GIs: Welcome to Russia

In July 2020, important updates were made to the Russian Civil Code (Part IV), which regulates relations in the sphere of intellectual property (IP), including “means of individualization.”

In Russian law, IP rights are divided into two groups: means of individualization are distinct from “results of intellectual activity.” The most important amendments to the Russian Civil Code (Part IV) concern the introduction of a new IP right into the Russian legal system: geographical indications (GIs).

By amending this legislation, Russia fulfils its obligations at the World Trade Organization, as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) requires protection of GIs. The introduced amendments are also in line with the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (AOG). Russia is considering joining this Agreement in the future.

According to provisions of Article 1516(1) of the Russian Civil Code, a GI is defined as a designation that identifies goods as originating from a specific geographical area, with a certain quality, reputation, or other characteristics substantially determined by their geographical origin. At least one of the stages of production of goods affecting the formation of its quality, reputation, or other characteristics should be carried out on the territory of this geographical area.

GI designation is a means for individualization similar to an Appellation of Origin of Goods (AOG), which has entitled protection in Russia since 1992.

Differences Between AOG and GIs

An AOG also serves to designate a product that features specific characteristics based on its geographical origin. However, while AOG is designed for goods with properties “exclusively” determined by their geographical origin—namely by natural or human factors of the corresponding geographical area—the requirements for GIs are less rigid. Properties of goods for which GIs are designated need only be “significantly” associated with the respective geographic features.

The amendments provide for a distinction between a GI and an AOG, an important difference being whether all stages of production are carried out within the boundaries of the corresponding geographical area. In respect to an AOG, a requirement is that the goods must be fully produced within the territory of a geographical area, which is registered as an AOG.

However, as explained above, GIs only require at least one stage of production of the goods, which significantly determines their characteristics, to be carried out in the corresponding geographical area.

In addition, an AOG can only be a verbal designation, whereas a GI may represent any designation (word, figurative, combined, etc.) associated with the place of origin of goods.

Further, according to the Russian law, only a designation that has become known as a result of its use on traditional products whose properties are exclusively determined by their geographical origin may be eligible for protection as AOGs, but there is no such requirement of fame with respect to GIs.

“The applicant will now be able to determine which option to choose for legal protection—AOG or GI.” - Viacheslav Rybchak, Gorodissky & Partners

Who Can Register AOGs and GIs?

Earlier Russian legislation did not require the examiner to determine whether the applicant for an AOG was indeed the manufacturer of the product. However, the law forbids granting a license to use a registered AOG to someone else.

Now, according to Article 1518 (1) of the Russian Civil Code, an AOG or a GI can be registered in Russia by one or several categories of citizen, or one or several types of legal entity, as well as by an association (union) or other association of persons, the creation and activities of which do not contradict the legislation of the country of origin of goods.

An important novelty is that the exclusive right to use an AOG or a GI can now be legally granted to an association, which indeed reflects the practice that has been already adopted in Russia before the amendments were introduced. When applying for an AOG or GI, the association will have to additionally submit a list of persons entitled to use the AOG or GI, the conditions of use, and the procedure of control of such use by the association.

At registration the exclusive right to use an AOG or a GI will be granted to each member of the association, which will be entered into the State Register of AOGs and GIs accordingly.

The applicant will now be able to determine which option to choose for legal protection—AOG or GI. The law also prescribes that an application for a GI may be converted into an application for an AOG and vice versa.

According to amendments under Article 1517[2] of the Civil Code, state registration of a GI identifying the goods as originating from a geographical area located in a foreign state can be granted in Russia if such designation is protected in the country of origin as a GI or other mean of individualization. However, the latter must also comply with the requirements for a GI in Russia. Moreover, the owner of the exclusive right to use such GI can only be a person whose right to use this designation as GI or other mean of individualization is protected in the country of origin.