China Issues Draft Provisions on the Protection of Geographical Indications

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In follow up to the signing of an agreement with the European Union on Graphical Indications (GIs), on September 24, 2020, the China National Intellectual Property Administration (CNIPA) issued the Provisions on the Protection of Geographical Indications (Draft for Comment) (商标代理管理办法 (征求意见稿)).  GIs are, per the 1995 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS),  “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 geographic origin.” Examples of geographical indications from the United States include: “FLORIDA” for oranges; “IDAHO” for potatoes; and “WASHINGTON STATE” for apples.   In the U.S., GIs are typically protected as certification marks.

The draft has 7 chapters including General Provisions; Applications for GIs; Examination of GI Applications; Revocation and Modification of GIs; Management, Application and Use of GIs; Legal Liability; and Supplementary Provisions.  A summary of the chapters follows:

General Provisions

The draft defines geographical indication products as

products that are produced in a specific area and whose quality, reputation or other characteristics are essentially determined by the natural and human factors of the place of origin, and are named after geographical indications. Geographical indication products include:

(1) Planting and breeding products from specific regions;

(2) Products where all raw materials come from a specific area or partly come from other areas, and are produced and processed in a specific area according to a specific process.

Foreign geographical indication products can include both Chinese names and names in the original language as protected by GI in the country of origin.

Per Article 7, GIs will not be granted if:

(1) The product or product name violates the law, social ethics or interferes with the public interest;

(2) The product name is only the generic name of the product;

(3) The product name is a registered trademark or an unregistered well-known trademark of others, which misleads the public;

(4) The product name is the same as the product name of the protected geographical indication, causing the public to misunderstand the geographical origin of the product;

(5) The name of the product is the same as the name of a plant variety or animal breeding, causing the public to misunderstand the geographic origin of the product;

(6) The product violates the requirements of safety, hygiene, or environmental protection and may cause harm to the environment, ecology, and resources;

(7) The protection of foreign geographical indication products has been revoked in the country or region to which it belongs.

Applications for GIs

Foreign applicants can apply for a GI in China if they have obtained GI protection in their country or region.

Per Article 12, the requirements for protection of a GI include:

(1) Product name;

(2) Scope of production area;

(3) Product description;

(4) Quality requirements, including quality characteristics such as production and processing technology and sensory, physical and chemical indicators;

(5) Description of the relevance between product quality characteristics and natural and human factors of the place of origin;

(6) Information on the local intellectual property management department as the management agency for the use of GIs;

(7) Information on testing institutions.

Examination of GI Applications

CNIPA will initially conduct a formal examination (not substantive examination).  If the GI passes examination, an acceptance announcement shall be issued; if the GI fails examination, the applicant shall be notified in writing that it will not be accepted.  Third parties may then oppose the accepted GI within 2 months of the acceptance based on the provisions of Article 7 mentioned above.

If there is no opposition or any opposition fails, CNIPA will conduct a technical review, in which the applicant will have a chance to amend its application if required by CNIPA.  If CNIPA rejects the application, an applicant may appeal within 30 days of receipt of the notice of rejection.  The applicant can then sue in People’s Court if dissatisfied with an appeal decision.

Revocation and Modification of GIs

After grant of a GI, any third party may challenge the GI based on Article 7 at CNIPA. CNIPA will then decide and notify parties.  Parties may sue in People’s Court if dissatisfied with CNIPA’s decision within 30 days of receiving the decision.

After grant, the GI applicant can submit change requests to CNIPA, such as applicant’s name, product protection requirements, adding a producer to a product list, etc. In the later case, the applicant should submit:

(1) List of newly added producers;

(2) The inspection report of the geographical indication products produced by the new producer issued by the relevant product quality inspection agency;

(3) The verification report of newly added producers issued by the local intellectual property management department where the place of origin is located.

Management, Application and Use of GIs

The  local intellectual property management department will be responsible for daily supervision of the scope of production of protected geographical indications, product names, product quality characteristics, product standard compliance, and the use of special signs within its administrative area.

Legal Liability

Per Article 35, infringement of a GI includes: 

(1) By using the product name or product description to make the public mistakenly believe that the product comes from the place of origin of the protected geographical indication product;

(2) Using special marks on products without approval;

(3) The use of a mark similar to the special mark on the product causes the public to mistake it for a special mark;

(4) Selling the aforementioned products.

The county-level branch of the State Administration for Market Regulation (SAMR) can issue penalties including warnings and fines (maximum of 30,000 RMB or about $4,400 USD) when the name of the protected geographical indication product is used on the same or similar products outside the scope of production and selling such products.

Applicants can also be fined for failing to meet quality requirements or causing adverse social impact. First the SAMR will order corrections with a time limit and if the applicant fails to correct, then the SAMR may issue fines.

Supplementary Provisions

Applicants are not required to file GIs using this process and instead can file for collective marks or certification marks under the Trademark Law.

The deadline to submit comments is October 24, 2020.  Comments can be submitted via internet, email, fax or postal mail as indicated here.

 

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

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Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.