Foreign geographical indications may be granted protection even without a trademark registration in China.

Geographical indications are indications that identify a good as originating from a certain region or locality, where a given quality, reputation or other characteristic of the good is essentially attributable to the natural or humanistic features of the place indicated. What if an indication is accredited as a geographical indication in its country of origin, is it sufficient to be granted protection in China without being registered as a trademark?

On 10 January 2011, Fujian Longwang Trading Ltd filed an application to the Trademark Office for registration of the Trademark No. 9037930 “罗曼尼·康帝” (Disputed Trademark, Chinese transliteration of “Romanee-Conti”) on goods of “Wine; Whiskey” in class 33. The application was approved for registration on 21 January 2012. In August 2016, the INSTITUT NATIONAL DE L'ORIGINE ET DE LA QUALITE (also known as INAO) filed a request for invalidation of the Disputed Trademark with the Trademark Review and Adjudication Board (now part of the National Intellectual Property Administration). On 10 January 2017, the Disputed Trademark was assigned to a third party Wu Liping.

The Trademark Review and Adjudication Board (TRAB) held that “Romanee-Conti”, as an accredited appellation of origin for wines in France, had not yet been registered as a geographical indication in China; and the evidence adduced in the case cannot prove that “Romannee-Conti” and “罗曼尼·康帝” have formed exclusive corresponding relationship. Therefore, the registration of the Disputed Trademark does not violate the provisions of Article 16 of the 2001 Trademark Law.

INAO challenged the TRAB decision before the Beijing Intellectual Property Court. The Court held that the adduced evidence could prove that the region indicated by “Romanee-Conti” featuring distinctive natural and humanistic characteristics, is a geographical indication of wines, and that a stable corresponding relationship has been established between “Romanee-Conti” and the Chinese characters “罗曼尼·康帝”. Therefore, “罗曼尼·康帝” should also be protected as a geographical indication of wines. The Disputed Trademark “罗曼尼·康帝”, which contains the Chinese characters “罗曼尼·康帝” having a stable corresponding relationship with the geographical indication “Romanee Conti”, violates the provisions of Article 16 (1) of the 2001 Trademark Law.

Both TRAB and Wu Liping appealed the first-instance decision to the Beijing High Court. The Court of Appeal upheld the decision of the first-instance court, holding that the use of Disputed Trademark on wines and other commodities closely associated with wines is likely to mislead the public.

Comments

The TRAB reiterated in the invalidation proceeding and the court appeal the argument that given that Romanee-Conti had not been registered as a geographical indication in China, it cannot be granted protection. In fact, before the promulgation of the General Provisions of the Civil Law 2017, there had been controversy on whether to grant direct protection over geographical indications, a civil right yet recognized in China. The nation’s recent legislative progress has prompted the evolution of the protection regime of geographical indications.

In 2015, the Beijing First Intermediate Court found, in CIVC v. Sheng Yan Yi Mei, that Article 16 of the Trademark Law is the legal basis to invoke protection over geographical indications in China, and on this basis, the Regulations for the Implementation of the Trademark Law have further elucidated that geographic indications may be applied for registration as certification trademarks or collective trademarks. Nevertheless, the Regulations do not exclude those geographical indications other than collective trademarks and certification trademarks from being protected. The parameter in ascertaining whether legal protection is justified and to what extent such protection is appropriate lies in whether the indication per se has functioned as a de facto source identifier among the relevant public. Whether geographical indications have been registered as collective trademarks or certification trademarks in China is not a precondition to legal protection in China.

As to the geographical indications that have not been applied for registration in China, the Beijing High Court ascertains in Article 13.4 of the Guidelines for the Adjudication of Administrative Cases Concerning the Granting and Affirmation of Trademark Right  the principle where the prior protection of the geographical indications by its country of origin shall be honored in China. The court provides that where a foreigner claims that the application for registration of the litigious trademark violates the provisions of Article 16.1 of the Trademark Law and thus this trademark should not be registered or should be declared invalid, he shall provide proof that the geographical indication under his name is protected by law in the country of origin.

In this case, the courts of first and second instance, based on two pieces of Journal Officiel de la République Française submitted by the INAO, determined that France had recognised “Romanee-Conti” as an Appellation d'Origine Côntrollée by decree dated 11 September 1936. The courts examined the standards of wines from the area in the official journal (including the color and type of its products, the origin and region of various crops, all grape varieties, the processing, manufacturing, brewing, packaging and storage process, and the association with the place of origin), as well as the geographical region of Romanee-Conti and its natural and humanistic characteristics. Courts of both instances made a different finding by taking into consideration the evidence as to how such geographical indication is perceived by the Chinese public.

In particular, the Court of Appeal maintained the first-instance decision and quashed the TRAB ruling based on the finding that “although Romanee-Conti has not been applied for registration as a geographical indication trademark in China, the Trademark Law does not regard the registration as a prerequisite for protection of geographical indications”. The court noted that such a decision aligns with China’s obligation in protecting geographical indications after its accession to the TRIPS Agreement.

Geographic indication is one of the intellectual property rights enumerated in Article 123 of the General Provisions of the Civil Law. Although registration is not a precondition to invoke protection, the owner of a registered geographical indication could be in a more advantageous position to challenge copycats/infringers in administrative and judicial proceedings. And a sound IP portfolio is not only the shield for self-preservation, but also the trump card in active defense.

Contributors: Wang Yan, Zheng Xiaoxia & Jiang Nan