The Concept, Legal Provisions, and Judicial Protection Status of Geographical Indication Trademarks

The Concept, Legal Provisions, and Judicial Protection Status of Geographical Indication Trademarks

The Concept and Origin of Geographical Indications

A geographical indication is not a legal term generated from China, but a concept accepted under the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter referred to as the “TRIPs Agreement”) after China’s accession to the WTO. Geographical indications are, for the purposes of this Agreement, identifying goods as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation, or other characteristics of the goods is essentially attributable to its geographical origin.

From this definition, the concept of geographical indication consists of two parts: goods originating in the territory; the quality, reputation, and other characteristics of the goods are essentially attributable to their geographical origin.

Existing Protection System of Geographical Indications in China

At present, there are mainly three protection systems of geographical indications in China. One of them is the registration and protection system of “collective trademark” and “certification trademark” led by the CNIPA and mainly based on the Trademark Law. Secondly, it is the registration and protection system of “geographical indication protection products” led by the State Administration for Market Regulation (formerly General Administration of Quality Supervision, Inspection and Quarantine of the People’s Republic of China) and based on the Provisions on the Protection of Geographical Indication Products. The other is the certification and protection system of “geographic indication for agricultural products” led by the Agriculture and Rural Affairs of the People’s Republic of China and based on Measures for the Administration of Geographical Indications of Agricultural Products.

Among them, the law protection system on geographical indications is mainly composed of Trademark Law of the People’s Republic of China, Regulation on the Implementation of the Trademark Law of the People’s Republic of China, Administrative Measures Concerning the Registration of Collective Marks and Certification Marks, etc.

Case Analysis of Infringement of Geographical Indication Trademark by Yuping Xiaodi (Case Ref.: Civil Ruling No. 1696 [2021], Petition, Civil, Supreme People’s Court)

The Yuping Dong Autonomous County Xiaodi Association (“YPXD Association”) is the registrant of the certification trademark No. 6296476 (“the disputed trademark” or the “YPXD”), registered in Class 15 for the goods “Flute”. And the Rules for the Use of the YPXD Certification Trademark issued by the YPXD Association stipulates that “Yuping Flute” is used to certify the origin and specific quality of YPXD products, and that products using the YPXD certification trademark must be made from bamboo produced in a specific region, in accordance with the YPXD Association’s production process, and meet the pitch requirements and corresponding characteristics. The licensed user of the YPXD certification trademark may use the mark on products or packaging, and entities that are not licensed may not use a mark identical or similar to the YPXD certification trademark on flute products and their packaging without the permission of the YPXD Association.
No. 6296476 “the disputed trademark” or the “YPXD”

In November 2018, YPXD Association discovered that a Taobao shop named Qiannan XiaoDi Musical Instrument Co., Ltd. (Qiannan Flute Co.), containing the words “Yuping Flute Instrument Co., Ltd.”, and that there was a mix of genuine and fake YPXD products on sale. Then YPXD Association filed a lawsuit with the Intermediate People’s Court of Guiyang City, Guizhou Province, demanding that the Qiannan Flute Co. immediately stop the infringement, compensate the YPXD Association for economic losses and reasonable expenses of RMB 500,000 and publish a statement of apology.

The case focused on whether the goods sold by Qiannan Flute Co. infringed the disputed trademark and whether it was correct to hold it liable for the corresponding infringement. The Supreme People’s Court held that, according to the evidence on file, Qiannan Flute Co. sold flute sets engraved with the mark YPXD through an e-commerce platform and marked the brand “YPXD/Yuping Flute” on the product details page. And the above-mentioned trademarks can serve to indicate the source of the goods, which constituted a trademark use and was similar to the disputed trademark. Qiannan Flute Co. did not submit evidence to prove that the goods sold complied with the Rules for the Use of the YPXD Certification Trademark in relation to the origin and production process. Also, the evidence submitted by Qiannan Flute Co. in relation to the authorization did not prove that it had obtained the permission of the YPXD Association. Under such circumstances, the sales of goods using the trademark “YPXD” by Qiannan Flute Co. were likely to cause confusion and misunderstanding among the relevant public as to the source of the goods as well as the origin and quality of the goods, which constituted an infringement of the disputed trademark.

The Supreme People’s Court stated that a subject using a geographical indication as a certification trademark shall identify goods as originating in the territory, or a region or locality in that territory, otherwise the registrant of the geographical indication certification trademark will have the right to prohibit its use and pursue its liability for infringement of the rights of the certification trademark in accordance with the law.

It was found that, according to the Rules for the Use of the YPXD Certification Trademark, products using the disputed trademark must be made from bamboo produced in a specific region and in accordance with the production process of the YPXD Association, and the products must meet the pitch requirements and corresponding characteristics. In this case, Qiannan Flute Co. did not submit evidence to prove that the goods they sold met the corresponding characteristics of the above-mentioned rules in terms of origin and production process, nor did the evidence submitted in relation to the authorization prove that they had obtained the permission of the YPXD Association. Under such circumstances, the sale of goods using the trademark “YPXD” by Qiannan Flute Co. was likely to cause confusion among the relevant public as to the source, origin, and quality of the goods, and constituted an infringement of the disputed trademark.

Case Analysis of Criminal Case Regarding “BORDEAUX” Geographical Indication Collective Trademark (Case Ref.: Criminal Judgment No. 985 [2020], First, Criminal, 0115, Shanghai)

In 2019, the trademark right holder, CONSEIL INTERPROFESSIONNEL DU VIN DE BORDEAUX, discovered at the Chengdu Food & Drinks Fair that FeiTong Co., Ltd. was displaying wine goods marked with the collective trademark “BORDEAUX”, which were also marked with “BURKE LAFAEL” that applied and owned by FeiTong Co., Ltd. Upon an appraisal by the right holder, it was determined that the goods did not originate from the “BORDEAUX” region and were counterfeit goods under the geographical indication collective trademark. In view of the large number of goods involved and the value of the case, which met the criteria for a criminal prosecution, the Pudong New Area of Shanghai Intellectual Property referred the case to the Pudong PSB for criminal prosecution. On June 4, 2020, the People’s Court of Pudong New Area of Shanghai handed down a verdict on the case of counterfeiting the collective trademark “BORDEAUX” by FeiTong Co., Ltd., sentencing the defendant to one year and six months of imprisonment, suspended for one year and six months, and a total fine of RMB 150,000.

The significance of this case is the registration of a geographical indication as a collective trademark or a certification trademark has been treated as the registered trademark under the Trademark Law of the People’s Republic of China and is formally consistent with the meaning and scope of protection of a registered trademark under the Criminal Law of the People’s Republic of China. Geographical indications are one of the objects of intellectual property protected by the laws and can be protected by the Trademark Law of the People’s Republic of China and the Criminal Law of the People’s Republic of China after applying for registration as a collective trademark or a certification trademark. Therefore, the “registered trademark” as stipulated in Article 213th to Article 215th of the Criminal Law should cover “collective trademark”. A perpetrator who uses his own trademark as well as a collective trademark for geographical indications on infringing goods still constitutes the crime of counterfeiting a registered trademark and can be held criminally liable for the infringement.

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