After one year following the introduction of the new legislative initiative, it is now official – geographical indications will become a new type of intellectual property in Russia.
On 26 July 2019 Vladimir Putin signed a new law implementing the respective amendments to Part IV of the Russian Civil Code related to the protection of geographical indications. "Geographical indications" will be included in Article 1225 of the Civil Code, which specifies an exhaustive list of the results of intellectual activity and means of individualization of goods and services that enjoy protection as intellectual property under Russian law.
The new law is often referred to as "the law on regional brands". The boom in the market for regional brands and the increasing demand for "authentic" products required a change in the existing legal protection regime to make it more accessible to Russian and foreign producers.
Currently, geographical names serving as a means of identification of products may be protected in Russia as appellations of origin. Unfortunately, this instrument has not gained popularity during the years of its existence, partly because of the strict requirements that need to be met to obtain registration. What's more, the appellations of origin, although similar to geographical indications, still provide for a different protection regime, making it practically impossible for foreign producers to register their national geographical indications as appellations of origin in Russia, contrary to the obligations that Russia adopted when it joined the WTO in 2012.
Making it easier
The rules for registering geographical indications are designed to be easier and the requirements less strict compared to appellations of origin.
The liberal approach is already shown in the definition of the new object, which is "a sign that identifies the goods originating from a geographical territory, in which a certain quality, reputation or other characteristics are largely connected to its geographical origin". The word "largely" here substitutes the word "exclusively" used in the definition of an appellation of origin.
Another measure to ease the requirements is that it will be sufficient to obtain protection as a geographical indication if at least one of the production stages is carried out in the specific territory. By comparison, for an appellation of origin it is obligatory to confirm that all production stages take place in that exact territory.
Along with other changes, the new law will introduce the opposition procedure – a novelty for the Russian intellectual property protection system.
Currently the Civil Code does not provide for pre-registration opposition possibilities either for trademarks, appellations of origin or patents. Although discussions on evolving the opposition system have been ongoing for some time, the options are currently limited to "observations" containing objections against trademark and patent applications.
The new law will allow parties to initiate an official opposition procedure against applications for geographical indications. For this purpose all the applications will be published with the opportunity to file an opposition by any person within three months from the publication date.
However, the opposition will not replace the substantial examination of new applications, which, according to the new law, will be handled separately. Exactly how these proceedings will correspond to each other is yet not fully clear.
The newly adopted procedures will allow foreign producers to register their geographical indications in Russia, provided they are duly registered in the country of origin as geographical indications or other signs for the identification of goods.
The 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.
Moreover, the new law will enable the future holders of Russian geographical indications to register them abroad. Filing of a relevant application will be possible after the respective registration is completed in Russia.
Wine production regulations
The implementation of geographical indications will complete the process of development of legal tools for protecting designations of origin of wine.
Protecting wine products with a link to the geographical origin of vines is a new field for Russia. The definitions of protected designations of origin and protected geographical indications for wine were introduced for the first time in 2015 by the specialized law that regulates matters of production and turnover of alcoholic products. While this law sets the rules for licensing, registration, declaration, etc. for the wine production process, all matters related to the protection of the relevant geographical names will be fully regulated by Part IV of the Civil Code after the new law comes into force on 27 July 2020.
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