Text/ Cai Wei Fujian Provincial High People's Court
The trademark rights protection incident of "Tongguan Meat Sandwich Bun" is a hot topic in intellectual property rights recently. The causes of this rights protection incident and the process of rights protection have been introduced on the Internet with a lot of information, and will not be repeated. Everyone has different views on the motives and methods of rights holders to safeguard their rights. The author believes that for legally registered trademarks, there is nothing wrong with the right holder initiating a lawsuit to protect the rights of the right holder for acts that may constitute infringement in the market, but the fundamental reason why this rights protection incident will arouse the attention and extensive discussion of the public lies in the perception of the public that the combination of "geographical names + trade names" is only a combination of public elements, but it can apply for a registered trademark and then interfere with the use of others, which seems to be a monopoly of public resources. Therefore, it is necessary to make some introductions and analyses on the attributes of the rights of geographical indications, some characteristics of geographical indication trademarks that distinguish them from ordinary trademarks, and the examination and determination of legitimate use in trademark rights protection litigation involving geographical indications.
1. Relevant concepts and modes of protection of geographical indications
1. The concept of geographical indications.
A geographical indication is a special identifier that was first protected in the Paris Convention with respect to appellations of origin, and later to the Lisbon Agreement for the Protection of Appellations of Origin and the International Registration. In 1994, it was officially written into the TRIPS Agreement, and when China joined the WTO in 2001, it was also written into Article 16 of the Trademark Law, and the definition thereof basically came from the TRIPS Agreement. Geographical indications are the gradual development of "appellations of origin". It is inherently a private right, like other types of IP rights. Although its user cannot be an enterprise or individual in a certain region, the expansion of the scope of the main body of use has not changed the private nature of geographical indications.
Article 16 of the Trademark Law stipulates: "A geographical indication is a sign indicating that a certain product originates from a certain region, and the specific quality, reputation or other characteristics of the goods are mainly determined by the natural factors or human factors in the area." ”
Article 2 of the Provisions on the Protection of Geographical Indication Products promulgated by the former General Administration of Quality Supervision, Inspection and Quarantine stipulates that the geographical indication products referred to in these Provisions refer to products produced in a specific region, and the quality, reputation or other characteristics of the products inherently depend on the natural and human factors of the place of origin, and are named after geographical names after review and approval. Geographical indication products include: (1) plantation and aquaculture products from the region. (b) raw materials are all from the region or partly from other regions, and in this region in accordance with the specific process of production and processing of products.
The "Detailed Rules for the Protection of Geographical Indication Products" further clarifies: the following products can be approved as geographical indication protection products by application: (1) products planted and farmed in a specific area, which determine the special quality, characteristics and reputation of the product are mainly local natural factors; (2) in the place of origin of the product using a specific process of production and processing, raw materials are all from the place of origin of the product, the local natural environment and the specific process used to produce the product In the human factors determine the special quality, characteristic quality and reputation of the product ;(3) In the place of origin of the product using a specific process of production and processing, raw materials partly from other regions, the natural environment of the product origin and the specific process used in the production of the product in the human factors determine the special quality, characteristic quality and reputation of the product.
2. The difference between geographical indications and ordinary trademarks.
Judging from the above-mentioned laws and regulations, there are three distinctive characteristics of geographical indications distinguishing ordinary registered trademarks:
First, because a geographical indication indicates a commodity originating from a particular appellation and possessing a specific quality, reputation or characteristics, its indication of the source of the commodity points more to that particular appellation than to the specific provider of the commodity it marks. Therefore, the function of indicating the source of production embodied in a geographical indication is not equivalent to that of an ordinary trademark;
Second, geographical indications cannot be used exclusively by individuals, but trademarks can be registered exclusively;
Third, geographical indications may not be transferred or used. Taking "Tongguan Meat Sandwich Bun" as an example, as a geographical indication registered as a collective trademark, its registrant obviously does not have the right to license the use of the collective trademark of the geographical indication to merchants outside the specific area of Tongguan and collect a franchise fee.
3. Evolution of patterns in the protection of geographical indications.
Previously, there were two departments and two models of protection for the protection of geographical indications in China, namely, the protection of trademarks of the industrial and commercial departments and the protection of geographical indication products and appellations of origin of the quality inspection departments. In fact, there is also the protection model of geographical indications of agricultural products of the Ministry of Agriculture (the former Ministry of Agriculture was responsible for the examination and registration of geographical indications of agricultural products in accordance with the Measures for the Administration of Geographical Indications of Agricultural Products).
Before the institutional reform, enterprises and industry associations were confused about the operation of the two models: whether the established certification trademarks must be registered with the Quality Supervision and Inspection Bureau to be valid? Is a product with an element of origin registered as a certification mark or is it declared for protection as a geographical indication product? What are the differences in the protective effects arising from different registration procedures? The Jinhua Ham case and the Dong'e Ejiao case directly reflect the conflict between the two systems of trademark and geographical indication product protection. The contradiction between the two is, in essence, caused by the coexistence of the trademark law protection model and the special law protection model in a country.
