China GI TMO

Protection of Geographical Indications in China

May 4, 2017 By Yuncheng Li
As an important part of the intellectual property rights, geographical indications
(GIs) have been paid more and more attention by the governments of various
countries, and GIs have become one of the focuses of negotiations on international
intellectual property rights and negotiations on bilateral or multilateral trade.
There is no uniform definition of GIs or appellations of origin around the globe.
The term was first mentioned in the 1883 Paris Convention for the Protection of
Industrial Property, where, for the first time, GIs became an object of protection of
industrial property rights.[1] The first paragraph of Article 2 of the1958 "Lisbon
Agreement for the Protection of Appellations of Origin and their International
Registration", for the first time, defines the connotation of appellations of origin,
namely, it is a geographical denomination of a country, region, or locality, which
serves to designate a product originating therein, the quality or characteristics of
which are due exclusively or essentially to the geographic environment, including
natural and human factors. [2] According to the first paragraph of Article 21 of the
"Agreement on Trade related Aspects of Intellectual Property Rights " (hereinafter
referred to as the TRIPS agreement) reached in 1993 by the members of GATT,
GIs 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." [3]
According to the Trademark Law of China, GI is a sign that signify the place of
origin of the goods for which the specific quality, reputation or other features is
mainly decided by the natural or cultural factors of the regions.
In summary, GI is an indication formed by geographical name, and it must be the
actual objective existence; it can be the name of a place, locality, region or
country; it can also be a historical name. But it must be a place where it does exist.
Most GIs in China are made up of two parts: Geographical name and commodity
name.
International Practice
At present, there are two patterns of protection of GIs in the world: special law
protection system and trademark law protection system. Special law protection is
to protect geographical indications by legislation alone, mainly in France and
some countries in southern Europe; and the protection of trademark law is to
protect the GIs by the registration of collective marks or certification marks.
Present Practice in China
On the administrative level, at present, the State Administration for Industry and
Commerce/the Trademark Office (SAIC/TMO), the General Administration of
Quality Supervision, Inspection and Quarantine (AQSIQ), and the Ministry of
Agriculture (MoA) have the power to protect and register geographical
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indications. The aforesaid three government agencies, however, supervise and

protect GIs from different aspects or directions. SAIC and TMO protect GIs as
trademark right; AQSIQ aims to certify the quality of production process and
related production standards by means of registration of GIs; MoA focuses on the
protection of primary agricultural products.
For further information, China, being a member of many international treaties on
intellectual property, such as the Paris Convention, TRIPS, etc., is not a member
of the Lisbon Agreement.
This author would herewith briefly introduce the registration/certification
mechanism and protection system provided by the aforementioned three
governmental agencies in China.
SAIC/TMO
China (SAIC/TMO) has started to protect geographical indications since the
accession to the Paris Convention on the Protection of Industrial Property in
March 1985.
In 1987 and in 1989, SAIC for the first time protected the legitimate rights and
interests of appellations of original such as "Danish Butter Cookies", etc. by means
of two executive orders. In December 1994, SAIC issued the "Measures for the
Registration and Administration of Collective Marks and Certification Marks",
where GIs could be protected as certification marks henceforth. The Measures
came into force as of March 1, 1995, and 3 foreign GIs were accepted as
certification marks. On the second revision of the Trademark Law in 2001, new
provisions regarding the protection of GIs as collective or certification marks were
added to the law. In 2003, SAIC issued new "Measures for the Registration and
Administration of Collective Marks and Certification Marks", which reinforced
and strengthened the protection of GIs in China.
Many foreign GI right owners have started to register their GIs with China
Trademark Office (TMO) as certification marks or collective marks. Among them,
in 2013, Conseil Interprofessionnel du Vin de Bordeaux of France filed
certification mark applications for 53 wine related GIs with TMO.
By the end of 2015, China (TMO) has approved registration of a total of 2984 GIs,
including 83 foreign GIs. Domestically, the largest number of registered GIs of the
5 provinces were Shandong (425), Fujian (272), Hubei (249), Jiangsu (215),
Chongqing (201). Of the 83 foreign GIs, the largest number of filing was from
France with a total of 33, followed by Italy (18 filings) and the United States (14
filings).
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To register a GI with TMO, the applicant shall apply for registration of a

certification/collective mark furnishing the following documentation:
1. Application for Trademark Registration (Where an agency/attorney is entrusted,
a Power of Attorney is required);
2. Copy of Certificate of Legal Identity (stamped or sealed by the applicant);
3. Document issued by the local government or competent department of the local
government that authorizes the applicant to register and supervise the GI;
4. Documents and/or materials evidencing the existence and reputation of the GI
goods/produce, (including but not limited to the official county historical records,
agricultural product records, or produce annals) and with the official stamp sealed
by the organ that issues the same;
5. Relevant documents and materials regarding geographical areas and borderlines
of the GI;
6. GI administration rules for using the certification/collective mark;
7. Specification/explanation on the facts that the GI products have a specific
geographical origin and possess qualities or a reputation that are due to that
geographical environment or human factors;
8. Proof of materials that shows the applicant is capable or has the ability in the
supervision and inspection of the GI.
9. Foreign GI applicant is required to furnish with proofs that the GI has been
registered/protected by the country of origin.
For more detailed information on the requirement of filing, please refer to TMO
website. [4]
The Trademark Office (TMO) of SAIC is responsible for the examination on the
application for certification marks and collective marks whether the application is
for a GI or not. During the substantive examination process, because of the
uniqueness of a collective or certification mark, especially a GI, the absolute
ground for refusal is substantially alleviated; but the relative ground of refusal,
namely search on prior similar trademark application or registration, is consistent
in ordinary trademarks, which means a prior similar trademark will hinder the
registration of a certification/collective mark, and vice versa.
However, the court may have a different view on whether two marks are similar to
each other when a GI certification/collective mark is involved in the judicial
review on the grant and validation of a trademark. According to Beijing High
People’s Court [5], such claim is not to be supported if any party claims that a GI,
in the nature of a certification/collective mark, should not be granted because of
the existence the claimant’s prior similar ordinary trademark, whether its ordinary
trademark is famous or not; similarly, such claim is not to be supported if any
party claims that an ordinary trademark should not be granted because of the
existence of the claimant’s prior GI. [6] The court appears to regard GI, in the
nature of certification/collective mark as a different type of mark from ordinary
trademark.
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In the case of an infringement of the trademark right of a GI that has been

