Federal Law No. 143-FZ dated May 28, 2022 «On Amendments to Part Four of the Civil Code of the Russian Federation» introduced amendments specifying the grounds of refusal for trademarks that include names of geographical objects. The purpose of the amendments is to harmonize national legislation with Article 11 of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
Particularly, the amendments affect the Clause 7 of the Article 1483 stipulating the registration procedure of the trademarks comprising geographical indications or designations of origin.
Currently, it is prohibited to register such trademarks for any goods. At the same time, the law sets forth the exception to this rule: a trademark can include a «geographical» element as a non-protectable element provided that the registration of a trademark is made in the name of a person entitled to use such geographical indications or appellations of origin and for the same goods for which the geographical indications or appellations of origin are protected. The burden of examining the compliance of the trademark application with the mentioned requirement lies on the examination.
According to the current practice, the examination revises the identity and confusing similarity of the claimed trademarks with the geographical indications or appellations of origin. However, in some cases the trademark can be considered as capable of misleading the consumers regarding the place of manufacture of the goods, even if the trademark itself does not include the mentioned objects, but the claimed list of goods contains goods that can be identified as originating from a particular territory. An example of such goods can be specific names of alcoholic beverages, for example, «bourbon», «scotch", «grappa». If the country of origin of the applicant does not correspond to the place of manufacturing of such goods (for example, in the case of bourbon - the USA; scotch - Scotland; grappa - San Marino), the trademark will be refused. In this case the applicant shall prove that the relevant goods possess the special characteristics of the goods originating from a specific territory. It can be done by providing documents proving that the goods were produced in the relevant territory. If the name of such goods is also the name of a protected geographical indications or appellations of origin, then consent from the right holder will also be required. However, if such goods are included in the list, sometimes the examination issue the office action at the stage of examining the list of goods. The expert can offer the applicant either to delete the relevant goods, either to amend them to a more generic term.
From the end of May 23, 2023, the registration of the trademarks including geographical indications or designations of origin are allowed for the goods, which are inhomogeneous to the goods for which the geographical indications or designations of origin are protected, provided that the use of a trademark regarding such goods will not be associated among consumers with the geographical indications or designations of origin and will not infringe the legitimate interests of their holder (new sub-clause 2 of clause 7 of the Article 1483). These amendments will change the approach of the examination of the Clause 7 of Article 1483 because the examination will not revise the compliance of the trademark to the new sub-clause 2 of clause 7 of the Article 1483. In case such trademark is registered, an interested party will be entitled to file an invalidation action. Therefore, the burden of proving the false associations among consumers or infringement of legitimate interests of the holders of geographical indications or designations of origin lies on the relevant party which files such action.
After the amendments to the Clause 7 of the Article 1483 enter into force, the examination shall examine whether the trademark include, reproduce or imitate the geographical indications or appellations of origin (currently the examination shall examine the identity and the confusing similarity) and also examine the questions of homogeneity of the goods. Therefore, the examination shall examine the following questions: whether the claimed trademark is identical to the geographical indications or appellations of origin? does the claimed trademark imitates the geographical indications or appellations of origin? does the claimed trademark comprises any geographical indications or appellations of origin? are the goods homogenous?
Pursuant to the amendments to be implemented in the Articles 1488 и 1489 of the Russian Civil Code, the restrictions to assignment and licensing of trademarks comprising names of geographical objects will affect only trademarks which are registered for homogenous goods for which geographical indications or designations of origin are registered.
Additionally, from May 29, 2023, it is prohibited to register trademarks that are capable of misleading consumers not only regarding the goods and its manufacturer, but also regarding place of manufacturing of these goods. The compliance of the claimed designation with this requirement will continue to be checked by the examination. This restriction was previously stipulated only in by-laws and recommendation documents and was considered as a particular case of misleading the consumer regarding the manufacturer of the goods.