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Protection of Geographical Indications in China

May 4, 2017 By Yuncheng Li

As an important part of the intellectual property rights, geographical indications (GIs) have been paid more and more attention by the governments of various countries, and GIs have become one of the focuses of negotiations on international intellectual property rights and negotiations on bilateral or multilateral trade.

There is no uniform definition of GIs or appellations of origin around the globe. The term was first mentioned in the 1883 Paris Convention for the Protection of Industrial Property, where, for the first time, GIs became an object of protection of industrial property rights.[1]  The first paragraph of Article 2 of the1958 "Lisbon Agreement for the Protection of Appellations of Origin and their International Registration", for the first time, defines the connotation of appellations of origin, namely, it is a geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors. [2] According to the first paragraph of Article 21 of the "Agreement on Trade related Aspects of Intellectual Property Rights " (hereinafter referred to as the TRIPS agreement) reached in 1993 by the members of GATT, GIs are "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin." [3]

According to the Trademark Law of China, GI is a sign that signify the place of origin of the goods for which the specific quality, reputation or other features is mainly decided by the natural or cultural factors of the regions.

In summary, GI is an indication formed by geographical name, and it must be the actual objective existence; it can be the name of a place, locality, region or country; it can also be a historical name. But it must be a place where it does exist. Most GIs in China are made up of two parts: Geographical name and commodity name.

International Practice

At present, there are two patterns of protection of GIs in the world: special law protection system and trademark law protection system. Special law protection is to protect geographical indications by legislation alone, mainly in France and some countries in southern Europe; and the protection of trademark law is to protect the GIs by the registration of collective marks or certification marks.

Present Practice in China

On the administrative level, at present, the State Administration for Industry and Commerce/the Trademark Office (SAIC/TMO), the General Administration of Quality Supervision, Inspection and Quarantine (AQSIQ), and the Ministry of Agriculture (MoA) have the power to protect and register geographical indications. The aforesaid three government agencies, however, supervise and protect GIs from different aspects or directions. SAIC and TMO protect GIs as trademark right; AQSIQ aims to certify the quality of production process and related production standards by means of registration of GIs; MoA focuses on the protection of primary agricultural products.

For further information, China, being a member of many international treaties on intellectual property, such as the Paris Convention, TRIPS, etc., is not a member of the Lisbon Agreement.

This author would herewith briefly introduce the registration/certification mechanism and protection system provided by the aforementioned three governmental agencies in China.

SAIC/TMO

China (SAIC/TMO) has started to protect geographical indications since the accession to the Paris Convention on the Protection of Industrial Property in March 1985.

In 1987 and in 1989, SAIC for the first time protected the legitimate rights and interests of appellations of original such as "Danish Butter Cookies", etc. by means of two executive orders. In December 1994, SAIC issued the "Measures for the Registration and Administration of Collective Marks and Certification Marks", where GIs could be protected as certification marks henceforth. The Measures came into force as of March 1, 1995, and 3 foreign GIs were accepted as certification marks. On the second revision of the Trademark Law in 2001, new provisions regarding the protection of GIs as collective or certification marks were added to the law. In 2003, SAIC issued new "Measures for the Registration and Administration of Collective Marks and Certification Marks", which reinforced and strengthened the protection of GIs in China.

Many foreign GI right owners have started to register their GIs with China Trademark Office (TMO) as certification marks or collective marks. Among them, in 2013, Conseil Interprofessionnel du Vin de Bordeaux of France filed certification mark applications for 53 wine related GIs with TMO.

By the end of 2015, China (TMO) has approved registration of a total of 2984 GIs, including 83 foreign GIs. Domestically, the largest number of registered GIs of the 5 provinces were Shandong (425), Fujian (272), Hubei (249), Jiangsu (215), Chongqing (201). Of the 83 foreign GIs, the largest number of filing was from France with a total of 33, followed by Italy (18 filings) and the United States (14 filings).

To register a GI with TMO, the applicant shall apply for registration of a certification/collective mark furnishing the following documentation:

1. Application for Trademark Registration (Where an agency/attorney is entrusted, a Power of Attorney is required);

2. Copy of Certificate of Legal Identity (stamped or sealed by the applicant);

3. Document issued by the local government or competent department of the local government that authorizes the applicant to register and supervise the GI;

4. Documents and/or materials evidencing the existence and reputation of the GI goods/produce, (including but not limited to the official county historical records, agricultural product records, or produce annals) and with the official stamp sealed by the organ that issues the same;

5. Relevant documents and materials regarding geographical areas and borderlines of the GI;

6. GI administration rules for using the certification/collective mark;

7. Specification/explanation on the facts that the GI products have a specific geographical origin and possess qualities or a reputation that are due to that geographical environment or human factors;

8. Proof of materials that shows the applicant is capable or has the ability in the supervision and inspection of the GI.

9. Foreign GI applicant is required to furnish with proofs that the GI has been registered/protected by the country of origin.

