On the same day, February 1, 2024, two regulations, both issued on December 29, 2023 by the China National Intellectual Property Administration (CNIPA), will enter into effect, providing details on the registration, administration and protection of geographical indications (GIs).
The simultaneous issuance of two different regulations on the same topic is the consequence of China’s dual system regarding the protection of GIs: the so-called sui generis system prevailing in the European Union, and the trademark system (collective or certification trademarks can be used to protect GIs) prevailing in other parts of the world (such as the USA). Hence the coexistence of two parallel regulations.
The regulations of both systems have followed different paths, at different times.
The first regulation for the Registration and Administration of Collective and Certification Trademarks goes back to 2003. In June 2022 a “Draft Measures for the Administration and Protection of Collective and Certification Trademarks” was published. This draft was adopted after some modifications on December 29, 2023. Both regulations (2003 and 2023) coexist but in case of discrepancy, the latest shall prevail.
As regards GI Products, the first regulation was issued in 2005. It is only in 2016 that measures were published concerning foreign GIs, which were slightly modified in 2019. In 2020, the CNIPA published a new draft combining revisions for the 2005 and 2019, but no final text was decided. Finally, a revision of the 2005 regulation drafted in September 2023, becomes the now final text of December 29, 2023. Similarly, both versions (2005 and 2023) coexist.
It is significant that both regulations become, so to speak, reunited and shall enter into effect as of the same date February 1, 2024.
Still, collective or certification trademarks and “GI products” are different legal concepts and It may be interesting to compare their respective regulations (the “Collective/Certification Trademark Regulation” and the “GI Product Regulation”) by following a common grid of analysis: definition, registration, use, supervision, revocation and protection.
Definition
The concept was introduced and defined in the Trademark Law in 2001, after China had acceded to the WTO: “Article 16(2) – A geographical indication referred to in the preceding paragraph is a sign which indicates a good as originating in certain region, where a given quality, reputation or other characteristic of the good is essentially attributable to the natural or human factors of the region”.
The definition of the GI concept in both regulations should be in conformity with this legal definition.
The Collective/Certification Trademark Regulation indirectly provides a definition by listing what needs to be stated in an application for registration: Article 5 – “Where a geographical indication is registered as a certification mark or a collective mark, the following contents shall be stated in the application: (1) The specific quality, reputation or other characteristics of the commodities indicated by the geographical indication; (2) The specific quality, reputation or other characteristics of the product are mainly determined by the natural or human factors of the area indicated by the geographical indication; (3) the extent of the area indicated by the geographical indication.”
The GI Product Regulation offers a straightforward definition: Article 2 – “The term ‘geographical indication product’ refers to products whose quality, reputation, or other essential characteristics are essentially determined by the natural and human factors of a specific region. Geographical indication products include: (1) Planting and breeding products from the specific region; (2) Products with raw materials either entirely from the specific region or partly from other areas, produced and processed in the specific region according to specific processes”.
It appears, therefore, that – apart from a few different choices of words – there is a fundamental difference between these two definitions: “natural OR human factors” for the Collective/Certification Trademark Regulation), and “natural AND human factors” for the GI Products Regulation. Between these two words, OR and AND, lies the possibility, or the impossibility, to protect handicrafts and industrial products.
The GI Product Regulation, therefore, does not seem to be in conformity with the legal definition of Article 16(2) of the Trademark Law, and also seems to contradict the terms of the the EU China GI Agreement signed on September 14, 2020, where it is stipulated that “The Parties agree to consider extending the scope of geographical indications covered by this Agreement after its entry into force to other product classes of geographical indications not covered by the scope of the legislation referred to in Article 2, and in particular handicrafts, by taking into account the legislative development of the Parties”. The reference to Craft and Industrial products in the new regulation is all the more justified that the European Commission has recently promulgated a Regulation on Geographical Protection for Craft and Industrial Products.
Registration
The difference between collective/certification trademarks and GI Products is more obvious when looking at their respective registration procedures.
Who may apply:
Applications for the registration of collective/certification trademarks are filed with the CNIPA by the entity who requests the protection of the GI. Applications for the protection of GI Products are submitted to the CNIPA by the people’s governments, at the county-level or higher, proposing the production area, or by a designated social organization or institution (Article 9).
Where the applicant for the registration of a GI collective/certification trademark is Chinese, an “approval document issued by the people’s government or the competent department at or above the county level” shall be attached (Article 5.1). If the application is filed by a foreigner or foreign enterprise, evidence needs to be submitted that the GI is legally protected, in the country of origin, in the name of the applicant (Article 5.4). As to GI Products, according to the “Measures” of 2019[1], the applicant of a foreign GI shall be the “original applicant in the originating country or region”, recommended by the competent authority in such country or region.
Examination:
The examination of collective/certification trademarks applications is performed by the examiners of the CNIPA and follows the same procedure (substantive examination, preliminary approval, publication) as for ordinary trademarks. For GI Products applicatons, the CNIPA conducts a formality examination to verify if the set of required documents is complete and, after formal acceptance, organizes a technical examination by a panel of experts, concluded by a preliminary recognition announcement.
