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24 April, 2022

Why do we need a “geographical indication”?

The Article by
Shakuanova Assel
Zhussupbekova Saule

“Why do we need a “geographical indication”?”
Currently, one of the relevant proposals is the introduction into the legislation of Kazakhstan of the concept of a new object of intellectual rights – “geographical indication” (GU).
The introduction of this object of intellectual property gives new opportunities, primarily for business development, branding of regions, contributing to the development of competition of Kazakhstani goods both on the domestic and global market.
In international practice, a “geographical indication” is considered as a geographical name of a country, area or locality that serves to designate a product (product, commodity) that originates from a given country, area or locality and whose quality and features are explained exclusively or mainly by the geographical environment, including natural and human factors. (The Lisbon Agreement).
To date, the legislation of the Republic of Kazakhstan in the field of intellectual property in the list of objects that are means of individualization does not contain such an object as a geographical indication. However, subparagraph 3) of Article 1 of the Law of the Republic of Kazakhstan “On Trademarks, Service Marks and Appellations of Origin of Goods” contains the concept of geographical indication, according to which it is an indication identifying goods originating from a certain territory, region or locality.
In addition to the concept of geographical indication, the legislation of Kazakhstan does not provide for norms that provide the possibility of registration and legal protection of this intellectual property object.
Currently, in Kazakhstan, the name of a geographical object can be registered as the name of the place of origin of the goods.
Recall that according to the Law of the Republic of Kazakhstan “On trademarks, service marks and appellations of origin of goods” the name of the place of origin of goods – a designation representing or containing the name of a country, region, locality, locality or other geographical indication, as well as an indication derived from such a name and made known as a result of its use in relation to a product whose special properties, quality, reputation or other characteristics are mainly related to its geographical origin, including characteristic natural conditions and (or) human factors.
It should be noted that the concept of Appellation of Origin, which is given in the Trademark Law, contains criteria related to both the concept of Appellation of Origin and the concept of geographical indication. Which is erroneous and requires making appropriate adjustments by separating an independent intellectual property object from the above–mentioned concept – “geographical indication”.
Thus, according to international agreements in the field of intellectual property, the name of the place of origin of goods is the name of a geographical object that has become known as a result of its use in relation to goods, the special properties of which are exclusively or mainly determined by the natural conditions and (or) human factors characteristic of this geographical object.
A geographical indication is the name of a geographical object that identifies a product as originating from a territory where a certain quality, reputation or other characteristics of a product are largely determined by its geographical origin.

Article 22, paragraph 1, of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
For the purposes of this Agreement, geographical indications are designations that identify goods as originating from the territory of a member or a region or locality in that territory, where a certain quality, reputation or other characteristics of the goods are largely associated with its geographical origin.

Paragraph (1) of article 2 [Definition of the concepts of appellation of origin and country of origin] The Lisbon Agreement on the Protection of Appellations of Origin and their International Registration
In this Agreement, “appellation of origin” means the geographical name of a country, area or locality that serves to designate a product that originates from a given country, area or locality and whose quality and characteristics are determined solely or mainly by the geographical environment, including natural and human factors.

Paragraph (1) of article 2 of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications
[Names of places of origin and geographical indications] This Act applies to:
(i) any designation protected in the Contracting Party of origin that is the name of a geographical area or other designation known as an indication of such area, or containing such a name or such other designation that serves to designate the goods as originating from this geographical area, when the quality or properties of the goods are determined solely or mainly by the geographical environment, including natural and human factors, and which created this product its reputation; and
(ii) any indication protected in the Contracting Party of origin and being the name of a geographical area or other indication known as an indication of such area, or containing such a name or such other indication that identifies the goods as originating from this geographical area, when a certain quality, reputation or other property of the goods is mainly due to its geographical location origin.

In practice, the registration of Appellation of Origin is a complex process. First of all, due to the need for the applicant to obtain a document confirming one of the following criteria: special properties, quality, reputation or other characteristics, which are mainly determined by the natural conditions and (or) human factors characteristic of this geographical object, issued by the authorized body to which the claimed product belongs. Unfortunately, the legislation does not regulate the list of authorized bodies by industry, as well as the procedure for obtaining such documents.
Secondly, in order to register and obtain the right to use the name of the place of origin of the goods, it is necessary that all stages of production are located on the territory of the specified geographical object.
Thirdly, in order for the designation to be registered as the name of the place of origin of the goods, it is necessary for them to acquire fame in relation to the declared goods. Due to the strict requirements imposed when registering Appellation of Origin, applications for registration of Appellation of Origin are submitted to an expert organization quite rarely. During the formation of the Kazakhstan Patent Office from 1992 to 2019, 31 Appellation of Origin were registered, of which 18 were national, 13 were foreign.
On the territory of Kazakhstan, there are a sufficient number of names of geographical objects that have quality and reputation, but fall short of Appellation of Origin. As an example, we can cite the well-known Kazakh chocolate, which is known for its quality and reputation not only on the territory of Kazakhstan, but also abroad. However, due to the fact that not all stages of production of the goods (not all ingredients of the goods are produced in Kazakhstan) are carried out on the territory of the Republic of Kazakhstan, the name of the geographical object “Kazakhstan” cannot be registered as an Appellation of Origin.
For such designations, more lenient requirements should be provided. This problem can be solved by the introduction of an independent intellectual property object “geographical indication” into the legislation.
The main difference between a geographical indication and the name of the place of origin of the goods is that one stage of production of products within the specified territory is sufficient for geographical indication. As well as the absence of the need to provide the registering authority with a document confirming the special properties of the goods issued by the relevant authorized body (the list of such bodies is not defined by the legislation of the Republic of Kazakhstan). In addition, geographical indications do not require the acquisition of fame in relation to the goods produced.
The introduction of a “geographical indication” in the form of an independent object of intellectual property contributes to an increase in the number of applications submitted for registration of designations indicating the geographical origin of goods that, in fact, have quality and reputation, but which cannot be registered as an appellation of origin due to the strict requirements imposed by law on this object of intellectual property.
The main favorable consequence of the introduction of “geographical indication” will be the development and expansion of legal protection of regional brands, which will lead to economic growth of the country’s regions and promote regional products.
The introduction of goods with a “geographical indication” into civil circulation will expand international trade and increase the authority of Kazakhstani goods on the international market.

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Why do we need a “geographical indication”?

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