If you or your client is a business owner in alcoholic beverages and food industries, it is possible that you may from time to time face some issues in registering the trademark which contain the appellation of origin (AO), the protected designation of origin (PDO) or geographical indication (GI).
Such issues may vary across different countries and it is always helpful to know what one may expect in the jurisdictions where the company is already present or planning to expand to.
In this publication, based on cases from our practice, we will try to throw some light on the most typical problems the trademark holder may face in RUSSIA and UKRAINE trying to obtain protection for such a mark.
I. MISLEADING CHARACTER OF THE MARK
One needs to be careful when choosing the mark for such a range of products as alcoholic beverages, olive oil or cheese and so on, as the Trademark and Patent Offices may check the compliance of the included GI/PDO/AO as an element of the mark as to the origin of the goods and the owner’s residence.
Quite often, the refusals coming, for instance, from the Russian patent and Trademark Office (Rospatent), may be grounded on fact that the location of the owner and the origin of the products respectively differ from where GI/PDO/AO originates:
Let’s say the mark contains the verbal element “BOURBON”, while the holder is from one of the EU member states (IR 1252148 TM ). In this case, the examination will cite the false and deceptive character of the applied mark because “bourbon” is geographical indication for American-made whiskey, while. For instance, scotch in the mark may be deceptive if the applicant is other than from Scotland, since Scotch guarantees it is a product of Scotland (IR 1170548 TM TRUE SCOTCH).
According to the current legislation in Ukraine, the legal protection shall also not be provided for signs which: may mislead the public with regard to the goods or services, namely, as to their nature, quality or geographical origin.
In such cases, the only way to try achieve protection for the mark in Russia and Ukraine would be to assign it to the company located in the required jurisdiction if the trademark owner has any affiliated companies there or rebrand the mark for this particular market.
II. COLLECTIVE MARK REGISTRATION REQUIREMENTS
If the mark is filed in Russia or Ukraine in the name of the consortium or any other organization that comprises several manufacturers, the trademark is, as a rule, filed as a collective mark. Therefore for international registrations designating Russia and/or Ukraine and filed via the WIPO as “Collective mark, certification mark or guarantee mark” one of the grounds for refusal would be the lack of the documents that are required to be submitted to the Office to support the application for the collective mark.
Under the Article 1511 of the Russian Civil Code
The State Registration of a Collective Mark
“1. The application for registration of a collective mark (collective mark application) filed with the federal executive body charged with intellectual property matters shall be accompanied by a charter of the collective mark comprising the following:
1) the name of the association authorized to register the collective mark in its name (right holder);
2) a list of the persons entitled to use the collective mark;
3) the purpose of registration of the collective mark;
4) a list of the uniform characteristics of quality of, or other common characteristics of the goods which are going to be designated by the collective mark;
5) terms for using the collective mark;
6) provisions on the procedure for monitoring the use of the collective mark;
7) provisions on liability for a breach of the charter of the collective mark.”
Under the Article 7 of the law of Ukraine “On Protection of Rights to Marks for Goods and Services”: in case of filing the application for the collective mark, a relevant checkmark shall be made in a request for a collective trademark registration together with the indication of the list of persons entitled to use such trademark. The request for registration of a collective trademark shall also be accompanied by the document that sets out the terms of its use.
For overcoming such ground for refusal, the required documents need to be provided with the Rospatent/Ukrpatent along with filing a response to the provisional refusal.
As an example, we can mention the international registration 1413018 for the trademark ASOLO – PROSECCO, which was refused in Russia on this ground among other issues.
III. COLLISION WITH THE GEOGRAPHICAL INDICATION/APPELLATION OF ORIGIN
– which is not registered in Russia and Ukraine
If the mark containing GI/PDO/AO is filed in the name of the company other than the relevant authority in charge of controlling the products labeled by this GI/PDO/AO, it will most likely face a refusal on the ground that such an element is capable to mislead the consumers as to the origin and properties of the applied goods, being the Geographical Indication or the Protected Designation of Origin or the Appellation of Origin.
For overcoming such a ground for the refusal it would be necessary to provide the document that the products manufactured under the applied designation have qualities or characteristics which are determined by the region of production, are produced, processed and prepared exclusively in that region and that the relevant authority controlling this GI/PDO/AO grants their consent to register the trademark containing such an element.
For instance, we were able to overcome this ground for refusal issued by the Russian PTO in respect of IR 1153181 TM by submitting an official document from the Consortium for the Protection of Prosecco from Conegliano Valdobbiadene where they authorized the Casa Vinicola Zonin S.p.a. to use the PDO Prosecco in the mark and in the list of goods and confirmed that the wine produced by the trademark owner meets the requirements of the production regulation.
As an example, we could also mention the opposition filed against registration of IR 1252148 TM in Ukraine on behalf of Distilled Spirits Council of the US, Inc., (the company which represents America’s leading producers and marketers of distilled alcoholic beverages sold in the United States and around the world, including Bourbon Whiskey). The opposition was based on the arguments that TM contains the verbal element “BOURBON WHISKEY”, while the applicant didn’t prove that the goods under subject mark meets the requirements of the production regulation and have the appropriate properties, in order to use the term “BOURBON WHISKEY”. The provided arguments were accepted by the Examination and the subject mark was refused registration in Ukraine.
– which is registered and protected in Russia
Article 1483 of the Russian Civil Code reads as follows:
7. No trademark registration shall be granted for any goods to any designations identical or similar to the extent of confusion with the appellation of origin of goods which is protected in accordance with the present Code, except for cases when such designation is included as a non-protected element in a trademark registered for the name of a person having an exclusive right to that name, if the trademark registration takes place in respect of the same goods for the individualization of which the appellation of origin of the goods has been registered.
Therefore, if your trademark contains any GI/PDO/AO already registered in Russia, the Russian examination would cite the earlier GI/PDO/AO as the ground for refusal of your trademark in Russia.
The only way to overcome such a ground of refusal is to apply and register GI/PDO/AO in the name of your company in Russia if the company is eligible and meet the requirements for such registration. The average GI/PDO/AO registration time frame in Russia is 18 months. Registration is valid within 10 years and can be further renewed.
Knowing all the aforesaid prior to filing an application for such marks can be very useful, also money and time saving. Needless, to say that we were able to efficiently secure and protect our client’s rights in the subject jurisdictions.
We would be happy to advise on potential risks and challenges as well as to assist with filing the relevant applications for GI/PDO/AO or a trademark containing GI/PDO/AO with the local Trademark Offices in the CIS region