Geographical Indications in Russia by the Example of Scotch Whisky

Date: 30 March 2016

As of the end of July 2015 the denomination Scotch Whisky lacks legal protection in the Russian Federation.

That said, there is an according pending application 2013731723 for an Appellation of Origin of Goods (AOG) filed on 13 September 2013 in Russia.

The applicant is Scotch Whisky Association who announced that the application has been made with support from the UK Government and European Commission, and accompanied by a letter of support from Rt Hon Owen Paterson MP, the DEFRA Secretary of State.

It should be noted that Scotch Whisky is protected in the UK and EU as an Indication of Geographical Origin (IGO). However, currently Russia do not recognize IGOs, and the Russian intellectual property office (RUPTO) systematically refuses protection of foreign IGOs as Russian AOGs.

Regarding the pending AOG application, public records show numerous complications. On 11 February 2014 the RUPTO simultaneously issued two requests (subject is not available to the general public). The deadline for addressing said requests was extended by the applicant three times: on 11 April, 24 June and 26 August 2014. Then, two sets of additional materials were served before the RUPTO on 5 November and 5 December 2014 which are now being reviewed by the office.

Concerning the protection of Scotch Whisky as trademarks or their parts, there are lots of Russian trademarks including the designation in question. Mostly, they are bottle labels where Scotch Whisky is disclaimed from protection along with other non-dominate indications.

There are a few notable exceptions where none of the elements have been disclaimed, nor Scotch Whisky. This concerns trademarks registered in early 80s or before, during the Soviet era. Most of those registrations are not valid now, however, some of them remain in force. For example:
TM 44333 of 25 Oct 1981, label White Horse Scotch Whisky WHITE HORSE DISTILLERS LTD.

Relating to new trademark applications, the RUPTO now seems not only to refuse designations including Scotch Whisky by applicants not related to Scotland, but even separate words therefrom. As an example, on 9 February 2015 two applications for labels Scotch Brothers Gold and Scotch Brothers Smoky were refused registration in relation to goods in ICGS class 33.

Those applications have been filed in the name of a Russian company, and the RUPTO explained the refusal by the fact that in accordance with Scotch Whisky Regulations 2009 (which is not a part of the Russian legislation) Scotch can only be produced within the borders of the respective IGO (Scotland), and in strict compliance with the Regulations, which may not be the case with the Russian applicant.

To summarize the above, today the denomination Scotch Whisky is not automatically protected from being used by anyone in Russia. Nevertheless, the designation is secured by the RUPTO from being registered by wrong entities, namely, those not related to Scotland. Furthermore, it is possible that the Federal Antimonopoly Service (FAS) may consider use of Scotch Whisky by an improper person as unfair competition.

Author: Alexander Baranchikov, Lead Lawyer, RUPTO Attorney 1719

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