Zuykov & Partners - Russia
A trademark is the most frequently registered means of individualisation. According to Article 1483(1,3) of the Russian Civil Code:
“No state registration as the trademarks shall be allowed in respect of the designations, which do not have a distinctive ability or which consist only of the elements that: characterize the products, including the ones that indicate to their kind, quality, quantity, property, purpose, value, as well as to the time, place and method of their manufacture or sale... .”
These restrictions are not incidental – the exclusive rights to a registered trademark belong to the rights holder. If Rospatent were to grant protection to a trademark consisting solely of a geographical name, it would then be impossible to use this element in other designations.
Varieties of mark comprising geographical names
Designations that include a geographical name must be claimed as an unprotected element, provided that this does not occupy a dominant position in the designation, as marks that consist fully of a geographical name rarely obtain registration. According to specialists at Rospatent, the protection of this kind of mark is permissible only where the geographical name is not well known.
The purpose for which a geographical name is used is as follows:
- To indicate the place of manufacture, sale or location of the manufacturer. Rospatent specialists claim that it is inadvisable to grant protection to these designations. The registration of the designation is therefore possible with an indication of the geographical name as the unprotected element.
- As a fantasy element and not perceived as the indication to the place of the manufacture or sale of the product. Trademarks with such elements are rarely claimed.
Designations with geographical names that act as a dominant element
The name of the place of origin of the product as a means of individualisation
According to Article 1516 of the Civil Code, the name of the place of origin of the product is the designation that consists of or includes a geographical name (or derivatives thereof), which has become known as a result of its use in relation to the product, the special properties of which are determined mainly by the natural conditions that are characteristic of this geographical subject matter and/or human factors. The product, in relation to which the name of the place of origin is used, is associated with the geographical subject matter and guarantees the availability of its special qualities. There is a restriction on the number of subject matters allowed for registration – the designation must be known for the reason of use in relation to the claimed product. During examination, compliance of the designation with the imposed requirements and justification of the indication of origin of the product is checked.
GIs as new means of individualisation for regional brands
In 2019 following the president’s approval, a federal law amending Part Four of the Civil Code and introducing a new means of individualisation – geographical indications (GIs) – was adopted. According to the provisions, which come into force later this year, a ‘GI’ is “the designation that allows identifying the product as originating from the territory of the geographical subject matter, while the product’s certain quality, reputation or its other characteristics shall be determined largely by its geographical origin”.
A number of specific requirements will be imposed on registrations of such designations. First, at least one of the stages of the product manufacture – which influences the formation of the good’s characteristics – must be performed on the territory of the indicated subject matter. Second, the applicant is obliged to submit information on the product’s place of origin, the associations with its certain qualities, reputation or other characteristics connected to the place of origin. The product’s specific features, conditions of its storage, transportation and procedure for controlling the compliance with the manufacture conditions should also be described in the application.
Advantages and disadvantages
The obvious advantage of these designations is to draw the consumer’s attention to the product by indicating its unique characteristics, where these are associated with geographical particularities. However, when geographical names are used as a means of individualisation it is highly probable that consumers will be misled in relation to the properties of the product or to its manufacturer. Thus, when deciding whether to use a geographical name in a designation, it must be recognised that while including such a specific element can strengthen the position of the rights holder in a competitive market, it can also weaken it by reducing consumer demand.