The Federal Law dated July 27, 2020 that came into force on July 26, 2019. No. 230-FZ "On Amendments to Part Four of the Civil Code of the Russian Federation and Articles 1 and 23.1 of the Federal Law "On State Regulation of Production and Turnover of Ethyl Alcohol and Alcohol-Containing Products and Restrictions on Consumption (Drinking) of Alcohol Products" introduced provisions into the Civil Code of the Russian Federation (hereinafter - the Civil Code) that define the legal regime of a new intellectual property object - a geographical indication.
According to paragraph 1 of Article 1516 of the Civil Code of the Russian Federation a geographical indication is a designation which identifies goods originating from the territory of a geographical location, a certain quality, reputation or other characteristics of which are to a great extent connected with its geographical origin (characteristics of goods). At least one of the stages of production of goods which has a significant impact on the formation of the characteristics of the goods must be carried out in the territory of the given geographical location.
It should be noted that on September 8, 2020 the order of Rospatent came into force, which approved the image of the mark of protection of geographical indication in the form of the emblem and its description (Order of the Federal Service for Intellectual Property of July 3, 2020 No. 94 "On approval of marks of protection of geographical indication and appellation of origin in the form of emblems").
To register a geographical indication, the first step is to submit an application, meeting the three mandatory criteria:
1. Correctly drafted application (statement; claimed designation; indication of goods; indication of the place of origin/production of goods; information relating to the relationship of the characteristics of the goods to their place of origin; description of the characteristics of the goods; description of the method of production of goods; description of control procedures; list of persons entitled to use the geographical indication; information confirming the right to carry out activities for the production of goods).
2. Payment of the fee
The amounts of the fees to be paid at this stage are:
• for registration of the application and making a decision on the results of the formal examination 2,700 rubles (item 2.3 of Appendix No. 1 to the Regulations on Fees);
• for the examination of the designation applied for as a geographical indication, and making a decision on its results 10,800 rubles (item 2.5 of Appendix No. 1 to the Regulations on Fees).
When applying to Rospatent in electronic form, the fees are reduced by 30 percent.
3. Proof documents that the applicant produces goods with relevant characteristics that are significantly related to their geographical origin, as well as information contained in the application (paragraph one of item 3 of Article 1522 of the Civil Code).
Only if the above three requirements are met, all documents can be submitted to Rospatent. Both using the electronic system and on paper.
After filing the application, the procedure for registration of a geographical indication is similar to the registration of a trademark: a fee check, a formal examination, and an examination on the merits, approximately up to 8 months.
Besides, after the publication of the information any interested person has the right to submit to Rospatent an objection against granting legal protection to the geographical indication within three months. Based on the results of the consideration of the opposition against granting legal protection to the geographical indication, Rospatent makes a decision on state registration of the geographical indication or a decision on refusal of state registration of the geographical indication taking into account the results of the examination of the applied designation.
If there are no obstacles to the registration of the geographical indication, the examination results are followed by a positive decision, according to which the Rospatent fee is paid:
• for registration of a geographical indication and granting of the exclusive right to such an indication 16,000 rubles (item 2.13 of Appendix No. 1 to the Regulations on Fees);
• for issuance of a certificate of exclusive right to geographical indication 2,000 rubles (item 2.14 of Appendix No. 1 to the Regulations on Fees).
If applications are submitted to Rospatent electronically, the fees are reduced by 30 percent. After the fee is taken into account, a certificate of exclusive right to a geographical indication is issued.
The exclusive right to a geographical indication is granted for a period of 10 years from the date of filing the application for registration, with the possibility of renewal. The application for renewal of the exclusive right is submitted during the last year of its validity. However, the application must be accompanied by documents confirming that the applicant produces goods with the characteristics specified in the State Register of Designations and Names, or a conclusion of the authorized body that the applicant produces goods with the special characteristics specified in the State Register of Designations and Names (Article 1531 of the Civil Code).
A geographical indication informs the consumer of the geographical origin, which implies certain characteristics of the goods. It is not necessary for a geographical indication to have specific characteristics and for all stages of production to take place in the territory of the relevant geographical place in order for legal protection to be granted. It will be possible to register a geographical indication if at least one of the stages of production takes place in the territory of the relevant geographical location. There is also no need to attach to the application for registration the conclusion of the authorized body (organization) confirming the compliance with the requirements for the production of goods, etc.
The right to apply for registration of a geographical indication may be assigned to one or several citizens, legal entities, as well as an association (union) or another corporation of persons. At the same time, the disposal of an exclusive right, including its alienation or granting another person the right to use a geographical indication, as well as the transfer of an exclusive right without the conclusion of a contract is inadmissible.
It should be noted that an appellation of origin can be transformed into a geographical indication (Order of the Ministry of Economic Development of Russia dated 03.07.2020 No. 399 "On approval of the procedure for transformation of the appellation of origin or application for state registration of the appellation of origin of goods respectively into a geographical indication or application for state registration of geographical indication and vice versa, as well as the application form for transformation of the name of origin into a geographical indication and the application form for transformation of geographical indication."
Registration of geographical indications can contribute to the development of regional brands, as the use of geographical indications will increase the recognition of the region. The promotion by regions of their own recognizable brands will preserve regional unique industries.
