses or a compensation:

(1) from RUB 10,000 to RUB 5,000,000 to be determined by the court based on the nature of the violation;

(2) of twice the cost of the counterfeit products unlawfully bearing a geographical indication.

Therefore, despite the less stringent requirements for the enforceability of a geographical indication, a violation of an exclusive right to it triggers the same liability under the Civil Code as a violation of an exclusive right to an appellation of origin.

How third parties’ rights are protected when geographical indications are registered

Once it accepts for consideration an application for a geographical indication, the Russian Federal Intellectual Property Service (commonly referred to by the abbreviation ‘Rospatent’) publishes the data of such application in an official bulletin.

Within three months after the information about the application for the geographical indication is published, anyone may submit to Rospatent the objections against the geographical indication being granted legal protection and/or against an exclusive right to the geographical indication being granted.

If the geographical indication has been registered, an interested party may contest the granting of legal protection to such geographical indication by submitting objections to Rospatent. In particular, the granting of legal protection to a geographical indication may be contested if such indication may mislead consumers with regard to the product or its manufacturer, including in connection with there existing an identical or confusingly similar trademark with a higher priority.

What to think about and what to do

The manufacturers of products having characteristics, including the reputation, that may be connected with their geographical origin, should independently or together with other manufacturers in the relevant region consider the option of filing an application for the geographical indication to be registered.

In such a situation, it would be prudent to track on a regular basis the applications for geographical indications filed by third parties with a view to filing objections immediately with Rospatent against the geographical indication being granted legal protection or with a view to filing an application for an exclusive right to this geographical indication.

Other companies that use official or non-official names of geographic areas and words deriving from such names in their activity involving the manufacturing of any products are also advised to carry out a monitoring on a regular basis to learn promptly about third parties filing applications for geographical indications and to take the necessary measures to protect their rights and lawful interests. If a person files an application to register its own trademark that includes the above names such person should carry out a preliminary search among the geographical indications that have been claimed and registered regardless of the type of the claimed products.

Help from your adviser

Pepeliaev Group’s lawyers have an extensive experience of protecting IP rights before administrative and judicial authorities. We are ready to provide legal support on all issues relating to the registration, contesting and protection of IP rights, including appellations of origin and geographical indications.