Geographical Indications and Appellations of Origin

– Part IV of the Civil Code of the Russian Federation, effective since January 1, 2008, amended as of June 13, 2023.
– The Administrative Regulations for rendering by the Federal Service for Intellectual Property of the public service of state registration of a geographical indication and (or) of granting exclusive right to such geographical indication and of state registration of an appellation of origin and (or) of granting exclusive rights to such appellation of origin and of issuance of certificates for geographical indications, appellations of origin, duplicate certificates for the same, effective since September 27, 2020, amended as of December 23, 2020.
– The Administrative Regulations for rendering by the Federal Service for Intellectual Property of the public service for recording changes in the State Registers of trademarks, service marks, well-known trademarks, geographical indications and appellations of origin and for entering amendments in the Certificates of the same, effective since October 12, 2020, amended as of December 23, 2020.
– The Administrative Regulations for rendering by the Federal Service for Intellectual Property of the public service for extending the effect of a geographical indication and an appellation of origin effective since November 1, 2020.
– The Administrative Regulations for rendering by the Federal Service for Intellectual Property of the public service for early cancellation of a trademark, service mark, well-known trademark, trademark recognized as valid in the Russian Federation under International treaty, exclusive right to a geographical indication or an appellation of origin on the ground of a request of any person except the right owner because of liquidation of a legal entity or an individual entrepreneur, effective since November 14, 2020.
– The Administrative Regulations for rendering by the Federal Service for Intellectual Property of the public service of familiarization with application documents for registration and (or) of granting exclusive right to such geographical indication and of state registration of an appellation of origin and (or) of granting exclusive rights to such appellation of origin and of issuance of copies of such documents, effective since September 25, 2020.
– See other common legislation under "Trade and Service Marks".

Membership in International Conventions

– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Geneva Act, since August 11, 2023.

Filing

Notions: a geographical indication is a designation that identifies product originating from the territory of a geographical location, with the quality, reputation or other characteristics thereof being substantially connected with its geographical origin (characteristics of the product). At least one of the stages of the making of the product substantially affecting the shaping of the product's characteristics must be carried out on the territory of the given geographical location. An appellation of origin of goods is a designation that is the contemporary or historical, official or unofficial, full or abbreviated name of a country, an urban or rural settlement, area or another geographical location that includes such appellation or a derivative of such appellation, and has become known as a result of its being used in respect of the product whose special properties are exclusively determined by the natural conditions and/or the human factors which are typical for the given geographical location. On the territory of the given location there have to be carried out all the stages of making the product which substantially affect the shaping of the special properties of the product. 

Applicant for a geographical indication: one or several citizens, one or several legal entities, and also an alliance (union) or another association of persons whose creation and activities do not contravene the legislation of the country of origin of goods. 

Grounds for denying registration: (1) if the geographical indication or an appellation of origin has become a designation generally used in the Russian Federation as a designation of merchandise of a certain kind that is not connected with the place where it is produced; (2) if the geographical indication or an appellation of origin has been already registered in respect of product of the same kind; (3) if the geographical indication or an appellation of origin is identical or similar to a trademark having earlier priority, if the use of such geographical indication or of such appellation of origin of goods can mislead the consumer concerning the product or the manufacturer thereof; (4) if the geographical indication or an appellation of origin is the name of a species of plant or animal, if the use of such geographical indication or such appellation of origin of goods can mislead the consumer concerning the product; (5) if the geographical indication or an appellation of origin can mislead the consumer concerning the product or the manufacturer thereof; (6) if the geographical indication or an appellation of origin has been declared for state registration for a product that does not meet the requirements of the federal laws concerning the stages and the boundaries of the product, its characteristics and special properties.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (a scanned copy is sufficient and notarization is not required);
2. The claimed designation;
3. A product in respect of which the state registration of the geographical indication and for grant of an exclusive right to such geographical indication, or only grant of an exclusive right to a geographical indication registered earlier are being requested;
4. A place of origin (manufacture) of the product (the boundaries of the geographical location);
5. If the place of origin is in a foreign country, the registration of the appellation of origin in the corresponding country;
6. Information concerning the connection of the characteristics of the product with the place of origin (manufacture) thereof;
7. A description of the characteristics of the product, in particular the initial material used to manufacture the product, physical, chemical, microbiological, organoleptic or artistic characteristics of the product;
8. A description of the method whereby the product is manufactured, and also information on the conditions of storage and transportation thereof, if this substantially affects the shaping and preservation of the product's characteristics;
9. A description of the procedure for monitoring the observance of conditions of manufacture and the preservation of the characteristics of the product for which legal protection of the geographical indication is being requested;
10. A list of the persons entitled to use the geographical indication, if the geographical indication application is filed by an alliance of persons, and terms for the use of the geographical indication by the persons who are members of that alliance;
11. Information confirming the right to manufacture the product, if provision is made for this in federal laws;
12. Documents confirming that the applicant manufactures the product that has relevant characteristics which are to a substantial degree due to its geographical origin, and also the information cited above;
13. A document from the competent state body certifying the fact that the applicant is entitled to use the claimed appellation of origin (this document is not required for a geographical indication).

