Author: Yingying Zhu, Partner at BEIJING MINGDUN LAW FIRM

Email: zhu.yingying@mdlaw.cn

Date: February 21, 2024

Introduction

There is a motto that you might be told as a kid: no one is born a winner; everyone is born a chooser-making choices as to who you want to be. However, when you grow up, you find that, sometimes with great frustration, this motto might not be true because some people are born with a sliver spoon in mouth while others are not as lucky. In the commercial world, there are products who are born winners-those with a Geographical Indication (hereinafter, the “GI”) which is a sign that identifies products that originate from a specific geographic location and possess certain qualities or reputation due to their origin. Some examples of domestic GIs in China are Kweichow Moutai Liquor, Anxi Tieguanyin Tea, Yangcheng Lake Hairy Crabs and Sichuan Embroidery and foreign GIs are Champagne, Scotch Whiskey, Parmesan Cheese and Swiss Watches.

This article will mainly discuss the problems in the protection modes of GIs and GI products in China and the new developments in law.

Problems in the Previous Modes of Protection

In China, there used to be a multi-agency system for protecting of GIs and GI products. There were "two modes and three channels" for the protection of GIs and GI products administered by different government agencies. The multi-agency system was caused by the overlaps and conflicts between the different agencies’ responsibilities. In 2002, the State Council issued the "Trademark Law Implementation Regulations" which stipulated that GIs can be registered as collective trademarks or certification trademarks. In 2005 the former General Administration of Quality Supervision, Inspection and Quarantine issued the departmental regulation titled "Provisions on the Protection of GI Products" authorizing the administrative protection of GIs through the approval of products with the GI signs. In 2007, the former Ministry of Agriculture issued the departmental regulation with the title of "Measures for the Administration of GIs of Agricultural Products" to regulate the registration of GIs of agricultural products.  These three channels have their own characteristics and advantages, but the required standards and procedures are different, which have caused much confusion and inconvenience to the GI applicants.

In a nutshell, in the former modes of protection, GIs can be registered as collective or certification trademarks before the China National Intellectual Property Administration (“CNIPA”), GI products can also gain protection from the former General Administration of Quality Supervision, Inspection and Quarantine. Primary products produced through farming can be protected as GIs of agricultural products before the Ministry of Agriculture and Rural Affairs. This multi-agency system has proven to be burdensome, inconvenient, and sometimes confusing, especially to the foreign GIs.

New Developments in Law

To address resounding calls for reform, on December 29, 2023, The CNIPA released the Measure on the Protection of Products with Geographical Indications[1]  (hereinafter, the “Measure”), which took effect on February 1, 2024.

The Measure includes these four highlights:

· Government agencies in charge: CNIPA is responsible for the national administration and protection of GI products and signs and will uniformly accept and examine applications for the protection of GI products and identify GI products. Local intellectual property management departments are responsible for the management and protection of GI products and signs within their respective administrative orbits.

· Management responsibilities of applicants and obligations of producers: The Measure sets out that after being granted GI protection, applicants shall take measures to manage the use of GI product names and signs, product characteristics, and quality. Producers within the place of origin shall organize production in accordance with corresponding standards, while those who cannot produce up to the standards will have their use of the GI canceled.

· Streamlining standards and procedures for reviewing GI products: The Measure provides that GI products should be authentic, with regional characteristics unique and relevant to their place of production. It lists circumstances under which protection will not be granted and further clarifies the requirements and procedures for oppositions and cancellations.

· Strengthening protection of GI products: It stipulates situations that constitute infringement of GI products and gives the agencies responsible for the enforcement of GIs the authority to order the cessation of illegal acts and impose fines.

A Global Perspective

While protecting GIs and GI products is a global approach, there are different protection modes in the world’s major economies.

1. The US

The United States' GI system uses administrative trademark structures already in place and provides opportunities for any interested party to oppose or cancel a registered GI if that party believes that it will be damaged by the registration or continued existence of a registration. The same governmental authority (the United States Patent and Trademark Office or "USPTO") processes applications for both trademarks and GIs[2].

