The rapid pace of lawmaking activity in the Ukrainian legislature during recent months has resulted in the adoption of amendments to the country's geographical indications law ("GI Law"). As a short reminder, Ukraine has undertaken to improve its geographical indication ("GI") legislation as a part of the harmonization process under the EU-Ukraine Association Agreement. Put on the backburner by previous MPs, the amendments to the GI Law have now been passed by the newly elected legislature and will come into force on 01 January 2020. One could hail this as a "truly European piece of legislature". We can say with confidence that the amended GI Law will soon reshape the regulatory landscape for GIs .
In this alert, we provide a few highlights regarding the significantly amended GI Law with a focus on implications for foreign rights holders.
Key definitions reshaped
The amendments to the GI Law will change the key definitions as the current key definitions are often criticized to be labyrinthine. Even for IP professionals, it was sometimes difficult to understand which type of designation of origin should be chosen to protect a certain designation of origin. The effective GI Law now includes so-called 'simple' and 'qualified' designations of origin, where 'qualified' designations are then divided into 'name of place of origin' and 'geographical indication of origin'.
As soon as amendments to the GI Law are in effect, protection for the following designations of origin will be provided:
- geographic indication. The designation may be protected as GI if it fits the following characteristics: it (i) identifies a product originating from a certain territory; (ii) where such product has particular quality, reputation or other characteristic that is essentially attributable to its geographical origin; and (iii) at least one production cycle of the product is carried out in the respective territory.
- name of the place of origin ("NPO"). NPO is a special kind of GI that (i) identifies a product originating from certain territory; (ii) where such product has particular quality or characteristics due exclusively or essentially to the geographical environment, including natural and human factors; and (iii) all production cycles are done in the respective territory.
Article 7 of the amended GI Law provides some exceptions for the origin of raw materials in order for GI to be still classified as NPO. Exceptions are applicable for live animals, meat and milk only.
Classifying a foreign GI as NPO is not expected to ensure broader or greater legal protection. Rather, proper classification of a certain foreign designation as GI or NPO is important for the strength of legal protection, i.e. to make sure that the protected designation is not vulnerable to revocation due to improper classification.
According to the transitional provisions of the amended GI Law, applications for registration of qualified designations of origin which were filed with the Ukrainian IP Office before the effective date of the amendments to the GI Law, and which examination is not completed before effective date of the amendments to the GI Law, should be further examined according to the amended GI Law. As a result, Ukraine's IP Office may request applicants to provide additional documents or information in order to be able to classify qualified designations of origin as GI or NPO according to the new definitions and requirements of the amended GI Law.
Additional regulations for agricultural goods, foodstuffs, wines, aromatized wines, spirits
In line with the amendments to the GI Law, additional GI regulations may soon be on the horizon to make the new GI system fully operative. The amended GI Law provides for general references to additional regulations for the purposes of registration, use and protection of GIs for agricultural goods, foodstuffs, wines, aromatized wines, spirits. The additional legal framework has not been adopted at this stage, and it is likely that additional laws will be passed in the future.
Who may apply?
Under a general rule stipulated by the amended GI Law, the scope of eligible applicants is limited to unions. In particular, union shall mean a group of persons who produce goods and/or extract and/or process raw materials for the goods within a particular geographical position (territory) and where the quality, reputation or other characteristics of the goods are determined by such geographical position (territory).
The amended GI Law does not provide for any requirements as to the minimum or maximum number of persons in the union as well as to the legal form of the union. In fact, there can be any number of persons (i.e. two and more) in the union and any form of union is acceptable (e.g. consortium, council, institute).
A particular individual or legal entity can be an eligible applicant, provided he/she/it complies with special qualification requirements stipulated by the restated Article 9 of the GI Law.
A GI user also has the right to apply for recording in the State Register of GIs as a user of specific GI. As soon as information about the GI user is recorded with the State Register of Geographical Indications, this user will enjoy a bundle of GI related rights stipulated by the GI Law for GI owners under Article 17 of GI Law.
What documents to file?
In order to have a GI registered, a foreign applicant should submit documents confirming GI protection in the country of origin or acquisition of rights to the GI on the basis of its use in good faith, if permitted by the laws of the country of origin.
The documents should meet the requirements ascribed for the specification for local eligible applicants, i.e. the documents should contain (i) name of GI claimed in the language that is used for marketing the product labelled with GI or language that is historically used to write GI; (ii) name and description of the product and, where relevant, data on raw materials and key features of the product (physical, chemical, microbiological, organoleptic, other); (iii) data on production zone and, where relevant, zone of production of raw materials if the latter zone is larger than production zone or other than the production zone; (iv) description of production techniques as well as information on packaging if the applicant can prove that the packaging should be made at the particular geographical position (territory) in order to secure quality or guarantee originality of the goods or ensure control; (v) details on correlation of product features and geography of the place; (vi) labelling requirements (if any).
Protection may be refused in case GI (i) does not meet the requirements prescribed by GI Law; and/or (ii) becomes generic; and/or (iii) reproduces plant variety or animal breed name; and/or (iv) is similar to a trademark recognized in Ukraine and where due to the reputation of the trademark, simultaneous use of GI and trademark may mislead consumers. The amended GI Law will also shorten the list of refusal grounds stipulated by the current GI Law.
New approach to opposition to GI applications
The amendments to the GI Law significantly reshape the administrative procedure for opposition to applications for registration of GI or NPO:
- establishes a consultation stage between opposition and applicant. The initial term of consultation should not exceed three months but the applicant has the right to request the IP Office extend the initial term by up to three months. The results of the consultations or failure to achieve a consensus during the consultations should be reported to the IP Office;
- establishes an opportunity for the opposer to appeal the decision of the IP Office on registrability of the GI or NPO to the Appeal Board of the IP Office. In case such an appeal is lodged, the applicant should be notified (likely by the IP Office). They will have two months to file a statement of defense in relation to the appeal, as well as the right to take part in consideration of the appeal by the Appeal Board.
A notable novelty of the procedure of examination of application for registration of GI or NPO is an institute of preliminary conclusions of the IP Office in case the IP Office decides the GI or NPO cannot be registered. Although preliminary conclusions may be issued even if no opposition is filed, we expect this tool will be closely connected with opposition procedure. In other words, in case the application is opposed, the chances of obtaining the preliminary conclusions of the IP Office will be higher. The IP Office may use the institute of preliminary conclusions as a last resort measure in dispute situations.
When is protection granted?
Legal protection of the GI or NPO will be granted as of the date of its registration in Ukraine, i.e. as of publication of information about the registered GI or NPO in the official IP Gazette (bulletin).
The amendments to the GI Law also suggest a new approach to establishing a date of filing an application for registration of GI or NPO. As a general rule, the filing date will be established on the date of filing the application with the IP Office. However, in case the application is not supported with all documents and information required, the filing date will be established at the date when all such documents and information are submitted to the IP Office. This requirement does not apply to translations of documents from foreign language into Ukrainian.
According to transitional provisions of the amendments to GI Law, certificates for qualified designations of origin which were issued before the effective date of the amendments to GI Law (i.e. before 01 January 2020), shall remain valid and no actions need be taken by GI owners to comply with the amended GI Law.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.