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An Analysis of China's System of Protecting Geographical Indications

Published online by Cambridge University Press:  16 April 2015

Lanye Zhu
Affiliation:
East China University of Politics and Law
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Abstract

Geographical indications are a kind of intellectual property required to be protected under the TRIPS Agreement of the WTO. In order to fulfil its WTO obligations, China started to protect geographical indications even before it was formally admitted to the WTO. At present, geographical indications can be protected in Chinese law through one or both of the following ways: trademark registration pursuant to the Trademark Law, and the registration of special labels bearing geographical indications. However, internal problems exist within both of these systems, and the co-existence of the systems also creates conflicts. This article analyses these problems and proposes ways of resolving them.

Type
Research Article
Copyright
Copyright © Faculty of Law, National University of Singapore 2014

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References

1 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), Art. 22: see GATT Secretariat, The Results of the Uruguay Round of Multilateral Trade Negotiations: The Legal Texts (Geneva: GATT Secretariat, 1994 Google Scholar; 1995 reprint by the World Trade Organization) at 329. TRIPS is not the first international treaty that regards geographical indications as a form of intellectual property. Art. 1 of the Paris Convention for the Protection of Industrial Property, which was signed more than 100 years ago, clearly provides for protection of “appellations of origin”. Though the term used in Paris Convention is a different one, the object protected is actually the same. The Paris Convention, however, did not define what an “appellation of origin” was, while TRIPS gives definition to geographical indications for the first time.

2 See 肖刚,“论地理标志的保护”,《湖南省政法管理干部学院学报》2002 年12 月, 第36 页 ” (XIAO Gang, “On the Protection of Geographical Indications” Hunan Sheng Zhengfa Guanli Ganbu Xueyuan Xuebao (Journal of the Hunan Province Political and Legal Administration Cadres' Institute) (December 2002) at 36); 莫怩, “加入世界贸易组织与我国地理标志保护”,《广西社会科学》2003 年, 第 9 期, 第 87 页 (MO Ni, Entering the WTO and the Protection of Geographical Indications in China” (2003) 9 Guangxi Shehui Kexue (Guangxi Social Science) at 87)Google Scholar.

3 Paris Convention on the Protection of Industrial Property, as revised at Stockholm in 1967, online: WIPO <http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html> (accessed 9 February 2006): see TRIPS, Art. 22.2.

4 TRIPS, Art. 22.3.

5 For instance, in common law countries such as Australia, New Zealand, the United Kingdom and the United States of America, although trademark registration systems still exist, trademark rights may be obtained through use without registration.

6 The State Administration for Industry and Commerce is an administrative organ at the ministerial level directly under the State Council of the People's Republic of China. The Trademark Office of the SAIC is responsible for registration of trademarks. Besides that, the SAIC is in charge of market supervision and the enforcement of relevant administrative regulations. The Administrations of Industry and Commerce at different levels are responsible for handling the registration of entities qualified to do business in the market, implementing systems of management to ensure the quality of commodities in market, accepting consumers' complaints and handling disputes, examining and punishing fraudulent activities such as the use of fake registered trademarks and false advertisements, and various activities relating to unfair competition.

7 The Trademark Law permitted the registration of trademarks containing the names of administrative divisions below the county level and place names that are not the names of administrative divisions. Some trademarks containing ‘prohibited’ place-names were registered because examiners determined that the words used had other meanings.

8 范汉云, “地理标志保护需要注意的问题”《工商行政管理》2004 年, 第20 期, 第27 页 ( Hanyun, FAN, “Notable Problems in Geographical Indication Protection” (2004) 20 Gongshang Xingzheng Guanli (Administration of Industry and Commerce) at 27 Google Scholar. The 1994 Methods have since been replaced by the present Administration Methods: infra note 14.

9 The Decision on Revision of the Trademark Law adopted at the 24 the Meeting of the Standing Committee of the National People's Congress on 27 October, 2001 provides the Decision would be effective as of 1 December 2001.

10 Trademark Law, Art. 16 para. 2.

11 Art. 22.2 of TRIPS provides: “Geographical indications are indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”.

12 Implementation Rules, Art. 6.

13 Trademark Law, Art. 3 para. 3.

14 Methods for the Registration and Administration of Certification Marks and Collective Marks (hereinafter referred to as “the Administration Methods”), Art. 20.

15 Trademark Law, Art. 3 para. 2.

16 Administration Methods, Art. 17.

17 Implementation Rules, Art. 6.

18 Ibid. The Chinese term translated here as “use” is 使用 shiyong. Although the law does not provide for any specific form of use, it is generally understood that the term refers to use as a trademark on goods or with services. The inconsistency between this provision and other provisions of law are considered infra in part II.A.2 of this article.

