Yongjian Lei and Mei Huang, 25 July 2022, first published by WTR

On June 7, 2022, the China National Intellectual Property Administration (CNIPA) issues a notice seeking comments on the Draft Measures for the Administration and Protection of Collective and Certification Marks (Draft Measures) until July 21, 2022.

The existing Measures for the Registration and Administration of Collective and Certification Marks (2003 Measures) were promulgated on April 17, 2003, and came into force later on June 1 of the same year. The 2003 Measures, as a vital supplement to the Trademark Law and the Implementing Rules of the Trademark Law, provide in detail the application procedures and paperwork requirements for the registration and protection of collective and certification trademarks. Practitioners have been long anticipating the updating and revision of the Measures ever since the third and fourth amendment of the Trademark Law in 2013 and 2019. On top of that, a few hot-button cases involving collective/certification trademarks with place name component have necessitated the promulgation of administrative guidelines with regard to protection of collective and certification trademarks and clarification of the boundary of fair use.

The Draft Measures consist of 35 articles and the main takeaways are as follows.

1. Shift of focus

The name of the Draft Measures indicates a shift of legislative focus from "Registration & Administration" to "Administration & Protection".

2. Filing Requirements

Articles 2 to 9 of the Draft Measures set out general principles on the applications for registration of collective or certification marks. Article 2 also further clarifies the eligibility requirements of the applicants filing for these trademarks. Article 6 aligns the registrable elements of geographical indication collective and certification trademarks with the current Trademark Law.

3. Administration of Registrants, Collective Members and Users

Articles 10 to 18 relate to the administration of the registrants of collective and certification marks, as well as the collective members and users. Article 10 puts forward specific requirements on the trademark management responsibilities of the registrant. Article 11 allows registrants to charge reasonable fees from the collective members and users. Article 12 mandates that where there is any change to the members of the collective marks or where the certification trademarks are licensed to others, the registrants need to file an application for modification or put on record the licensing within three months upon the entry-into-force of the licensing contract with the CNIPA. Articles 14 and 15 introduce the circumstances under which the registrant shall be obliged to issue a certificate of use and enumerate scenarios where a collective/certification mark should not be used. Article 16 provides that the registrants, collective members and users of collective and certification marks are obliged to ensure the goods to which the said marks are attached are in compliance with the prescribed quality requirements, and the collective and certification marks may be used along with their own registered trademarks. Articles 17 and 18 lay out the obligations of registrants, collective members and users.

4. Fair Use of Geographical Names

Article 21 to Article 24 address the fair use of geographical names in collective and certification trademarks. In principle, using the geographical name component in the manner of describing a fact, such as “to indicate the source of geogprahic origin in a store signage”, “to indicate the place of origin of the products or raw materials thereof in the list of ingredients or on the packaging”, or “using such component in the trade name of a business” are to be deemed as fair use (Article 21). Article 22 also bans the monopoly of the geographical name or name of goods incorporated in a collective or certification trademark in catering business by allowing individuals or organisations other than the registrant of such trademarks to use these components by way of describing a fact in local snacks, cuisine, menu or window display. Article 23 allows the fair use of the geographical name or name of goods incorporated in a collective and certification trademark by any natural person, legal person or other organisations whose goods conform with the requirements of geographical indications.

5. Administrative protection and penalty measures

Articles 25 to 33 improve the administrative protection measures for collective and certification trademarks and the relevant administrative punishment measures for misusing such marks. In case of trademark infringement, registrants, collective members and users may resort to administrative enforcement actions. The Draft Measures also clarify the remit of competent authorities and the circumstances to be deemed as infringement in the sense of Article 57 of the Trademark Law, introduces a similar “innocent distributor” clause and elucidates administrative consequences and liabilities to be borne by registrants if they fail to perform their administration and supervision obligations.

The Draft Measures seem to impose on the registrants, collective members and users of collective and certification trademark high obligatory requirements. It remains to be seen whether the CNIPA will relax some of its regulatory stance and leave more wiggle room for the registrants, collective members and users in the final text.