registered as a collective mark or a certification mark, the right owner may file a
complaint with SAIC or its national branch offices (local AIC) or seek judicial
protection with the court in accordance with the relevant provisions of the
Trademark Law.
AQSIQ
In August, 1999, the Administration of Entry-Exit Inspection and Quarantine (later
incorporated into AQSIQ) issued "Regulations on the Protection of Appellations
of Origin Products". Anyone who intended to seek AQSIQ protection of its GI or
to use the AQSIQ Symbol of Appellation of Origin should obtain
registration/approval of the GI with AQSIQ in accordance with the said
regulations. In 2005, AQSIQ issued new "Regulations on the Protection of GI
products", which abolished the previous Regulations of 1999.
In light of the successful experience on international cooperation to protect GIs,
AQSIQ issued the "Measures on the Protection of Foreign GI Products" on March
28, 2016, to ensure that foreign GIs and the domestic GIs get equal protection in
the territory of China. [7]
Up to 2016, a total of 1992 geographical indications have been approved by the
AQSIQ, including 16 foreign GIs.
Ministry of Agriculture (MoA)
In December 2007, the MoA began to carry out the certification of GIs. The MoA
issued "Administrative Measures of GIs of Agricultural Products" (hereinafter
referred to as the "measures") and is responsible for the registration of GIs of
agricultural products. In particular, the Agri-product Quality Safety Center of
MoA is responsible for the work of examination and review. [8] [9]
In the "measures" issued by the MoA, GI refers to the mark where the agricultural
products are from a specific region where the product quality and relevant features
mainly depends on the natural ecological environment and historical and cultural
factors of the region. Agricultural products as said in the "measures" refer to the
primary products derived from agriculture, namely, plants, animals,
microorganisms and their products obtained from agricultural activities. [9]
General Comments
China enjoys a vast territory with abundant resources and long cultural history,
hence the need to establish an effective mechanism or system to protect
geographical indications. In terms of administrative registration/certification of
GIs, three governmental agencies have their respective administrative processes.
The goal for establishing such administrative system is to prevent from unjustified
use of GIs and to rapidly and effectively protect GIs. However, this multiple
system sometimes let businesses and enterprises at loss, leading GIs protection and
certification into an embarrassing position. Not many business or enterprises can
tell the differences among these registration or certification systems; different
parties or even competitors register identical GIs with different administration
system and thus cause conflicts. [10] It appears that this multiple system tends to
cause unnecessary conflicts and misunderstanding and that it is not helpful to the
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improvement of administrative efficiency of governmental agencies in China.

Geographical Indication, according to Beijing High People’s court, is a private
right, thus, it is not suitable for government agencies to intervene too much on the
protection of GI by means of administrative measures. [11]
China's trademark administrative protection system (SAIC) and judicial protection
system being quite complete and mature, it is this author's opinion that GI
registration should adhere to the Trademark Law protection system, namely, under
the norm of certification/collective mark registration, and that GI protection should
also adhere to the Trademark Law system by way of protection by SAIC system
and judicial protection from the court. This hopefully can reduce unnecessary
administrative costs and maximize the efficiency of the administrative organ, and
also can give GIs with a powerful and effective judicial protection.

[1] http://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[2] http://www.wipo.int/treaties/en/registration/lisbon/summary_lisbon.html
[3] https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm
[4] See TMO
website http://sbj.saic.gov.cn/sbsq/sqzn/201404/t20140430_144505.html
[5] Beijing High People’s Court is the court of second instance/court of appeal for
all trademark registration/granting related administrative cases in China.
[6] Page 171, “Judicial Review on the Grant and Validation of Trademarks”
Editor: Chen Jinchuan, Beijing High People’s Court 2014
[7] http://kjs.aqsiq.gov.cn/dlbzcpbhwz/zcfg/zxzcxx/201604/t20160413_464279.ht
m
[8] http://www.jgj.moa.gov.cn/jieshao/zhineng/201006/t20100606_1532739.htm
[9] http://www.aqsc.agri.cn/ncpdlbz/djcx/201107/t20110725_80696.htm
[10] http://news.sina.com.cn/o/2012-10-11/155925338544.shtml
[11] Page 163, “Judicial Review on the Grant and Validation of Trademarks”
Editor: Chen Jinchuan, Beijing High People’s Court 2014