19 These include business certificates issued by the SAIC or local administrations for industry and commerce, and certificates of association issued by the Civil Affairs Ministry.

20 Administration Methods, Arts. 4 and 5.

21 Administration Methods, Arts. 13-16, 19 and 21.

22 Administration Methods, Art. 4 para. 2.

23 Online: Trademark Office, State Administration for Industry and Commerce <http://sbj.saic.gov.cn/exHTML/dlml.html> (accessed 17 October 2005).

24 The State Administration for Quality Supervision, Inspection and Quarantine is an administrative organ at the ministerial level directly under the State Council, which is responsible for inspecting China's import and export commodities, and the certification and standardisation of domestic production. This governmental organ was formally established on 16 April 2001 by a merger of the State Administration for Quality and Technology Supervision and the State Administration for Exit and Entry Inspection and Quarantine. For convenience of discussion in this article, where it is not material to distinguish between the present governmental organ and its predecessors, they are all referred to simply as “the SAQSIQ”.

25 1999 Regulations, Art. 2. It may be noted that one of the present SAQSIQ's predecessors, the State Administration for Exit and Entry Inspection and Quarantine, published Administration Regulations for Place of Origin Labels in 2001. One type of “place of origin labels” relate to geographical names. However, since these labels are only used on goods for export, the author will make only passing reference to such labels in this article. The 2001 Administration Regulations for Place of Origin Labels were replaced by the 2005 Regulations.

26 This term in Chinese is 单位 danwei. It is frequently used in Chinese administrative documents, and may refer to an association, a company, an enterprise, a hospital, a school or any other governmental or non-governmental organisation, whether profit-making or not.

27 Online: National Protected Geographical Indication Network <http://www.npgi.com.cn/announce/GGList_cx2.asp?offset=-1> (accessed 25 January 2006).

28 SAQSIQ Official Gazette, Order 2005 No. 78, online: SAQSIQ <http://www.aqsiq.gov.cn/cms/template/item.html?did=18cid=1895\15240> (accessed 25 January 2006).

29 2005 Regulations, Art. 2.

30 The design of the special label is prescribed by law. It consists of an oval ring with the phrase “Product protected by a People's Republic of China Geographical Indication” in Chinese characters on the upper part of the ring. In the middle of the oval is a map of China with the name of the specific product under it. The only difference between special labels protecting different products is the name of the product on each label.

31 If the geographical region in question is within a county, the designation should be made by the county government. If the region covers more than a county, the designation should be made by the municipal government or provincial government: 2005 Regulations, Art. 9.

32 2005 Regulations, Art. 10. Any such manufacturer that wishes to use a special label on its product must submit a certificate issued by its local government certifying that the product is produced in the geographical area, together with a product quality inspection report. The manufacturer is entitled to use the special label after approval by the SAQSIQ: 2005 Regulations, Art. 20.

33 Online: European Commission, Protected Designation of Origin (PDO)/Protected Geographical Indication (PGI) <http://europa.eu.int/comm/agriculture/qual/en/1bbaa_en.htm> (accessed 26 January 2006).

34 SAQSIQ Official Gazette, Orders 2005 Nos. 108, 125, 152 and 158, online: SAQSIQ <http://www.aqsiq.gov.cn/cms/data/1986/15824.doc> (accessed 6 January 2006). Nineteen out of the above 39 special labels are newly approved, while the remaining 20 are designation of origin products approved pursuant to the 1999 Regulations.

35 “Designations of origin are protected by many countries under trademark law. However, they are different in nature from trademarks. Designations of origin are not owned by one individual or enterprise… but can be used by anyone in the place that produces the product”: 郑成思, “知识产权 论”《法律出版社》, 2003 年10 月, 第3 版, 第200 页 (ZHENG Chengsi, “A Tentative Discussion of Intellectual Property Rights” Falü Chubanshe (Law Press) issue 3 (October 2003) at 200).

36 Trademark Law, Art. 3 para. 2.

37 A general corporation (总公司 zong gongsi) means a corporation with branches 分公司fen gongsi), and a group corporation (集团公司 jituan gongsi) is one made up of several corporations which are usually independent.

38 There is no provision of the Trademark Law providing the same. However, one can infer this from the fact that no provision of the Trademark Law or the Implementation Rules requires that the location of the member or the place of the production be considered in the registration process.

39 Supra notes 16-17 and the accompanying text.

40 Supra note 23.

41 For instance, a registration for tea by the Guizhou Duyun Maojian Tea Corporation Group Limited 贵州都匀毛尖茶叶集团有限公司 福建建宁供销合作社 (registration no. 3214853), and for lotus seeds by the Fujian Jianning Supplies and Sales Collective 福建建宁供销合作社 (registration no. 1607998).

