by Elena Shum (lawyer at “Babych, Sysoenko and partners”)Forget the familiar names on the labels
Ukraine recently signed the Association Agreement with the European Union and the participant countries. The ripples from this event left no one untouched and reflected upon a multitude of economic and legal ventures. The sphere of intellectual property was no exception, especially the trademark rights law.
The agreement will be implemented in the Ukrainian legislation by amending current laws – a task of utmost importance for the state government. The agreement itself prescribes a number of future changes for promoting healthy competition; some changes limit the options for Ukrainian businesses, while others give them more freedom.
The ban on using certain geographical names in trademarks
First, the impending changes will influence the Ukrainian agricultural and food processing businesses. For instance, the agreement bans the use of geographical information in the names of the trademarks. For example, champagne, cognac, feta etc will all have to go. This contradicts the effective Ukrainian law “On the rights to naming the origin of the goods”. According to this law, the name of the geographical place may be used in the name of the product if that product is produced in that location and has properties, determined by that location’s natural conditions or the combination of these natural conditions with human factors characteristic of the location. Thus, manufacturers of spirits have 10 years to remove the following geographical names from their labels: Champagne, Cognac, Madera, Porto, Jerez, Xérèz, Sherry, Calvados, Grappa, Anis Português, Armagnac, Marsala, Malaga, Tokaj. Ukrainian dairy and cheese producers using Parmigiano Reggiano, Roquefort and Feta in their names have even less time. In seven years they will have to comply with the agreement’s demands and stop using the aforementioned geographical names on their products. Additionally, the agreement prohibits imitation names, using transliterated or translated names and using the words “style,” “type,” “way,” “produced in…,” “imitation,” “taste,” “similar” etc. together with the geographical name. Thus, replacing “cognac” with “cognac taste” or “cognac type” or “cognac style” on a brandy label will be considered a violation.
Usage of packaging that might confuse the consumer about the place of origin of the product is also prohibited.
This means that Ukrainian goods with familiar names like champagne, cognac, feta etc. will disappear from the shops, and the manufacturers will have to rename them and advertise them under new labels and names.
On the other hand, the association agreement guarantees that Ukrainian geographical names will have the same high level of protection as the European ones do. Thus, Ukrainian manufacturers can underscore the authenticity and geographical characteristics of their products. Importantly, one clause specifically states that the delinquent goods produced and marked in accordance with national legislation before the agreement becomes effective can be legally sold until they run out of stock.
Open access database for registration of trademarks
Apart from limitations and bans, the agreement includes a number of positive changes, like open access to the electronic database of applications for registration of the trademarks. This topic was always a matter of heated discussions. Many countries have open access resources for monitoring this information. That way, anyone may check if someone is trying to register the likeness of their existing label name. It is far less difficult and expensive to fight such “bad” trademarks at the stage of their registration, compared to the situation when they already have been registered and have all the necessary documentation. Ukrainian law provides for placing an objection to registration of a new trademark if the owner of the registered trademark considers his rights violated. However, the process of monitoring the registration of the new trademarks is long, cumbersome and expensive without the open database of applications for registration. However, at this time the trademark owners in Ukraine have limited access to registration information. Thus, the open-access database will greatly help monitoring the trademarks and find out the violators in time.
To sum up, after the agreement comes into effect Ukrainian businesses will have to do a lot of work. They will have to audit their intellectual property, then develop and promote new trademarks. And the consumers should note the changes of the names of their preferred products.
Translated by Mariya Shcherbinina, edited by Anna Palagina