Lisbon System for the International Registration of AOs and GIs

Appellations of Origin (AOs) and Geographical Indications (GIs) are distinctive product designations that require a qualitative link between the product to which they refer and its place of origin. AOs and GIs help to distinguish goods with a specific geographical origin, which possess certain qualities and/or a reputation linked to that origin, from similar products on the market. Oftentimes, goods bearing an AO or a GI represent a substantial share of exports and revenue for many countries, hence the need to protect them in the largest possible number of markets, both domestic and foreign.

Together, the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, and its latest revision, the Geneva Act of 2015 form the Lisbon system, offering protection for AOs and GIs in 41 Contracting Parties, covering 71 countries in Africa, Asia, Europe, Latin America and the Caribbean, through a single registration procedure and one set of fees.

The Russian Federation is a Contracting Party to the Geneva Act of the Lisbon Agreement. Rospatent, as the Competent Authority of the Russian Federation, carries out a substantive examination of the filed international applications for GIs and AOs, checking their compliance with the requirements prescribed by the Civil Code.

In light of its accession to the Geneva Act of the Lisbon Agreement, the Russian Federation made four following declarations. In accordance with Article 7(4) of the Geneva Act of the Lisbon Agreement, Russia has declared that it wants to receive an individual fee to cover the cost of substantive examination of each international registration that amounts to 119 Swiss Francs (see Lisbon Information Notice No. 7/2023)

In accordance with Article 7(4) of the Geneva Act, the Russian Federation declared that it requires an administrative fee relating to the use by the beneficiaries of the AO or GI on its territory that amounts to 16 000 Russian Rubles (see more information below).

In accordance with Article 6(5)(b) of the Geneva Act and with its national legislation, the Russian Federation declared that a registered AO or GI shall be protected from the date on which the decision to grant legal protection is taken (see Lisbon Notification No. 56).

Moreover, the Russian Federation availed itself of the possibility provided for in Article 29(4) of the Geneva Act to extend by one year the time limit referred to in Article 15(1) of the Act in accordance with the procedures specified in the Common Regulations.

For all declarations on requirements concerning the application made by Contracting Parties of the Geneva Act of the Lisbon Agreement see the relevant section of the WIPO’s website.

During the substantive examination, Rospatent checks the compliance of the filed AO or GI applications with the requirements prescribed by the Civil Code of the Russian Federation. In particular, a designation, claimed as a GI, should be protected as a GI or any other means of individualization¹ in the country of origin, while a designation, claimed as an AO, should be protected as such in the country of origin. Only persons whose rights are protected in the country of origin may become holders/beneficiaries of the exclusive rights to these GIs or AOs in the Russian Federation, subject to administrative fee payment.

During the examination, Rospatent checks a filed designation against requirements specified in Article 1516 (1) of the Civil Code that read as follows:

"A protected GI is a designation that identifies a product originating from a geographical area, its specific quality, reputation, or other characteristics that are closely linked to its geographical origin.

At least one of the cycles of product production that essentially affects the formation of its characteristics should take place in this geographical area.

A protected AO is a designation that represents a modern or historical, official or unofficial, full or abbreviated name of the country, urban or rural settlement, locality or other geographical area, and includes such name or its derivative and became well-known as a result of its use in respect of a product, which special characteristics are exclusively determined by the natural conditions and (or) human factors of this geographical area. All cycles of product production, that essentially affect the formation of its special characteristics, should take place in this geographical area.

The production cycles and boundaries, as well as characteristics or special features of the product, designated by a GI or AO, should comply with the requirements provided for by the federal laws and other regulatory legal acts of the Russian Federation. The control over this compliance should be exercised in accordance with the federal laws."

The examination also covers consideration of any information submitted by the 3^rd parties that are entitled to submit their motivated positions related to the claimed designations within 3 months from the publication date of the received international registrations.

Upon the examination results, Rospatent may take one of the following decisions:

• grant a GI legal protection on the territory of the Russian Federation and/or grant the exclusive right to the GI;

• refuse to grant a GI legal protection on the territory of the Russian Federation and/or grant the exclusive right to the GI;

• grant an AO legal protection on the territory of the Russian Federation and/or grant the exclusive right to the AO;

• refuse to grant an AO legal protection on the territory of the Russian Federation and/or grant the exclusive right to the AO.