42 Supra note 16.

43 Administrative Methods, Arts. 4-7.

44 According to the Trademark Law, Art. 29, where two or more applicants apply to register similar or identical marks for use on the same kind of goods or similar goods, the one whose application is filed earlier will obtain the registration of its mark provided that all requirements are met.

45 Although there are some exceptions to this rule these are limited to very special situations; for instance, the Trademark Law, Art. 13, provides that “[w]here a trademark in respect of which the application for registration is filed for use on identical or similar goods is a reproduction, imitation or translation of another person's trademark not registered in China and is likely to cause confusion, its registration shall be rejected and its use prohibited”.

46 See part I.A of this article, supra.

47 Trademark Law, Art. 10.

48 Trademark Law, Art. 28.

49 Changli (昌黎) is a county in Hebei Province (河北省) famous for wine and other products made from grapes.

50 The trademark “JINHUA HUOTUI” has exactly the same pronunciation, appearance and meaning in Chinese as the place name “Jinhua” and the name of the food product huotui. As such, the transliterations of “JINHUA HUOTUI” and “Jinhua huotui” into the English using the Hanyu Pinyin system are also identical. In this article, capital letters have been used to distinguish the registered trademark “JINHUA HUOTUI” from the food product Jinhua huotui.

51 曾建宁 & 钟法, “金华火腿商标权争战 20 年: 原产地企业首次叫板”《青年时报》2005 年 4 月 01 日 (ZENG Jianning & ZHONG Fa, “A 20-Year Battle Over the ‘JINHUA HUOTUI’ Trademark: Enterprises at the Place of Origin Bring a Law Suit for the First Time” Qingnian Shibao (Youth Daily Newspaper) (1 April 2005)), online: Sina <http://finance. sina.com.cn/xiaofei/canyin/20050401/15261481338.shtml> (accessed 17 October 2005). The outcome of one of these cases is discussed infra in the text accompanying notes 61-63.

52 China has been protecting geographical indications under the Trademark Law system since 1994: supra note 8 and the accompanying text.

53 The Trademark Law, Art. 41, provides that a registered trademark may only be challenged on certain limited bases. The provision reads:

Where a registered trademark stands in violation of the provisions of Articles 10, 11 and 12 of this Law, or the registration of a trademark was acquired by fraud or any other unfair means, the Trademark Office shall cancel the registered trademark in question; and any other organisation or individual may request the Trademark Review and Adjudication Board to make an adjudication to cancel such a registered trademark.

Where a registered trademark stands in violation of the provisions of Articles 13, 15, 16 and 31 of this Law, any other trademark owner concerned or interested party may, within five years from the date of the registration of the trademark, file a request with the Trademark Review and Adjudication Board for adjudication to cancel the registered trademark. Where a well-known mark is registered in bad faith, the genuine owner thereof shall not be restricted by the five-year limitation.

54 Supra note 27.

55 SAQSIQ Official Gazette, Order 2005 No. 107, online: SAQSIQ <http://www.aqsiq.gov.cn/cms /template/item.html?did=8&cid=1986\15822> (accessed 6 February 2006).

56 SAQSIQ Official Gazette, Order 2005 No. 108. The 21 designation of origin products had been approved separately between 2002 and 2005, the latest having been approved on 6 April 2005 and published in Official Gazette, Order 2005 No. 51, online: SAQSIQ <http:// www.aqsiq.gov.cn/cms/template/item.html?did=8&cid=1986\14587> (accessed 6 February 2006).

57 The 2005 Regulations were published on 7 June 2005 in the SAQSIQ Official Gazette, Order 2005 No. 78, online: SAQSIQ <http://www.aqsiq.gov.cn/cms/template/item.html?did=8&cid =1986\14946> (accessed 6 January 2006). This author has browsed all SAQSIQ gazettes published between 7 June and 31 December 2005, but has not found any document dealing with the matter.

58 On 21 October 2005, the SAQSIQ announced that a new design had been prepared for the special label to be used for geographical indication protection, and that the new label would be used from 1 November 2005. The use of designation of origin labels and place of origin labels will cease on 30 June 2006: SAQSIQ Official Gazette, Order 2005 No. 151, online: SAQSIQ <http://www.aqsiq.gov.cn/cms/template/item.html?did=8&cid=1986\16620> (accessed 6 January 2006). As to the meaning of the term “place of origin label”, see supra note 25.

59 2005 Regulations, ch. 3.