For more detailed information on the requirement of filing, please refer to TMO website. [4]

The Trademark Office (TMO) of SAIC is responsible for the examination on the application for certification marks and collective marks whether the application is for a GI or not. During the substantive examination process, because of the uniqueness of a collective or certification mark, especially a GI, the absolute ground for refusal is substantially alleviated; but the relative ground of refusal, namely search on prior similar trademark application or registration, is consistent in ordinary trademarks, which means a prior similar trademark will hinder the registration of a certification/collective mark, and vice versa.

However, the court may have a different view on whether two marks are similar to each other when a GI certification/collective mark is involved in the judicial review on the grant and validation of a trademark. According to Beijing High People’s Court [5], such claim is not to be supported if any party claims that a GI, in the nature of a certification/collective mark, should not be granted because of the existence the claimant’s prior similar ordinary trademark, whether its ordinary trademark is famous or not; similarly, such claim is not to be supported if any party claims that an ordinary trademark should not be granted because of the existence of the claimant’s prior GI. [6] The court appears to regard GI, in the nature of certification/collective mark as a different type of mark from ordinary trademark.

In the case of an infringement of the trademark right of a GI that has been registered as a collective mark or a certification mark, the right owner may file a complaint with SAIC or its national branch offices (local AIC) or seek judicial protection with the court in accordance with the relevant provisions of the Trademark Law.

AQSIQ

In August, 1999, the Administration of Entry-Exit Inspection and Quarantine (later incorporated into AQSIQ) issued "Regulations on the Protection of Appellations of Origin Products". Anyone who intended to seek AQSIQ protection of its GI or to use the AQSIQ Symbol of Appellation of Origin should obtain registration/approval of the GI with AQSIQ in accordance with the said regulations. In 2005, AQSIQ issued new "Regulations on the Protection of GI products", which abolished the previous Regulations of 1999.

In light of the successful experience on international cooperation to protect GIs, AQSIQ issued the "Measures on the Protection of Foreign GI Products" on March 28, 2016, to ensure that foreign GIs and the domestic GIs get equal protection in the territory of China. [7]

Up to 2016, a total of 1992 geographical indications have been approved by the AQSIQ, including 16 foreign GIs.

Ministry of Agriculture (MoA)

In December 2007, the MoA began to carry out the certification of GIs. The MoA issued "Administrative Measures of GIs of Agricultural Products" (hereinafter referred to as the "measures")  and is responsible for the registration of GIs of agricultural products. In particular, the Agri-product Quality Safety Center of MoA is responsible for the work of examination and review. [8] [9]

In the "measures" issued by the MoA, GI refers to the mark where the agricultural products are from a specific region where the product quality and relevant features mainly depends on the natural ecological environment and historical and cultural factors of the region. Agricultural products as said in the "measures" refer to the primary products derived from agriculture, namely, plants, animals, microorganisms and their products obtained from agricultural activities. [9]

General Comments

China enjoys a vast territory with abundant resources and long cultural history, hence the need to establish an effective mechanism or system to protect geographical indications. In terms of administrative registration/certification of GIs, three governmental agencies have their respective administrative processes. The goal for establishing such administrative system is to prevent from unjustified use of GIs and to rapidly and effectively protect GIs. However, this multiple system sometimes let businesses and enterprises at loss, leading GIs protection and certification into an embarrassing position. Not many business or enterprises can tell the differences among these registration or certification systems; different parties or even competitors register identical GIs with different administration system and thus cause conflicts. [10] It appears that this multiple system tends to cause unnecessary conflicts and misunderstanding and that it is not helpful to the improvement of administrative efficiency of governmental agencies in China. Geographical Indication, according to Beijing High People’s court, is a private right, thus, it is not suitable for government agencies to intervene too much on the protection of GI by means of administrative measures. [11]

China's trademark administrative protection system (SAIC) and judicial protection system being quite complete and mature, it is this author's opinion that GI registration should adhere to the Trademark Law protection system, namely, under the norm of certification/collective mark registration, and that GI protection should also adhere to the Trademark Law system by way of protection by SAIC system and judicial protection from the court. This hopefully can reduce unnecessary administrative costs and maximize the efficiency of the administrative organ, and also can give GIs with a powerful and effective judicial protection.

 

[1] http://www.wipo.int/treaties/en/ip/paris/summary_paris.html

[2] http://www.wipo.int/treaties/en/registration/lisbon/summary_lisbon.html

[3] https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm

[4] See TMO website http://sbj.saic.gov.cn/sbsq/sqzn/201404/t20140430_144505.html

[5] Beijing High People’s Court is the court of second instance/court of appeal for all trademark registration/granting related administrative cases in China.

[6] Page 171, “Judicial Review on the Grant and Validation of Trademarks” Editor: Chen Jinchuan, Beijing High People’s Court 2014

[7] http://kjs.aqsiq.gov.cn/dlbzcpbhwz/zcfg/zxzcxx/201604/t20160413_464279.htm

[8] http://www.jgj.moa.gov.cn/jieshao/zhineng/201006/t20100606_1532739.htm

[9] http://www.aqsc.agri.cn/ncpdlbz/djcx/201107/t20110725_80696.htm

[10] http://news.sina.com.cn/o/2012-10-11/155925338544.shtml

[11] Page 163, “Judicial Review on the Grant and Validation of Trademarks” Editor: Chen Jinchuan, Beijing High People’s Court 2014