Note: the application form has to be in the Russian language. Other documents may be filed in a foreign language, translated into Russian within two months.

Electronic filing: possible. 

Electronic signatures: are accepted.

Examination

Examination: includes a formal examination followed by an examination as to substance. The Patent and Trademark Office examines all applications received in order to establish that the contents of the application and the geographical indication (appellation of origin) presented for registration comply with the requirements of the Part IV of the Civil Code. The Patent and Trademark Office reserves the right to request from the applicant to submit further material to assist them in deciding whether or not to grant the registration for the geographical indication (appellation of origin) or an exclusive right to use the geographical indication. If the applicant fails to submit the additional material within three months from the release date of preliminary examination results (a notification on a Provisional Refusal), a final Refusal shall be issued on the application with a repetition of arguments behind Provisional Refusal. The time limit for responding to Provisional Refusal is not extendible.

Appeal: if the applicant does not agree with the Final Refusal, he may, within three months, lodge an appeal, with a statement of his reasons together with the prescribed fee, with the Patent Dispute Chamber (a Board of Appeal of the Russian Patent and Trademark Office) and thereafter before a court.

Opposition: after publication of the application in the Official Gazette within three months, a third party is entitled to file a substantiated request not to register the pending geographical indication or not to grant the exclusive right to the registered geographical indication. Usually the Examining Authority takes into account such petitions and issues a provisional refusal for the pending application.

Registration, Protection

Beginning of protection: from the day of filing of the application. 

Kind of property: right of exclusive use. 

Duration: ten years.

Renewal: for periods of ten years; may be requested provided that the right owner files documents confirming that he manufactures products having the characteristics cited in the State Register of Indications and Appellations, or a statement of the authorised body to the effect that the right owner manufactures products having the special properties mentioned in the State Register of Indications and Appellations.  Grace period: six months with fine. 

Exhaustion of rights: registration of a geographical indication shall not authorize its owner to forbid other persons to use that indication in respect of the goods which have been put on the market of the Russian Federation directly by the owner or upon his consent.

Modification of Protection after Registration

Opposition to registered geographical indication: the legal protection granted to a geographical indication or the exclusive right granted to early registered geographical indication may be disputed or found invalid: (1) in full or in part within the entire validity period of the exclusive right to a geographical indication, if the legal protection was granted without compliance with the requirements reserved under absolute grounds for denying registration (see above items 1, 2, 5, 6 in Section 2. Filing); (2) within a five-year period from the publication date of a geographical indication state registration information published in the Official Trademark Gazette, if the legal protection was granted without compliance with the requirements reserved under relative grounds for denying state registration (see above items 3 and 4 in Section 2. Filing). 

Termination of legal protection of a geographical indication in following cases: (1) disappearance of the conditions typical for the given geographical location, and impossibility of the manufacture of the product having the characteristics cited in the State Register of Indications and Appellations in respect of the given geographical indication; (2) termination of the legal protection of the geographical indication in the country of origin of the product. 

Termination of the effect of an exclusive right to a geographical indication in following cases: (1) non-compliance of the product manufactured by the right holder with the product characteristics cited in the State Register of Indications and Appellations in respect of the given geographical indication; (2) the right holder's losing the right to manufacture the product having the characteristics cited in the State Register of Indications and Appellations in respect of the given geographical indication; (3) the stages and the boundaries of manufacture of the product, the characteristics of the product, or the special properties of the product for the designation of which a geographical indication or an appellation of origin of goods is used do not meet any more the requirements established by federal laws and other normative legal acts of the Russian Federation; (4) the right holder's systematically failing to observe the method whereby the product is made, and the conditions for storage and transportation thereof cited in the State Register of Indications and Appellations; (5) termination of the legal protection of the geographical indication; (6) termination of the legal entity being the right holder, or registration of the citizen being the right holder terminating activity in the capacity of an individual entrepreneur, or the citizen's death; (7) expiry of the effective term of the exclusive right; (8) filing by the owner of the exclusive right of the relevant application with the federal executive body in charge of intellectual property matters; (9) loss of the right to the given geographical indication in the country of origin of the product by a foreign legal entity, foreign citizen or stateless person. 

Infringement and penalties: during the period of validity of a certificate for the right of exclusive use of a geographical indication, the owner of such a certificate may demand withdrawal from circulation and destruction at the infringer's expense of the counterfeit goods, labels and packing of the goods on which is placed the illegally used geographical indication or appellation of origin or designation including, reproducing or imitating the registered geographical indication or appellation of origin and the owner may also demand payment of damages or compensation.