Geographical Indications

– Law of Ukraine on the Protection of Rights to Geographical Indications of June 16, 1999, last amended on January 1, 2020.
– Regulations for Drafting, Filing and Examination of an Application for Registration of a Geographical Indication and/or Rights to Use the Registered Geographical Indication of August 31, 2001.
– Law of Ukraine on amending certain Legislative Acts of Ukraine concerning improvement of Legal Protection of Geographical Indications, in force since January 1, 2020.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), as of April 26, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, as of December 25, 1991.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of December 22, 2003.
– WTO’s TRIPS Agreement, since May 16, 2008.

Filing

New definition of the terms: "geographical indication" and "designation of origin" are introduced (instead of qualified indication of goods origin, as in the previous Law). 

Conditions for protection: with the new Law (in force since January 1, 2020) only manufacturers associations (previously both consumers associations and separate legal entities) may submit an application for a geographical indication, while separate manufacturers may submit an application only as an exception to the general rule under certain conditions, namely in case of being the only manufacturer of such products in the region. One natural or legal person is entitled to register a geographical indication if it is the only manufacturer who manufactures goods and/or produces and/or processes raw materials for the goods in this geographical location and wishes to apply for registration of a geographical indication; the geographical territory where the goods are manufactured (produced) and/or processed and/or prepared has characteristics being significantly different from those of the adjacent territories, or the goods characteristics differ from the goods manufactured in the adjacent territories. 

Grounds for refusal: (1) if the geographical indication does not meet the requirements of registrability; (2) if it becomes a generic name; (3) if it is identical or confusingly similar to a trademark, the rights to which are recognized in Ukraine, if, in view of the reputation, famousness and duration of use of this trademark, such legal protection may mislead consumers with regard to the authenticity of a product; (4) if it includes or reproduces a name of plant variety or animal breed and thus is misleading as to the actual origin of the product. This clause is not applied if (a) a product includes or derives from a respective plant variety or animal breed; (b) consumers are not misled; (c) name of a plant variety or animal breed is used in good faith; (d) manufacture and sale of a product has spread beyond its geographic location of origin by the date of filing an application for registration of a geographical indication.

Filing requirements:
The application shall be drafted in Ukrainian and contain:

1. A request for registration of a geographical indication (designation of origin) containing the applicant(s) name, address and designated authorities which are authorized to check compliance of the product with the product specification;
2. Product specification;
3. A document outlining the main provisions of the product specification: the applied name, product description, including, if relevant, specific rules for product packaging and marking as well as a brief description of boundaries of the geographical location where the product is manufactured and/or processed; description of the product relationship with the geographical environment or geographical origin of the product, including specific provisions of the product description or the manufacturing methods confirming such a relationship.

Notes: instead of the product specification, along with the application, foreigners must submit documents confirming legal protection of the applied geographical indication in the respective foreign state or acquisition of rights to such indication based on fair use, if provided for by the legislation of the respective foreign state. Such documents must meet the specification requirements. The documents may be submitted in a foreign language, and their translation into Ukrainian must be received by the Office no later than within two months after the application filing date.

Requirements to the product specification:
1. For the purpose of a geographical indication registration, the goods for which the designation is applied shall comply with the product specification agreed by the designated authorities;
2. The product specification shall contain the following information:
(a) the name applied for registration as a designation of origin or geographical indication, in the form and in the language used in the course of the sale of a product or in the language historically used for marking the products in a respective geographical territory;
(b) name and description of a product, in particular, if relevant, the information about the raw materials and basic product characteristics (physical, chemical, microbiological or organoleptic characteristics of the product, etc.);
(c) boundaries of a geographic location where the product is manufactured, and, if relevant, the territory where the raw material is produced if it is larger than the territory where a product is manufactured or differs from such territory;
(d) description of product manufacturing techniques, including specific conditions and unalterable local product manufacturing techniques, if any, as well as the information on packaging if the applicant decides and substantiates that the packaging of a product must be carried out in a particular geographic location in order to maintain quality or guarantee authenticity of goods or to maintain control;
(e) information on the relation of a special quality or other characteristics of a product to geographic environment or on the relation of a special quality, reputation or other characteristics of a product to its geographic origin;
(f) specific rules for marking a product (if any);
3. Specific requirements to specifications for agricultural products, food products, wines, flavored wine products, alcoholic beverages may be determined by other laws. The requirements to the specifications and the procedure for their approval are established by dedicated agencies.

After having entered the information on registration of a geographical indication in the Register, interested persons or associations of persons may amend the specifications of a product after approval of an amended specification by the designated authority. Such changes may refer to the processes used for manufacture of a product in view of scientific and technological progress or the revision of boundaries of a geographical location.

Examination and Protection

Examination: the geographical indication is checked as to its conformity with the requirements of registrability and it is compared to the generic names included in the List of Generic Names for Goods kept by the Patent Office.

Amendments: amendments may be introduced either on the applicant’s initiative or in response to a notification of the Patent Office, for which the applicant has three months from the date of receipt of the notification. 

Publication: in the Official Bulletin. 

Duration: the validity of the certificate of registration of the Right to Use the Geographical Indication is ten years from the filing date.

Renewals: this term may be extended for further periods of ten years.

Opposition: any person may file a reasoned objection with the examining institution regarding incompliance of the applied geographical indication with the conditions for grant of legal protection within three months from the publication date in the Bulletin of the application information and the product specification or information from the documents confirming legal protection of the applied geographical indication in the respective foreign state or acquisition of rights to such indication based on fair use, if required by law in the respective foreign state. 

Objection against a decision of the Patent Office: the applicant may file an objection against a decision of the Patent Office issued in the application with the Chamber of Appeals or the court within two months from the date of receipt of the decision. The applicant may also make an application to the court against a decision of the Patent Office within two months from the receipt of a decision of the Chamber of Appeals.

Modification of Protection after Granting

Cancellation: registration of a geographical indication may be cancelled by the court in cases where the environmental conditions of the corresponding geographical area change or where the geographical indication turns into a generic name of the product. The right to use a registered geographical indication may be cancelled if the product has lost its specific qualities as described in the Register. In this case the right is ceased from the date of issuance of the corresponding decision by the court. Registration of a geographical indication may be cancelled by the court if (a) it is established by a specially designated body that, due to the change or loss of specific natural and/or human factors characteristic of the specified geographical area, it has become impossible to produce goods that meet the product specification; (b) the geographical indication is not used for seven years from the date of publication of the mention on the registration of a geographical indication or from another date after such publication. Such cancellation shall be effected at the request of any person concerned. 

Infringement/Enforcement: at the request of any person entitled to use a geographical indication or a public authority, the infringement shall be ceased and an infringer shall be obliged to pay damages caused.