After Rospatent had taken its decision, in particular, refused to grant protection and/or the exclusive right, this decision may be challenged in an administrative manner by submitting an objection under the procedure specified in Article 1526 of the Civil Code. To submit an objection the applicant should pay the relevant fee. The objection should be in Russian and should meet the requirements specified in the Rules for Consideration and Resolution of Disputes by the Federal Executive Authority for IP in an Administrative Manner. Please note that the foreign applicants (rightsholders) should interact with Rospatent only through the patent attorneys officially registered in the Russian Federation. Any direct communication between Rospatent and foreign applicants in the course of proceedings on the application or consideration of the objections is not allowed under the applicable law.

Furthermore, the Civil Code of the Russian Federation specifies provisions on challenge and invalidation of the legal protection of GIs or AOs granted under the Lisbon System. In accordance with Article 1535(4) of the Civil Code, this protection or, in some cases, the grant of the exclusive right to a GI or AO, may be challenged and invalidated on the grounds and according to the procedure specified in Article 1535(2) of the Civil Code.

Any interested party, including a competent or supervisory authority, may submit such an objection to Rospatent. The list of these authorities, depending on the type of goods concerned and their competencies, is specified in the Resolution No. 481 of the Government of the Russian Federation on the List of Federal Executive Authorities Competent to Provide Opinions Attached to an Application for the State Registration of an AO and for the Granting of the Exclusive Right to the AO, as well as to the Previously Registered AO dated September 17, 2004 (as amended on September 4, 2012):

• Ministry of Health of the Russian Federation may submit the objection regarding mineral drinking medical water, medical and table water, and mineral natural table water);

• Ministry of Industry and Trade – products of folk arts and crafts;

• Ministry of Agriculture – agricultural goods, food products, non-alcoholic products, beekeeping products, fish, and other marine products);

• Federal Service for Alcohol Market Regulation (Rosalkogolregulirovanie) – alcoholic and alcohol-containing food products).

The mentioned declarations made by the Russian Federation include the requirement to pay the administrative fee directly to Rospatent to allow beneficiaries to use a GI or AO on the territory of the Russian Federation. Therefore, to obtain the exclusive right to an AO or GI, protected on the territory of the Russian Federation under the Geneva Act, the beneficiaries should pay the administrative fee that is beyond those payable to the International Bureau of WIPO (individual fee).

The administrative fee is payable by a beneficiary who intends not only to protect an AO or GI but to obtain the exclusive right to use this AO or GI with all relevant benefits and liabilities. The exclusive right, derived from the administrative fee payment, allows the beneficiary to enforce the rights and prevent unlawful use of the AO or GI by submitting relevant procedural documents and recording the protected AO or GI into the Customs Register of Intellectual Property of the Russian Federation, TROIS).

Under para. 3 of the Amounts of Fees Payable for the Granting Legal Protection to AOs or GIs on the Territory of the Russian Federation under the Geneva Act (Fee Amounts), approved by Resolution No. 1652 of the Government of the Russian Federation and dated September 19, 2022, the administrative fee amounts to 16 000 Russian Rubles and should be paid directly to Rospatent.

Please note that the exclusive right to use an international registration is valid for 10 years from the date of the Rospatent’s decision to grant legal protection to the AO or GI on the territory of the Russian Federation (Article 1531(1) of the Civil Code).

At the rightsholder’s request, the exclusive right may be renewed subject to the following administrative fee payment (specified in para. 3 of the Fee Amounts):

• 20 000 Russian Rubles when the renewal application is filed with Rospatent during the last year of the current 10-year validity period;

• 22 500 Russian Rubles when the renewal application is filed within an additional 6-month period after the expiration of the current 10-year validity period.

Useful links:

More Information on the Lisbon System (WIPO’s website)
Forms for the International Registration of AOs and GIs
Fees and Payments
Legal Texts
Lisbon Express Database

¹ Under the Civil Code of the Russian Federation trade names, trademarks, service marks, GIs, and AOs are understood as the means of individualization of legal entities, enterprises, goods, works and services (hereinafter referred to as the means of individualization)