Geographical Indications Explicitly Listed As A Prior Right Under Article 32 of China

In order to standardize the trademark examination and trial procedures and ensure the uniform application of laws and consistent implementation of standards in all aspects of trademark examination and trial, the China National Intellectual Property Administration ("CNIPA") has decided to formulate the Guideline for Trademark Examination and Trial ("Guideline").  The latest Guideline has come into effect from January 1, 2022.

In the previous edition of the Guideline, for prior rights described under Article 32 of China Trademark Law, they include 1) trade name right, 2) copyright, 3) industrial design right, 4) name right, 5) portrait right, 6) the unique name, package, or decoration of a famous commodity, and 7) other prior legal rights.

While in the current edition, the explicitly listed prior rights are 1) trade name right, 2) copyright, 3) industrial design right, 4) name right, 5) portrait right, 6) geographical indication, 7) the name, package, or decoration of a product with certain reputation, and 8) other prior legal rights.

Geographical indications are signs that identify the origin of a product in a certain region, and the quality and reputation of the product depend on the natural or human factors of this specific region.

According to the Guideline, where an application for registration of words, graphics, etc. that are identical or similar to those of an earlier geographical indication is likely to mislead the public and may cause damage to the interests of the holder of the prior geographical indication, the disputed trademark shall be rejected for registration or declared invalid.

The applicable requirements for citing prior geographical indication in possible opposition or invalidation actions are (1) when the disputed trademark is applied for registration, the geographical indication already objectively exists; (2) the registration and use of the disputed trademark is likely to mislead the public, resulting in possible damage to the legal rights and interests related to the prior geographical indication; (3) where a geographical indication has been applied for registration as a collective trademark or a certification mark at the time of application for registration of the disputed trademark, the relevant provisions on the protection of trademark rights shall be applied in protection of the geographical indication, the provisions of this chapter shall not be applied in this circumstance; (4) when a geographical indication of a product is contained within the disputed trademark, if the trademark has been approved for registration in good faith, even if the products do not come from the area indicated by the geographical indication, it will continue to be valid.

The prior geographical indications registered in China can be checked in the CNIPA's website.  In addition, The China-EU Geographical Indications Agreement which has officially come into effect on March 1, 2020 covers more than 500 geographical indication from both sides.

Source: TM Dep. Jane Chen-Kang Xin

Editor: IPR Daily-Selly