“Forbidden” geography. A new intellectual property object will appear in Russia // Sphere Legal Information Portal – April 2020

From the end of July 2020 in Russia it will become possible to register and protect a new intellectual property object – a geographical indication. For the informational legal portal, Sphere, Darina Lysachkina, has prepared a brief review of the changes and compared it with the legal institute for appellation of goods originating in Russia since 1992.

Forbidden geography. A new object of intellectual property will appear in Russia in July 2020 following amendments to the Civil Code, making it possible to register and protect a new intellectual property – a geographical indication.

Scotch, Porto, Havana, Tequila and Roquefort are just some of the best-known examples of names that are associated worldwide with products whose properties and qualities are determined by their geographical origin.

The emergence of geographical indications is due to the entry of the Russian Federation into the World Trade Organization (WTO) and the adoption of obligations to bring national legislation in line with its agreements, in particular with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which defines the specifics of legal protection of geographical indications.

The concept of a geographical indication, as enshrined in the amendments to the Civil Code, fully complies with TRIPS and is defined as “a designation identifying goods originating from the territory of a geographical area, a certain quality, reputation or other characteristics of which are largely related to its geographical origin”.

Any designation that identifies a product and meets the following conditions will be recognised as a geographical indication:

• the goods come from a certain region with which the special characteristics of such goods are largely associated;
• in the region at least one of the stages of production of goods is carried out, which has a significant impact on the characteristics of the goods.

It should be noted that the legal concept of geographical indications is not new to the Russian legal system. Since 1992, a similar legal institution has already been operating in Russia called appellations of origin.

In total, just over 200 appellations of origin were registered – for comparison, the number of registered trademarks exceeds 740,000. Most of the goods for which legal protection of appellations of origin has been provided is for mineral water.

Such low numbers are due, first of all, to the fact that the existing system provides for excessively stringent requirements and criteria for the registration and legal protection of NCSP, which are rarely practicable. For instance:

• The designation must contain the name of the geographical object, and must also be known as a result of its use in relation to the goods, the special properties of which are exclusively or mainly determined by the natural conditions and (or) human factors characteristic of the geographical object;
• All stages of the production of goods that affect the formation of the characteristics of the goods should take place on the territory of a geographical object;
• The manufacturer must receive an opinion from an authorized agency confirming the special properties of the goods associated with the geographical object in whose territory it was produced.

These requirements were significantly more stringent that the new regime. Moreover, for the protection of the goods as a geographical indication, it is enough to carry out one stage of its production in the region, whereas for the protection of the appellation of origin, all stages of production that affect the formation of characteristics of the goods must be carried out in the region. Of course, this creates many registration barriers. If it is not so difficult for mineral water to establish the chemical characteristics and origin from a certain region, than for more complex products (for example, for wine).

To submit documents for obtaining protection of a geographical indication, no report from an authorised department is required. The applicant is entitled to provide any documents and information confirming that the goods have the necessary characteristics, and they are largely related to its geographical origin.

Accordingly the procedure for obtaining legal protection for a geographical indication is simpler and more convenient and has wider potential use.

Geographical indications are a tool that will provide additional legal opportunities for the promotion of goods, primarily from regional producers, and can help demonstrate the variety of goods produced in Russia, which have historical and natural uniqueness and could be considered to national treasures.

To read Darina Lysachkina’s article, please see the Sphere website >>>