Update of Geographical Indications Protection in China

This is the PPT by Guizeng (Wayne) Liu, as a speaker of the panel, CSA25 Geographical Indications around the World at the 141st INTA Annual Meeting in Boston, USA, May 18-22, 2019. Moderator: James Tumbridge, United Kingdom, and Speakers, Guizeng (Wayne) Liu, China; Shawna Morris, USA; Andrew Papadopoulos, South Africa; Elio De Tulio, Italy and Julian Vadillo, Mexico.

In China, GIs bear significance to advance the social economy development, promote trade and investment and protect cultural heritage.

Registration and Administration of GI as Certification Mark and/or Collective Mark by China Trademark Office (CTMO) under China National Intellectual Property Administration (CNIPA) of the State Administration for Market Regulation (SAMR)The Accumulative number of filings of trademarks is over 36.7 million, the number of registrations is over 24.1 millions, and effective number of existing registrations is nearly 21.2 millions. Almost every 5.3 entities in the market own one registered trademark.

The Number of GIs registered as certification marks and/or collective marks

Domestic GIs: 4996, and the top five provinces are Shandong (680), Fujian                  (459), Hubei(426), Sichuan (343) and Jiangsu (305).

  • Foreign GIs: 183, and top three countries are France (125), Italy (23) and          USA(14). (Consei l Interprofessionne l du Vin de Bordeaux: CIVB)                        has 118 GIs.

Definition of GI by the Trademark Law:

GIs are indications that identify particular goods as originating in a region, where a given quality, reputation or other characteristics of the goods is essentially attributable to the natural or human factors.

Law, Regulations and International Treaties:

l The Paris Convention

l TRIPS

l The Trademark Law and the Implementing Regulations of the Trademark Law l Administrative department rules such as the Methods concerning the Registration and Administration of Collective Mark and Certification Mark issued by the SAMR

l Normative documents such as the Criteria concerning Trademark Examination and Adjudication and the Methods concerning Signs of GI Products by the SAMR

Definition of Collective Mark and Certification Mark

l A collective mark is a mark registered in the name of a group, association, or any other organization and used by its members to indicate membership.

l A certification mark is a mark which is owned by an organization that exercises supervision over a particular product or service and which is used to indicate that third-party goods or services meet certain standards pertaining to place of origin, raw materials, mode of manufacture, quality, or other characteristics.

Examination

  • Absolute grounds as provided by Article 10 (prohibitive articles) and Article 11(descriptive articles).
  • Relative grounds as provided by Article 30 (similarity to prior registrations and preliminarily approved and published marks) and Article 31(similarity to prior applications and prior use).

Article 16 of the Trademark Law governing GIs

  • Determination of “misleading the public”
  • If it is easy for the relevant public to misidentify the true origin of goods using this trademark.
  • Trademarks containing GIs of the goods are not allowed to register and use
  • If a trademark contains the whole of a GI or the main identification part of a GI
  • Easy for the relevant public to misidentify the true origin of the goods using this trademark.
  • Applicant qualified in cases of opposition or invalidation
  •  Any group or association established to protect GIs or aiming at protecting GIs
  • Any producer or business dealer of the goods using such GIs may file an application as an interested party.
  • Prior protection principles of the country of origin
  • If a foreign person claims that an application for registration of the trademark in dispute violates the provisions of Article 16.1 of the Trademark Law and thus this trademark should not be registered or be invalid, then it shall provide the certificate proving that the relevant geographical indication in its name is protected by the laws of its country of origin.
  • Judgment of Confusion
  • GIs vs. ordinary mark: factors such as the objective existence of this GI or its popularity, distinctiveness and the perception of the relevant public may be comprehensively considered to judge whether the relevant public might confuse the sources of the goods or services.
  • Apparently, it is good for GI, even if a GI is filed later than ordinary mark, since no confusion is found in most cases.
  • Ordinary mark vs. GIs: From the perspective of improperly adhering to the popularity of this GI, judge whether the relevant public might confuse the sources of the goods or services.
  • Apparently, it is good for GI too, since a GI is filed earlier than an ordinary mark and the ordinary mark is found to be confusing to the GI in most cases.
  • Application of the well-known trademark protection
  • If a collective trademark or certification trademark containing a GI has been in the well-known state, it can be recognized as well-known mark for the purposed of protection, under Article 13.3.
  • If an application for registration of the collective trademark or the certification trademark containing the GI is attacked, under Article 13.3, the factors such as the objective existence of this GI or its popularity, distinctiveness and the perception of the relevant public shall be  comprehensively considered to determine whether the registration of the collective trademark or the certification trademark containing the GI shall mislead the public and would harm the interests of the registrant of the ordinary trademark.
  • Apparently, it is good for GIs, even if the GI is attacked by a well-known mark, but GI is maintained as registration of  collective mark and/or certification mark in most cases.
  • Geographical indication registered as ordinary trademarks
  • If the applicant or registrant of a trademark in dispute applies for registration of the whole of a GI or its main identification part as a trademark other than the collective trademark or the certification trademark, it shall not approved to register or invalidated.
  • – Confusing of the relevant public, Article 16.1
  • – Well-known Foreign geographical name, Article 10.2
  • – Generic, merely descriptive or lacks in distinctiveness, Article 11.1
  • Geographical scope
  • If the geographical scope indicated by the applicant of a collective trademark or certification trademark containing the GI in the application document should be consistent with the actual place of origin.

Protection by the General Administration of Quality Supervision, Inspection and

Quarantine of PRC (AQSIQ) under the SAMR

  • Form of GI product is “geographical name + product name”                                                                                                                                   The Pinggu Peach use of the GI Product Sign. It is so interesting that one of the local peach plant gardens gives away the exclusive ownership of a peach tree to people like Lang Lang, and luckily my 12 years old who is a writer of four books and gets one tree this spring.
  • There are over 2380 registered GI products, including over 60 registered foreign GI products.

     Protection by the Ministry of Agriculture (MOA)

  • There are over 2400 agricultural product GIs registered in the MOA, and over 6800 types of agricultural products are included in the List of Agricultural Products of Regional and Local Characteristics in China.

This article was written by our China IPR expert Guizeng (Wayne) Liu.

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