Amendments to the Ukrainian Law on Geographical Indications were adopted on September 20, 2019 and will enter into force on January 1, 2020. The changes bring the Ukrainian law in line with Regulation (EU) No. 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs.
The major changes, described below, relate to redefining key terms such as ‘geographical indication’ and ‘designation of origin’, clarifying eligibility criteria for applying for a GI registration, and amending the opposition procedure as well as the rules related to the cancellation of registered GIs.
The current law, in force until January 1, 2020, foresees two types of indications of origin: simple and qualified. While the simple indication of origin is defined as a designation which directly or indirectly points to a geographical area in which the goods originate, the qualified indication of origin includes the following subtypes:
Geographical indication – any word or graphic mark which directly or indirectly refers to a geographical area of origin of goods which have particular properties, reputation or other characteristics essentially attributable to either natural conditions or human factors specific for this geographical area, or to a combination of natural and human factors.
Designation of origin – a place name used for distinguishing goods originating in a particular geographical area and having certain properties that are exclusively or essentially attributable to such geographical environment or to the combination of natural and human factors specific to this geographical area.
The amendments introduce the following definitions, similar to those provided in Regulation (EU) No. 1151/2012:
Geographical indication – a place name identifying the origin of a product, whose special quality, reputation or other characteristics are essentially attributable to its geographical origin, and for which at least one of the production stages takes place in the defined geographical area.
Designation of origin – a type of geographical indication; a name identifying the origin of a product, whose special quality or characteristics are exclusively or essentially attributable to a particular geographical environment with its inherent natural and human factors, and the production steps for which all take place in the defined geographical area.
While the current law prohibits the use of words such as “kind”, “type”, “style”, “brand”, “imitation”, etc. alongside registered GIs, the amendments broaden the list of prohibited expressions, including “method”, “as produced in”, “flavor”, “like”, etc.
Persons eligible to apply for registration
According to the new law, a group of persons who, in the defined geographical area, produce goods or extract and/or process raw materials for goods whose special quality, reputation or other characteristics are attributable to this geographical area, may apply to register a geographical indication. This group can have any form of legal organization.
A single natural or legal person is also entitled to apply for registration, when the following conditions are met:
- Such person is the only individual in the defined geographical area who produces goods or extracts and/or processes raw materials and is willing to submit an application for registration;
- The geographical area in which the products are produced, extracted, processed and/or prepared possesses characteristics which differ appreciably from those of neighboring areas, or the characteristics of the product are different from those produced in neighboring areas.
The new criteria are more stringent in comparison with the current law, according to which the following can apply for registration of a geographical indication:
- A person or a group of persons who, in the defined geographical area, produce goods whose particualar properties, reputation or other characteristics are attributable to this geographical area;
- Consumer associations;
- Institutions which are directly related to the production or study of relevant products, technological processes or geographical areas.
According to the amendments, the GI application must include the product specification, as an annex, as defined in the EU Regulation No. 1151/2012.
The application must also include:
- Registration request including information on the competent authorities responsible for checking the product’s compliance with the product specification;
- Documents confirming that the applicant has GI protection in their own country (for foreign applicants).
- Documents indicating product characteristics and its link with the geographical origin.
Examination and opposition procedures
While there are no significant changes to the examination procedure, the opposition procedure was aligned with Regulation (EU) No. 1151/2012. Besides shortening the time limit for filing an opposition from six to three months from the date of publication of the application and product specification, the amended law also foresees negotiations between the applicant and the person opposing the application. At the same time, the law does not outline how the results of the negotiations (whether an agreement was reached or not) will affect the examination of the application. Moreover, while Regulation (EU) No. 1151/2012 stipulates that only a person having a legitimate interest may file an opposition, the Ukrainian law (both the current and the amended version) allows any person to file an opposition.
GI validity and the right to use
Under the current law, a registered GI is valid for ten years, with the possibility to extend the validity for an unlimited number of additional 10-year periods. The amended law provides no specific validity period. Also, any person eligible to apply for a GI registration may file a request to be recorded in the Ukrainian State GI Register as a person who has the right to use a registered GI.
Cancellation due to non-use
The amendments introduce the non-use cancellation ground, stating that if a registered GI has not been used within seven years either from its date of registration or from any date after the registration, a court can cancel it upon the request of an interested person.
Finally, the preamble of the amended law indicates that specific regulations related to registration, use and protection of GIs for agricultural products, foodstuffs, wines, flavored wine products and spirits will be determined by other laws, are expected to be adopted soon.