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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 and a trademark can be registered only for the same goods which are protected under relevant geographical indications or designations of origin. The burden of verifying the compliance of the application with the mentioned requirement lies on the examination. 

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. The examination will not check the compliance of the trademark to this requirement. 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 filed such action.

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/or recommendation documents and was considered as a particular case of misleading the consumer regarding the manufacturer of the goods.

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