Keemun is a famous Chinese black tea produced in the triangular mountain area of the Dongzhi, Shitai and Qimen counties in Anhui Province. The area has been traditionally recognised as the growing region of Keemun by various literature and historical records. The tea growers and producers in the region have helped to shape the Keemun black tea production technique.

On September 28, 2004, the Keemun Black Tea Association (KBTA) filed an application for the registration of the name "祁门红茶" ( Keemun Black Tea) as a certification trademark in class 30, to protect this geographical indication. The application designated exclusively Qimen County as the growing region of Keemun Black tea. This was based on an affidavit of the Anhui Provincial Agriculture Commission in 2004.

On October 27, 2008, Anhui GuoRun Tea Industrial Co., Ltd. (GuoRun), a producer of Keemun tea, filed an opposition against the certification mark. GuoRun disagreed with the definition of the growing region set by the KBTA and cited an updated affidavit of the Anhui Provincial Agriculture Commission in 2007, which included the areas of Dongzhi, Guichi and Shitai in the Keemun growing region.

In 2009, while the opposition was still pending at the China Trademark Office (CTMO), the Anhui Provincial AIC intervened. A meeting was convened to reconcile the disputes between KBTA and GuoRun and facilitate the smooth registration of the certification mark. Under the mediation of the AIC, GuoRun agreed to withdraw its opposition and KBTA agreed to file a modification of the geographic region designated by the certification mark. Holding up its end of the bargain, GuoRun withdrew the opposition and the certification mark was registered on November 7, 2008.

However, KBTA reneged on its promise.

On December 27, 2011, GuoRun filed for the cancellation of the certification mark with the Trademark Review and Adjudication Board (TRAB), arguing the registration of the disputed mark had been obtained by fraudulent or other illegitimate means (Article 41.1 of the 2001 Trademark Law).

On October 19, 2015, the TRAB ruled to invalidate the certification mark.

KBTA brought an action before the Beijing IP Court.

The trial court held that in order to justify the finding that the disputed mark is registered by using fraudulent or illegitimate means, it is necessary to establish the fact that the trademark registrant has: 1) deliberately deceived the CTMO to seek unfair competition edges or illegal interests; and 2) fabricated or concealed facts and submitted a forged application or other documentations to the CTMO. On April 24, 2017, the court ruled in favor of the KBTA and annulled the TRAB's invalidation decision.

GuoRun appealed to the Beijing High Court.

The court of appeal opined that due to the strong technicality in the determination of the geographic range of the GI certification/collective trademark, the CTMO, in practice, only conducts formality examination on the filing documents of the marks involved. Under such circumstance, the GI trademark applicant bears a higher obligation and shall act in good faith when submitting filing documents. The applicant is obligated: 1) not to produce forged application files; and 2) to give a full and accurate account of the circumstances. Obtaining a registration by filing fabricated files or by resorting to other deceptive means falls under the "fraudulent" circumstance as provided by Article 41.1 of the Trademark Law. Obtaining registration by choosing to neglect the obligation of giving the CTMO a full and accurate account of the circumstances falls under the circumstance of using "other illegitimate means" as provided by Article 41.1 of the Trademark Law.

The court found that notwithstanding the clear knowledge of the existing controversies over the determination of the Keemun production region, KBTA had failed to inform the CTMO, which breached the good faith principle and fell under the circumstances as provided by Article 41.1 of the Trademark Law.

On December 25, 2017, the Beijing High Court overturned the first instance judgment.

This excellent decision emphasizes the very general concept of good faith, which is most welcome.

The question arises, however, whether because of the invalidation of the Keemun certification mark, anybody could use such name to sell tea.

We do not believe that this could happen. Despite the invalidation of the Keemun certification mark, unauthorised use of such mark could still constitute infringement and unfair competition over an unregistered GI trademark. It may be recalled that the Beijing No.1 Intermediate Court once granted GI protection over the unregistered Champagne trademark in a civil litigation.

Besides, this is the first administrative litigation involving a dispute over the geographical range of a GI mark. It sheds some light on the remedial approaches to be taken in similar cases:

1.         Where the trademark registrant is open to negotiation, if a consensus can be reached and sanctioned by the competent authority, the registrant may amend its rules governing the use of the GI mark, designating the uncontested region agreed by both parties, and submit the same to the CTMO for examination and approval.

2.         If the trademark registrant refuses to amend the rules, an interested party may file an opposition or invalidation, citing Article 10.1.7, Article 44.1 or Article 7 of the 2013 Trademark Law, depending on the circumstances of the case.

3.         Theoretically speaking, an interested party may also institute a civil lawsuit against an infringer, provided that evidence adduced suffices to prove that though not covered by the established geographical range of the GI mark involved, yet it deserves the same GI mark protection against the infringer.

4.         Another alternative for an interested party would be, in case the trademark registrant sent out a cease and desist letter, to lodge a non-infringement suit requesting the court to clarify the geographical ambiguity and confirm that it is entitled to use the GI mark.

The case is selected as SPC's 50 Exemplary IPR Cases in 2017 and the "Top 10 IPR Innovative Cases" released by the Beijing High Court in 2017.

Wanhuida Peksung represents GuoRun in the court proceedings.

Contributors: Ms. Ming Xingnan & Ms. Jiang Nan