Protection of geographical indications in Russia7 August 2017
Geographical Indications are a type of intellectual property rights; these have specific feature differences and protections depending on the country. First of all, it is connected with differences between legislation systems, different legal definitions of this subject matter, the ways of obtaining protection and use thereof etc. Generally, a geographical indication is a name that identifies a good as originating from a specific place (country, region or location) where a known quality, reputation, or another characteristic of the goods are linked to the geographical origin. Protection of geographical indications has a long history in some jurisdictions, particularly in Europe. Most well-known products protected by geographical indications come from agriculture, but the agricultural nature of the product is not a condition for the product to have an opportunity to be identified by a geographical indication.
Over the years, the Russian Federation has adopted a comprehensive legal framework for the protection of intellectual property rights. Upon joining the WTO the Russian Federation assumed the obligations under the TRIPS Agreement regarding the intellectual property protection. Among other things the TRIPS Agreement obliges member-states to grant legal protection to geographical indications; however, the Agreement does not restrict the members in options to choose adequate measures for the implementation of the obligation.
Protection of geographical indications as IP subject matter is not provided by the Russian legislation; nonetheless, the Russian Law has provided for protection of appellations of origin of goods since 1992. Nowadays this protection is being provided in accordance with Part IV of the Civil Code of the Russian Federation based on the official registration of appellations of origin.
According to the Civil Code, an appellation of origin of goods is a designation that represents or contains either a contemporary or historical, official or non-official, full or abbreviated name of a country, town, or a rural settlement, locality, or other geographic area, as well as a designation derivative of such a name, and that became known as a result of its use in relation to the goods, the special properties which are exclusively or mainly determined by the geographical natural conditions and (or) human factors. The use of such an appellation may be recognized as the exclusive right of the producers of such goods.
A designation through being or containing a name of a geographic place that is generally used in the Russian Federation as a designation of goods of a certain kind, but not relating to the place where the goods are manufactured, shall not be deemed an appellation of origin.
To some extent the above definition limits opportunities of the parties concerned to obtain legal protection for designations having “geographical nature”. There are opinions regarding the insufficiency of available legal instruments and discussions about the necessity of changes in the Civil Code to foresee the capability of granting the legal protection for any geographical indication. The establishment of the registration system for geographical indications as an independent subject matter of intellectual rights could be considered as the best solution.
Geographical indication and the appellation of origin are primarily different because appellations of origin should be implemented only in a word designation, while geographical indications can be in any form. Aside from this difference, the appellation of origin should rely on special properties being defined by natural conditions and/or human factors characteristic of the given geographic place. However, for the geographical indication, only the connection between the reputation of the product and its origin is required.
The current legislation restricts the possibility of obtaining protection for the appellation of origin or geographical indication of non- Russian origin. According to the Civil Code, the official registration of an appellation of origin in respect of the geographical place/object that is located in a foreign state is acceptable only if the name of this geographical place is protected as an appellation of origin in the state of origin. This means that if the designation for filing as an appellation of origin is protected in a state of origin, not as an appellation of origin, then the protection will not be granted in the Russian Federation. This causes many problems for the owners of certificate marks or collective trademarks of “geographical nature”, who would like to obtain legal protection therefor in Russia.
As an example of the recent practice of consideration of an application for appellation of origin of goods coming from outside Russia, an attempt to register “NAPPA VALLEY” could be mentioned. The examiner of Russian PTO denied granting protection for this appellation of goods. The applicant – Napa Valley Vintners, USA – filed an appeal with the Chamber of Patent Disputes of the Russian PTO against the examiner’s decision. The application was filed in 2013 in connection with “wines” and was denied the registration as inconsistent with the requirements for granting legal protection to an appellation of origin. The reason for that decision was the fact that the claimed designation did not meet the requirements of the Civil Code since the designation “NAPPA VALLEY” was not protected in the USA as an appellation of origin. Therefore, this designation cannot be registered in Russia as an appellation of origin, and the applicant (the company Napa Valley Vintners) cannot be granted the exclusive right to the designation in Russia.
