Geographical indications in Russia - a new term in the Russian Civil Code
Protection of geographical names in Russia has become a subject of recent discussions because of the new legislative initiative proposing inclusion of a new type of intellectual property rights into the Russian Civil Code – geographical indications. The respective draft law was adopted by the Russian State Duma in its first reading at the end of July 2018.
Although it has been possible to register geographical names in Russia as appellations of origin since 1992, the efficiency of this legal instrument is a still far from what is being demanded by the market.
The definition of an appellation of origin in Russia was adopted from the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, although Russia itself is not a signatory of this agreement. An appellation of origin is a geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors. The same applies to a designation which does not contain a geographical name, but became known as a designation of a product originating from a certain geographical area.
While appellations of origin became an important tool for the protection of some traditional technologies and handicrafts, they provide very few options for regional brands that do not strictly comply with the above definition. Obtaining a registration of an appellation of origin with the Russian Federal Service for Intellectual Property (Rospatent) became a major and often unresolved issue for many producers trying to protect their brands from dilution of quality and reputation.
Above all, to obtain a registration it must be confirmed that the product for which the relevant sign is used possesses unique qualities, and that these qualities are determined strictly by the territory this product originates from. This includes the requirement that all production stages must take place in that exact territory.
The above has to be confirmed by a state authority competent in the relevant industry. Although producers are not obliged to obtain the confirmation of a state authority, the Russian Federal Service for Intellectual Property (Rospatent) is authorised to do it directly, obtaining confirmation is practically impossible without the collaboration of producers with the authorities to convince them to acknowledge that the product meets the high standard required by law. The mere public reputation of a geographical item as an indication that a product originates from these is not enough to register an appellation of origin unless all formal requirements are observed.
As a result, appellations of origin became a privilege for the most valuable brand names for which the importance of preserving traditional qualities is equally obvious for producers, consumers and the authorities. Among the registered appellations of origin are Russian Vodka for vodka, Gzhel for ceramics, Khokhloma for wood painting, Abrau-Durso for wines – the names that are well known to several generations of Russian consumers and some are deeply rooting in the national cultural background. But when it comes to protection of geographically related brand names of a smaller significance, appellations of origin demonstrated little efficiency. Suffice to say that less than 200 appellations of origin have been registered overall in Russia for over 25 years.
Example – the NAPA VALLEY case
Regarding brand owners from outside Russia and the imperfections in the current protection regime for geographical names, the Napa Valley case is worth mentioning.
The company Napa Valley Vintners applied for state registration of an appellation of origin for NAPA VALLEY in Russia in 2013. The application was refused based on provisions of article 1517 of the Civil Code stating that a geographical name may be registered as an appellation of origin in Russia subject to the condition that it is protected precisely as the same in the country of origin. Since NAPA VALLEY is protected in the country of origin – the USA, under the certification mark, but not as an appellation of origin, Rospatent refused the application.
The company appealed the Rospatent’s decision in court. It then took almost 4 years of proceedings to achieve the ruling of the IP Court stating that matters of registration of foreign geographical items in Russia are to be decided based on the substance of a protection regime in a country of origin instead of the exact matching of legal regimes. The court has obliged Rospatent to reconsider the applicant’s appeal against the refusal decision. Surprisingly the NAPA VALLEY application was again refused, this time because the respective certification mark was obtained later than the filing date of the Russian application.
The proposal to include geographical indication in the Civil Code as a separate subject is aimed at filling this gap by making the registration procedures for geographically related brand names more simple and accessible for producers both from Russia and from outside Russia. Also the adoption of the new definition is intended to finally enable Russia to comply with the obligation undertaken as early as in 2012 by joining the WTO and the TRIPS agreement.
The draft law proposed within the new legislative initiative provides for a significantly more liberal procedure directly allowing registration as a geographical indication of signs protected in the country of origin as geographical indications and other signs for the identification of goods. The draft law does not clarify what is meant exactly by other signs. This may refer to the EU laws providing for different methods of protection such as Protected Designations of Origin (PDO) and also to collective and certification marks.
Other registration requirements also promise to be more flexible. It will therefore be sufficient to obtain protection as a geographical indication if the link between the goods’ qualities or reputation and the specific geographical territory, and the fact that at least one of the production stages is carried out in this territory can be confirmed.
The current questions are how the proposed rules will be implemented by the Rospatent, will the geographical indications really help to resolve all the issues relating to the protection of regional brands and what will the economic impact be, and will the examination and registration procedure be consistent with international practice. It remains to be seen whether Champagne and Cognac will be able to obtain protection as geographical indications in Russia.
The new law is expected to be finally adopted in 2019.