The Law of Ukraine "On Amendments to Certain Legislative Acts of Ukraine on Improving the Legal Protection of Geographical Indications" 123-IX dated 20.09.2019 (hereinafter the "Law") introducing amendments to the procedure of registration, use and protection of geographic indications in Ukraine entered into force on 1 January 2020.
Principal changes introduced by the Law:
- From now on, geographic indications
will only be protected subject to their continued state
registration. Previously, a simple indication of the product's
place of origin was protected based on the use (without
registration). Now the legal protection is granted only to duly
registered geographic indications. For example, indications of
"Borjomi" and "Polyana kvasova" mineral waters
are protected in Ukraine as geographic indications.
- The Law has reduced the types of
geographic indications. From now on, there are two types:
"geographic indication" and
"name of place of origin" subject to
Thus, geographic indication is the name identifying the product originating from a certain place and having a special quality, reputation or other feature(s) associated with this place of origin: also, at least one of the stages of the manufacturing of the products should take place within the specified geographic area.
For example, "Polyana kvasova" is a geographic indication of a product, whose quality features are associated with the location of a mineral water field in Polyana in the Svaliava district, Zakarpattia region.
Name of place of origin of a product is subject to legal protection if such name:
- includes identification of a product originating from a certain place and having special qualities or properties associated exclusively or mainly with a specific geographic environment, and
- all stages of the manufacturing of such product take place within the specified geographic area.
For example, the name of place of origin of a product is "Myrgorodska", since the Myrgorodske field is located in the Myrgorod of Poltava region, and special qualities and properties of this water are associated with this particular geographical environment.
It should be noted that, due to the adoption of the new Law, whether the fact that all stages of product manufacturing take place in the designated geographic area is an important feature to indicate whether or not a relevant name is the name of place of origin. For example, there is an issue regarding legal protection of the Crimean names of place of origin, such as "Soniachna dolyna" (wine) or "Novyi svit" (wine), because the requirement regarding all stages of manufacturing in the designated geographical area remains unfulfilled.
- Changes regarding the status
of applicants. In most cases a geographic indication may
be registered by the association only. A geographical indication
may also be registered by an individual; however, subject to the
fulfilment of certain conditions determined by the Law.
Specifically, persons whose activity has no direct relationship to
the manufacturing of a product are deprived of the right to
register geographical indications.
- Changes in the procedures for
applying and consideration of applications for registration of
geographic indications. From now on, foreign applicants
have the right to directly apply to Ukrpatent with no need to
involve a patent attorney. This is an important change that
simplifies obtaining legal protection of geographic indications in
Ukraine by foreigners.
- Grounds for invalidating the
registration of geographic indication in court (i.
e., registration of the geographic indication shall be declared
ineffective from the registration date) as well as grounds for
cancellation of registration of geographical indication have been
extended. Thus, if a geographic indication has not been used in
Ukraine for seven years, the registration of such geographical
indication may be cancelled.
- Legal protection granted to
the geographic indication now protects against the following
- commercial use of a geographic indication for products similar to the product for which the geographical indication has been registered;
- commercial use of a geographic indication for products if such use leads to the abuse of its reputation (including cases when the product is used as a part of another product);
- unlawful use or imitation, or other embodiment of geographical indication (even if the actual place of product origin is indicated);
- any unlawful use or imitation of the geographic indication if the geographic indication is translated, transcribed or transliterated or accompanied by such words as "style", "type", "method", "which is manufactured in", "imitation", "taste", "similar", etc. (including cases when the product is used as a part of another product);
- any other use of geographical indication on packaging, in advertising or accompanying documents that is improper or misleading with regard to the product's origin, substance or other substantial properties; and for
- any other use that may mislead a consumer with regard to the product's actual origin.
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.