Geographical Indications24 December 2019
Part IV of the Russian Civil Code regulates IP subject matters, which are defi ned as results of intellectual activities and means of individualization.
The Civil Code ensures that intellectual property is protected by law, and provides the explicit list of the results of intellectual activities and means of individualization, which may be protected as such: scientifi c, literary and artistic works; programs for computers; databases; performances; sound recordings; broadcasting and cable radio and television programs; inventions; utility models; industrial designs, plant varieties and animal breeds integrated circuit layout-designs (topography); know-how; company names; trademarks and service marks; appellation of the origin of goods; commercial names.
Soon, the list of IP matters will be enlarged and “geographical indications” will become protectable.
Being, in a way, similar to appellations of origin of goods, geographical indications seem to be somewhat less complicated in terms of their properties and regulations thereof. The Federal Law introducing changes to Part IV of the Russian Civil Code in connection with the new IP subject matters is expected to come into force in Summer 2020. Provisions of the Civil Code, which now regulate appellations of origin of goods, will be completed to include conditions to govern geographical indications.
So, what do geographical indications have in common with appellations of origin of goods and what are the differences between these IP subject matters in terms of their prosecution and protection?
The Russian Civil Code currently reads that an appellation of origin of goods is a designation that represents or contains a modern or historical, offi cial or unoffi cial, full or abbreviated name of the country, city or rural settlement, locality or other geographical object, or derived from such name and became known as a result of its use with respect to the goods special properties of which are exclusively or mainly determined by the natural conditions and/or human factors of a given geographical area.
According to the published Federal Law a geographical indication is a designation that identifies the good as originating from a certain territory, the quality, reputation and other characteristics of which are mainly connected with its geographical origin (properties of the good).
It should be noted that in the Federal Law the legislators differentiate it that in terms of appellations of origin special properties are exclusively determined by the natural conditions and/or human factors of a given geographical object, while for geographical indications special properties of the good are mainly connected with its geographical origin.
This difference comes from the provision that regulates manufacturing requirements for the goods. In contrast to appellations of origin for which all stages of the manufacturing process that considerably infl uence creation of the special properties of the good must be carried out in a given geographical area, existence of at least one stage of production in a given geographical territory should be suffi cient for geographical indications.
Further, the Federal Law foresees wider list of persons who may obtain the right for a geographical indication and an appellation of origin. Specifi cally, not only one or several citizens or legal entities, but also associations or other unions may obtain protection for a geographical indication or an appellation of origin. In case of successful registration of a geographical indication or an appellation of origin, the right to use one IP subject matter or another in connection with the goods, which possess special properties, is granted to each member of the association recorded in the State Registry of geographical indications and appellations of origin. Like appellations of origin disposing of the right for geographical indications is prohibited by law.
If an applicant seeks protection for a geographical indication, which allows to identify the good as originating from a foreign state, registration of such a geographical indication is permitted if this designation is protected as a geographical indication or other means of individualization in the country of origin of the good (provided that it meets the requirements of the Civil Code for geographical indications).
It is noteworthy that for appellations of origin the provision remains that the name of a geographical area located in a foreign state may be registered as an appellation of origin in Russia, if such name is protected in the country of origin specifi cally as the appellation of origin, and not as other means of individualization (for instance, as a geographical indication).
The necessity of having the registered appellation of origin in the country of origin of the good complicated the process of obtaining protection of this IP in Russia.
One of the recent cases concerns refusal of grant of protection for designation EMILIA filed back in 2014 to be registered as an appellation of origin for different kinds of wine. The refusal was based on the fact that the applicant (a group of 25 Italian companies) did not have a registered appellation of origin in Italy, thus the applied designation did not meet the requirements of the Russian Civil Code as regards appellations of origin.
The applicant appealed the refusal with the Chamber of Patent Disputes of the Russian Patent and Trademark Offi ce arguing that though they did not have the registered appellation of origin in Italy, designation EMILIA was enjoyed protection a protected geographical indication. The applicant stated that the essence of the IP protected as the geographical indication in Italy corresponded to the definition of the appellation of origin of the Russian Civil Code. To strengthen its position the applicant referred to Lisbon agreement for the protection of appellations of origin and the legislation of the European Union, which provided for protection of tree types of geographical indications: protected designation of origin, protected geographical indication and traditional specialities guaranteed. The Chamber of Patent Disputes considered these arguments unconvincing and upheld the refusal of grant of protection. As a result of subsequent appealing of the decision of the Chamber of Patent Disputes with the IP Court, the case was returned to the Russian Patent and Trademark Office for reconsideration.
However, the second review of the applicant’s appeal had the same outcome. Having analyzed all the submitted materials the Chamber of Patent Disputes came to the conclusion that it was a protected designation of origin, which could correspond to the essence of an appellation of origin as foreseen by the Russian Civil Code, while designation EMILIA was registered as the geographical indication, which was considered to be a separate IP that in its substance differed from an appellation of origin.
Now that the Russian Civil Code will include such means of individualization as geographical indications, owners who previously did not succeed in registering their designations as appellations of origin in Russia will have another chance to try to obtain protection for geographical indications.
Moreover, when the Federal Law in connection with the discussed IP comes into effect, those parties, who might be facing problems with registering their designations as appellations of origin, will have the possibility to transform the application for the appellation of origin into the application for the geographical indication. This possibility will be available for registered appellations of origin too; reverse transformation – from a geographical indication to an appellation of origin, whether registered or pending, will be also foreseen by the Russian Civil Code.
What more could be of interest in connection with the changes to be introduced is the fact that special properties of the goods for which a geographical indication or an appellation of origin is registered will be published in the State Registry. Thus, any person may have the opportunity to test the good and to compare their experience with the identifi ed special properties.
Judging from the proposed amendments, the legislators worked hard to promote both IP subject matters – geographical indications and appellations of origin. The changes provide less complicated requirements for geographical indications and somewhat easier prosecution for appellations of origin, reducing the terms for registration as well.
Geographical indications had a long way to join the group of means of individualization provided by the Russian Civil Code, but seem to arrive just in time. Now that consumers strive to purchase the products, which are authentic or probably unique, geographical indications along with appellations of origin will be serving businesses in Russia to meet this challenge being a guarantee that the goods has special properties the customer is looking for.