The Russian president has signed into law a bill introducing a new independent intellectual property right - the geographical indication. The new IP right is meant to allow foreign and Russian manufacturers to protect their rights to designations associated with the geographical origin of their products.
Legal protection will be provided to designations identifying goods that originate from a specific geographical location and that possess qualities or a reputation associated with that location. At least one of the important production stages has to be performed on the territory of said geographical location.
A foreign person will be able to obtain protection for a geographical indication related to a foreign country/locality in case they enjoy the right for the corresponding geographical indication in their country and the protection regime in that country complies with Russian legislative requirements.
This geographical indication right is being introduced in addition to the IP right which already exits – the appellation of origin of goods.
In contrast to a geographical indication, an appellation of origin is protected as a designation of the geographical location that gives a product its particular qualities resulting exclusively from specific local conditions (natural and/or human factors). All the production stages must be carried out on the territory of the given geographical location.
The adopted amendments came amidst a number of noticeable litigation cases in which foreign owners of geographical indication rights in their countries (major wine producers) sought to register respective appellations of origin in Russia. On several occasions, Russian courts confirmed the possibility (under certain conditions) of registering appellations of origin based on other countries’ geographical indication rights. At the same time, the Russian Patent and Trademark Office consistently refused to admit evidence establishing the relation between the special properties of a good and a region’s natural/human factors. In our opinion, the new IP right will help said producers to assert their rights in Russia, since a geographical indication right holder is not required to prove said relation.
A geographical indication may be registered by one or several individuals, one or several legal entities, or by any association (union) whose activity does not contradict the legislation of the country of origin of the good.
The right to a geographical indication is valid for ten years from the date the application is filed with the RUPTO, and may be renewed at the right holder’s request for consecutive ten year-periods. The grounds for renewal are the submission of a document confirming that, on the date the renewal request is filed, the applicant:
The main provisions of the law will come into force one year after its publication date, that is, on July 26, 2020.