Oppositions:
The procedure of opposition (3 months from the publication of the preliminary approval), for collective/certification trademarks is the same as for other trademarks. Concerning GI Products, oppositions may be filed during a period of 2 months after the annnouncement of the preliminary recognition (it may be noted that, in the Measures of 2019, the opposition procedure was conducted before the technical examination and not after).
Use
The approach of the two regulations is quite different when it comes to the relation between registrants and producers.
For collective/certification trademarks, such relations are defined in the Implementing Regulations of the 2014 Trademark Law (article 4.2). A certification trademark may be used by any person provided the products satisfy the criteria set out in the registration, whereas a person may ask to become a member of the collective trademark registrant or may even be allowed to use the mark (subject to the same quality conditions), without becoming a member. The regulation provides detailed conditions for the “fair use” of a place name contained in a GI trademark, which is subject however, to not disturbing the order of market competition or disparaging the reputation of the trademark (articles 22-25).
The GI Products regulation focuses on the authorisation, granted to the producers by the CNIPA, to use special logos: producers may apply, subject to satisfying the quality conditions, to the local intellectual property authorities (who refer to the provincial level and then to the CNIPA) for the right to use a special logo on their products, packagings, containers and transaction documents. The form of the logo is to be downloaded from the website of the CNIPA and may not be changed.
Supervision
Both regulations provide for the necessity to supervise the quality of the products protected by a GI. In the Collective/Certification trademark regulation, this responsibility lies on the registrant (article 17), while in the GI Products regulation, local intellectual property administrations are responsible for the daily supervision of the production area, name, quality characteristics, compliance with standards (article 24).
Revocation
The Collective/Certification trademark regulation (article 26) introduces the concept of “negligence in exercising the trademark right resulting in the mark becoming a generic name” for the products and also refers to Article 49 of the Trademark Law (non-use for three consecutive years). In the above conditions, any person may apply for the revocation of the trademark.
The GI Products regulation, in Article 27, is much more prolific about the conditions for revocation of a GI Product: becoming a “generic name”, not being used for three consecutive years, irrevocable changes in the natural or human factors, violation of laws, public order, safety or hygiene hazard, obtention by deceptive or unfair means.
The revocation of GIs, in particular European GI Products registered pursuant to the EU-China GI Agreement, is particularly problematic. It is specifically provided in the European Regulation on GIs [Article 13.2 of the EU Regulation (EU) No 1151/2012] that GIs cannot become generic. Besides, Article 4.5 of the Agreement provides that “Nothing in this Agreement shall oblige a Party to protect a geographical indication of the other Party which is not, or ceases to be, protected in its country of origin, or which has fallen into disuse in that country”. Therefore, the only way a European GI could cease to be protected in China is that it ceases to be protected in the country of origin, and not because an organization of individual has requested its cancellation.
Protection
The protection of GIs – whether registered, or not, as collective/certification trademarks or as GI Products – against the registration or use of conflicting trademarks is subject to the provisions of the trademark law. Articles 10.2 and 16 of the law constitute a strong and efficient legal base for ensuring such protection.
However, the enforcement of the GI rights against usurpation by illegitimate producers shows significant differences between the two regulations.
Collective and certificate trademark owner may rely on the provisions of the trademark law: administrative actions by the Administration for Market Regulation, criminal enforcement by the Public Security Bureaus, or civil actions before the People’s courts. Therefore, the regulation does not provide any additional measures to what is already in the law.
The GI Product regulation, which is not “backed” against a specific law, simply provides in its Article 30, that acts violating the GI Product right are “subject to relevant laws and regulations” (such acts are enumerated: using the name on identical or similar products not originating from the protected area, even if the true origin is indicated; using a similar name, not meeting the quality standards; counterfeiting the special logo, among others). In practice, when such acts occur, the IP righter often resort to the Product Quality Law or the Anti-unfair Competition Law.
It is worth noting that previous drafts of the GI Product regulation provided for the administrative authorities to take enforcement actions (raid, confiscation and destruction of the illegal products, fine against the infringer). However, due to the recent administragive reform, which placed the CNIPA directly under the State Council (and no longer under the State Administration for Market Regulation), it appears that the CNIPA is not in a position to provide for enforcement measures. Such initiative is in the scope of competence of the SAMR.
The concomitance of the publication and entry-into-effect of the two regulations, on collective/certification trademarks and GI Products, cannot be a coIncidence. If any reflection and prospective may be made, it is that China is actively working on the creaction of a unique protection system, addressing both trademarks and GI Products. This would definitely be good news for the right holders. But the work might take some time, as both rights are of quite different nature and there are some points of contradiction to resolve.
Author: Paul Ranjard, Huang Hui & Zhu Zhigang, First published by WTR
Footnotes
[1] Article 35 of the new regulation provides that special matters such as the application, examination, use of special symbols, supervision and administration of foreign GI Products shall be separately stipulated by the CNIPA.