Napa Valley Vintners appealed the decision on the ground that the claimed designation corresponds to all the established criteria of the protectability of the appellation of origin. It argued that “NAPA VALLEY” was registered in the United States as a certification mark for the wine obtained from the grapes grown in the American wine region of Napa Valley, labeled and advertised in accordance with the US law. It also stated that the designation “NAPA VALLEY” was registered in the United States as the “Approved Viticultural Area”, which is one of the types of the appellation of origin in accordance with the US law, and that the Alcohol and Tobacco Tax and Trade Bureau of the US Department of the Treasury confirmed that “NAPA VALLEY” was designated as the American Approved Viticultural Area. Moreover, Napa Valley Vintners also noted that according to the relevant sections of the US Code of Federal Regulations, the wines produced in the Napa Valley had special properties; and the Napa County Board of Supervisors had adopted a resolution authorizing Napa Valley Vintners Association to register the designation “NAPA VALLEY” in any country of the world as a certification mark and/or a geographical indication for the wine.
The applicant submitted numerous evidence in support of the above-mentioned arguments and facts. Having considered the case, however, the Chamber of Patent Disputes decided to dismiss the appeal. The Chamber stated that the official registration as an appellation of origin of a name of a geographic area situated in a foreign country is allowed in Russia only if the name is protected as an appellation of origin in the country of origin of the goods and the applicant confirms his right to the appellation in that country. Assuming these requirements, if the geographical area, which name is claimed as the appellation of origin, is outside the Russian Federation, a document confirming the applicant’s right to the claimed appellation of origin in the country of origin of the goods should be submitted. The information indicated in the US certificate mark states that it:
“[C]ertifies the wines obtained from grapes grown in the American Approved Viticultural Area of Napa Valley and labeled and advertised in accordance with the laws of the United States regarding the appellation of origin of the American Approved Viticultural Area of Napa Valley.”
However, the certificate mark did not support that the designation “NAPA VALLEY” was protected in the country of origin as an appellation of origin within the meaning of the Russian Civil Code. Other documents submitted by the applicant also did not give sufficient grounds for the assertion that the designation “NAPA VALLEY” was protected in the territory of the USA precisely as an appellation of origin, and hence there were no grounds to register this name as an appellation of origin in Russia.
Furthermore, in spite of the fact that the Russian legislation does not require examination as to whether the applicant for an appellation of origin of a product is indeed the manufacturer of this product, nonetheless, absence of indication of the real manufacturer in the application may obstacle state registration of the applied appellation of origin taking into account that the law forbids granting a license to use a registered appellation of origin of goods. For example, appellations of origin and geographical indications in the EU may be applied by associations and consortiums of manufacturers of goods, manufacturers of raw materials, persons executing storage and processing of goods including their packaging for end-consumers, distributors delivering products to end-consumers in accordance with certain conditions necessary for products special properties retention. These participants of the complete production cycle and product marketing may integrate.
The Russian PTO’s approach to the possibility to register foreign geographical indications in Russia in the name of consortiums is indefinite. The “stumbling block” is the fact that, formally, according to the Russian legislation, the right to use the appellation of origin can only be granted to a producer of a respective product. Moreover, as demonstrated in the NAPA VALLEY case described above, the applicant should submit a document confirming his right on the respective designation in the country of origin, as well as documents confirming the data to be included in the application, namely the geographical boundaries of the place of production and description of the special qualities of the goods.
There are several designations, filed as appellations of origin in the Russian Federation, which have been applied by associations. For example, “ASTI” for wine, “PROSCIUTTO DI PARMA” for prosciutto and jamon, “GRANA PADANO” for cheese, “PARMIGIANO REGGIANO”, etc. This leads to the conclusion that there is a gap between the law and its implementation in practice, and it seems reasonable to eliminate this gap by removing the strict requirement to an applicant for the appellation of origin to be the manufacturer of the claimed product.
In spite of the existing effective tools of legal protection of appellations of origin, the current legislation still does not sufficiently correspond to the actual needs of the businesses using geographical names as means of individualization of their products. It appears that provisions on granting protection for geographical indications on the basis of its official registration should be introduced in the Russian legislation. This would be in line with current trends in international and national legislation development in many countries such as Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, which provides for the granting of legal protection of geographical indications and appellations of origin in member-states on the basis of registration thereof in the same international register. The necessity of further legislative initiatives aimed to amend and improve Russian laws relating to those subject matters, including Civil Code and such product-specific laws as the Law on State Regulation of Production and Turnover of Spirit and Alcoholic Beverages and Consumption Limitations, are being discussed by Russian IP experts. If such initiatives are realized, this should develop the existing system of legal protection of appellations of origin and provide for a possibility of legal protection of geographical indications.