60 Supra notes 50-51 and the accompanying text. The decision of the case in Chinese (case no. 沪二中 民五 (知) 初239 号) can be found on the website of the Shanghai No. 2 Intermediate People's Court at <http://www.shezfy.com/flws/flws_new.asp> (accessed 12 February 2006) on p. 13.

61 This was a term used under the older 1999 Regulations: supra note 25.

62 The Committee is overseen by the SAQSIQ and is in charge of examining and approving applications to register geographical indications under the SAQSIQ Special Label Protection scheme.

63 In addition, in 2003 Zhejiang Corporation also sued two companies in Zhejiang for trademark infringement. The two defendants had been licensed by the plaintiff to use its “JINHUA HUOTUI” trademark. The parties had agreed in the licence contract that the defendants had to use only the plaintiff's trademark and could not use their own trademarks. However, the defendants later applied for and received approval to use “Jinhua huotui” as a geographical indication under the SAQSIQ Special Label Protection scheme. They then stopped using the plaintiff's “JINHUA HUOTUI” trademark and registered their own trademarks “JINHUAN” (金环, meaning “golden ring”) and “ZONGSHUAI” (宗帅, meaning “ancestral commander-in-chief”), which they began using on their products together with the “Jinhua huotui” special label. Zhejiang Corporation sued the defendants for trademark infringement and breach of contract.

As regards the trademark infringement claim, the Hangzhou Intermediate People's Court decided that the defendants had not infringed the plaintiff's trademark by using on their products the “Jinhua huotui” geographical indication special label together with their own trademarks. This decision was upheld by the Zhejiang Province High People's Court on the plaintiff's appeal: see “20 年商标之争金华打赢火腿品牌官司” 《现代金报》2005 年 1 月 11 日 (“Twenty-Year Trademark Dispute: Jinghua Wins Huotui Product Brand Lawsuit” Xiandai Jinbao (Contemporary Golden Newspaper) (11 January 2005)), online: <http://www.zhoushan.cn/xwzx/cjxw/t20050111_157858.htm> (accessed 27 January 2006). Unfortunately, the basis upon which the Intermediate and High People's Courts made their decisions is not clear from the news report, and the author has not been able to obtain a copy of the judgments handed down by the courts.

64 European Communities—Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs (Complaints by the United States and Australia) (2005), WTO Doc. WT/DS174/R and WT/DS290/R (Panel Reports), online: WTO <http://docsonline.wto.org/gen_search.asp?language=1>. Two separate Panel reports were rendered in respect of each complainant. As the reasoning in both the reports was identical, this article refers only to the report in respect of the complaint by the United States in WTO Doc. WT/DS174/R.

65 E.C., Council Regulation (E.E.C.) 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs [1992] O.J. L. 208.

66 See, generally, E.C.–Trademarks and Geographical Indications, supra note 64 at para. 7.602.

67 Ibid. at para. 7.601.

68 TRIPS, Art. 22, states as follows: “[Protection of Geographical Indications] …

2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent:

(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;

(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).

3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.

4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.”

69 E.C.–Trademarks and Geographical Indications, supra note 64 at para. 7.521 [emphasis in original].

70 E.C., Council Regulation 692/2003 of 8 April 2003 amending Regulation (EEC) No. 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs [2003] O.J. L. 099.

71 E.C. Regulation 2081/92, Art. 13(1), states in part: “Registered names shall be protected against:

(a) any direct or indirect commercial use of a name registered in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or insofar as using the name exploits the reputation of the protected name;

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

(d) any other practice liable to mislead the public as to the true origin of the product.”

72 E.C.–Trademarks and Geographical Indications, supra note 64 at para. 7.625. See generally paras. 7.512-7.625.

73 Ibid. at para. 7.688. See generally paras. 7.638-7.688.

74 Ibid. at paras. 7.655-7.657, 7.661 and 7.674.

75 罗雅芸, “试论对地理标志的保护”《黑龙江对外经贸》2003 年, 第 4 期, 第 39 页 (LUO Yayun, “A Discussion on the Protection of Geographical Indications” (2003) 4 Heilongjiang Duiwai Jingmao (Foreign Trade and Economy of Heilongjiang) 39); 王莲峰, “制定我国地理标志保护法的构想”《法学》2005 年, 第 5 期, 第 69 页 ( Lianfeng, WANG, “Thoughts on the Drafting of a Geographical Indication Protection Law for China” (2005) 5 Faxue (Legal Science) 69)Google Scholar.

76 See part II.A.1 of this article, supra.

77 2005 Regulations, Art. 21.

78 From SAQSIQ Official Gazette, Order 2005 No. 151, online: SAQSIQ <http://www.aqsiq.gov.cn/cms/template/item.html?did=8&cid=1986\16620> (accessed 26 January 2006).

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