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“The team was recently visible advising on a number of pharmaceutical cases. Sources agree that the team is “moving in the right direction” and are particularly impressed by its work in the pharmaceutical sector”.

 

Geography in Law: Obtaining the Right to Indicate the Origin of Goods

15.03.2017

Mariia Koval, attorney at Ilyashev & Partners Law Firm
Source: Forbes.ua

Details on the novelties in the legal protection of geographical indications

On January 25, 2017, the Government approved the Draft Law “On Amendments to Certain Legal Regulation of Ukraine on the Improvement of Geographical Indications’ Legal Protection” elaborated by the Ministry of Economic Development.

The amendments under this Draft Law are introduced mainly to the Law of Ukraine “On the Protection of Rights to Goods Origin Indication”, therewith changing its title to the Law of Ukraine “On the Legal Protection of Geographical Indications”. This provides for the compliance of the terminology with the Civil Code of Ukraine.

Pursuant to the Draft Law the unified wide term “geographical indication” is introduced, which means a sign used on products that have a specific geographical origin and possess qualities, reputation or any other features that are due to that origin if at least one stage of manufacture is conducted therein.

The Draft Law aims at brining the Ukrainian legislation into the compliance with the requirements of the Association Agreement between Ukraine and the European Union with regard to geographical indications of goods origin.

The Draft Law offers to implement the new unified term “goods specification” that combines the characteristics of goods being marked with the geographical indication, approved by the authorized agency (name and description of goods, raw materials, main physical, chemical and other characteristics of goods, geographical origin, the territory of raw materials manufacture, production practices’ description etc.).

Unlike the acting version of the Law of Ukraine “On the Protection of Rights to Goods Origin Indication”, the new Draft Law provides for the registration of geographical indications only for those associations that manufacture the goods and/or produce (process) the corresponding raw materials in the indicated geographic location.

Therewith, the right to geographical indication registration may be provided to a legal or individual entity only subject to two requirements:

• The entity should be the only manufacturer willing to file the application for registration;
• The manufacture, processing, and preparation origin should significantly differ from surrounding areas.

This provision contains a strange point: if on the date of application filing one entity is the sole manufacturer of the goods, and later another manufacturer joins the process, it is unknown how the second manufacturer may obtain such registration.

In accordance with the Association Agreement requirements, the geographical indications should be protected, inter alia, from any imitation to include the combination of words “style”, “type”, “method” etc.

Due to the aforementioned, the Draft Law envisages the right of entities, authorized to use the geographical indications, to prohibit, inter alia, the use by other entities of the words “style”, “type”, “method”, “imitation”, “taste”, “similar” etc.

It is worth to mention that the Ukrainian manufacturers are widely using such expressions on the packaging of their products. Therefore, if the new version of the Law will be adopted they would be forced to invent the new names for these products.

Also, it will be hard for the consumers to understand this, as the original products (for instance Greek feta, French champagne and cognac) are unavailable to the Ukrainian consumer mainly due to their price.

Moreover, for the majority of Ukrainians the globally known geographical indications have long ago become the specific names, in other words the generally used names of certain goods. For example, champagne, cognac, port.

The Draft Law envisages such novelty as the termination of geographical indication registration pursuant to the application of the interested entity if the indication has not been used in the course of seven years from the publication date of its registration or from another date after the publication.

In addition, the Ukrainian manufacturers currently using the geographical indication of the European Union have another 7-10 years to adjust the names of their goods under such indications and to inform the customers thereon.

Certainly, the legal protection of geographical indications is very important for the manufacturers of goods possessing any unique qualities due to geographical origin.

According to the registered trademarks data base today there are a lot of registrations with the indication of goods’ origin in the name of individual and legal entities that are not related to the origin at all. Therefore, it is essential to prevent the misleading trademarks from registration.

Hopefully, in case this Draft Law is adopted, the geographical indications (Ukrainian as well as European) will be afforded with the appropriate legal protection and will be protected from the collision with the trademarks.

 
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