Protecting GIs as trademarks, collective or certification marks employs the existing trademark regime, a regime that is already familiar to businesses, both foreign and domestic. Moreover, no additional commitment of resources by governments or taxpayers (for example, personnel or money) is required to create a new GI registration or protection system. A country's use of its existing trademark regime to protect geographical indications involves the use only of resources already committed to the trademark system for applications, registrations, oppositions, cancellations, adjudication, and enforcement. Furthermore, the system easily accommodates geographical indications that are not merely place names, but signs such as words, slogans, designs, 3-Dimensional marks, colors or even sounds and scents[3].

2. Australia

A geographical indication, or GI, identifies a good as originating in a specific territory, region or locality where a particular quality, reputation or other characteristic is essentially attributable to its geographical origin.

GIs can be protected in Australia through either a registered GI (which is only available for wines) or a registered certification trademark which may function as a GI. Currently, there is no dedicated standalone GI registration for non-wine agricultural (food and beverage) products. Other mechanisms under Australian law, such as passing off, may also be used to protect GI terms[4].

3. EU

In EU, product names can be granted a GI, if they have a specific link to the place where they are made. The GI recognition enables consumers to trust and distinguish quality products while also helping producers to market their products better.

Products that are under consideration or have been granted GI recognition are listed in geographical indications registers. The registers also include information on the geographical and production specifications for each product[5].

To register the name of a product, EU producers or producer groups need to lay down the product’s specifications and link to the geographical area, if applicable. The application is sent to national authorities for scrutiny and then forwarded to the European Commission, who will examine the request.

For non-EU products to be registered, producers send their applications directly, or via their national authorities, to the European Commission.

The Commission will check that the application contains the required information and that it does not contain any errors. Scrutiny of the application by the Commission should not exceed a period of 6 months from the date of receipt of the application from the EU country[6].

4. Japan

The Act on Protection of the Names of Specific Agricultural, Forestry and Fishery Products and Foodstuffs (Geographical Indication (GI) Act) is established in order to protect an indication that identifies an agricultural product which originates in the territory of a particular region or locality, and the quality or other characteristic of the product are linked to its geographical origin. The indication is protected as an intellectual property, and thereby contribute to the benefit of producers and the trust of consumers.

In Japan, the GI Act provides a system that the government protects names of such products as Intellectual Property. The GI Act protects the interests of producers through the establishment of GI protection system, thereby contributing to the sound development of the agricultural, forestry and fishery industries and also to ensure the interests of consumers[7].

Conclusion

As demonstrated in the above, some countries or regions, such as the US and Australia, are combining GIs as part of the existing trademark registration system while the EU and Japan are crafting a specific registration system for GIs. With the former approach, the national intellectual property (IP) office carries out the function of granting protection for GIs and it is making use of the IP system that is already familiar to the applicants with no additional commitment of resources required to create a new GI registration or protection system while in the latter approach, the function of granting GI protection is carried out by a special body responsible for GI protection and a separate registration and protection system is being dedicated to GIs. The Measure in China is following the single-agency approach, which aims to deal with the deficiency in the previous modes of protection.

With a unified administration approach and improved standards and procedures for the protection of GIs and GI products, hopefully the launch of the Measure will lead to greater efficiency and fairness, ultimately fostering the growth of domestic and foreign GI products. Not only are GI products born winners, but also they will be thriving and growing as winners with the launch of the new Measure and the implementation of new mode of protection.

1.See https://www.cnipa.gov.cn/art/2024/1/2/art_526_189473.html?xxgkhide=1.

2.See: https://www.uspto.gov/ip-policy/trademark-policy/geographical-indications-gi-protection.

3.Ibid.

4.See: https://www.dfat.gov.au/trade/organisations/wto/intellectual-property/ip-geographical-indications.

5.See: https://agriculture.ec.europa.eu/farming/geographical-indications-and-quality-schemes/geographical-indications-and-quality-schemes-explained_en.

 6.See: https://agriculture.ec.europa.eu/farming/geographical-indications-and-quality-schemes/registration-name-gi-product_en.

 7.See: https://www.maff.go.jp/e/policies/intel/gi_act/.