After the institutional reform, the management of the registration of geographical indication trademarks and the examination and approval of geographical indication protection products were transferred to the State Intellectual Property Office. However, the Ministry of Agriculture and Rural Affairs is still responsible for the examination and approval management of geographical indications of agricultural products. Taking agricultural products as an example, an agricultural product can be registered as a collective trademark or certification trademark of geographical indications through the State Intellectual Property Office (the trademark registration certificate of the geographical indication certification trademark is the same as the ordinary trademark registration certificate, but it will be marked as a geographical indication certification trademark), which is the main way for the protection of geographical indications in China, and can also be declared as a geographical indication protection product through the State Intellectual Property Office. It can also be registered as a geographical indication for agricultural products by the Ministry of Agriculture and Rural Affairs.
4. Geographical indications protect the registration and use of products and geographical indication trademarks.
Article 8 of the Provisions on the Protection of Geographical Indication Products stipulates: "An application for the protection of geographical indication products shall be submitted by the application institution designated by the local people's government at or above the county level or by the association and enterprise recognized by the people's government, and the opinions of relevant departments shall be solicited." ”
Article 20 stipulates: "Producers within the scope of origin of geographical indication products who use special signs for geographical indication products shall submit an application to the local Bureau of Quality and Technical Supervision or the Entry-Exit Inspection and Quarantine Bureau and submit relevant information." After the above-mentioned application is examined and approved by the Provincial Bureau of Quality and Technical Supervision or the Entry-Exit Inspection and Quarantine Bureau directly under it, and after the General Administration of Quality Supervision, Inspection and Quarantine of the People's Republic of China has examined the qualified registration, an announcement is issued, and the producer can use the special mark for geographical indication products on its products and obtain the protection of geographical indication products. ”
After the institutional reform, applications for the use of special indications for geographical indication products should also be examined and approved by the State Intellectual Property Office. The specific provisions are in accordance with the Administrative Measures for the Use of Indications for The Exclusive Use of Geographical Indications (for Trial Implementation) issued by the State Intellectual Property Office. The Measures stipulate: "The special indication of geographical indications referred to in these Measures is an official sign established by the State Intellectual Property Office to indicate that the geographical indication of the product using the special indication has been registered and approved by the State Intellectual Property Office. Geographical indications as used in these Measures include geographical indications protecting products and geographical indications as collective trademarks and certification marks. That is to say, whether it is a product protected by a geographical indication, or as a collective trademark or a certification mark, the use of a special sign will use the same pattern in the future, but slightly different. According to the regulations, the new GI product logo was replaced in 2019 and the old logo was used until the end of 2020.
Article 4 of the Regulations for the Implementation of the Trademark Law stipulates: "Geographical indications provided for in Article 16 of the Trademark Law may be registered as certification marks or collective marks in accordance with the provisions of the Trademark Law and these Regulations." "The Measures for the Registration and Administration of Collective Trademarks and Certification Marks issued by the former State Administration for Industry and Commerce make specific provisions on the procedures and management of the registration of geographical indications. In practice, geographical indications are mostly registered as certification marks, because the certification marks can reflect the quality of the goods. The registrant of a geographical indication trademark shall be a local group, association or other organization that is not for profit, generally a social group legal person or a public institution legal person, and its business scope is related to the geographical indication products supervised and used. For example, the registrant of "Turpan Grapes" is the "Turpan Regional Grape Industry Association", and the registrant of "Tongguan Meat Sandwich Buns" is "Tongguan Meat Sandwich Bun Association". The applicant for a geographical indication must be authorized by the people's government at or above the county level or the competent department of industry in the area indicated by the geographical indication to apply for registration and supervise and manage the geographical indication. A group, association or other organization applying for the registration of a collective mark of a geographical indication shall be composed of members from within the regional limits indicated by the geographical indication. Article 4 of the Regulations for the Implementation of the Trademark Law clearly stipulates the subject of the use of a geographical indication trademark, which stipulates: "Where a geographical indication is registered as a certification trademark, a natural person, legal person or other organization whose goods meet the conditions for the use of the geographical indication may request the use of the certification mark, and the organization controlling the certification trademark shall allow it." Where a geographical indication is registered as a collective trademark, a natural person, legal person or other organization whose goods meet the conditions for the use of the geographical indication may request to participate in the registration of the geographical indication as a collective trademark, and the group, association or other organization shall be admitted as a member in accordance with its articles of association;"
The new special logos for "geographical indication trademarks" and "geographical indication protection products" are shown in the following figure:
2. Examination of the protection of geographical indication trademarks and the defence of legitimate use
If a geographical indication certification trademark or a collective trademark is infringed, the subject of the right can naturally safeguard its legitimate rights and interests by filing a trademark infringement lawsuit in accordance with law. However, if the geographical indication is not a registered trademark, but only declares the product protected by the geographical indication, and others imitate the special indication of the geographical indication, the market supervision and management department may carry out administrative handling of the counterfeiting in accordance with the Provisions on the Protection of Geographical Indication Products. In practice, it is disputed that if a geographical indication is not registered as a trademark, can the administrator of the geographical indication still seek civil damages. If, in accordance with the relevant provisions of the Trademark Law, an unregistered trademark, in addition to an unregistered well-known trademark, can only claim a negative right of defense in the case of an prior right, but does not enjoy a positive interest. However, there have been prior judicial precedents that "the protection of geographical indications does not presuppose registration as a collective mark or certification mark". For example, in the case of the Champagne Industry Committee v. Shengyan Yimei Company in the dispute over trademark infringement heard by the Beijing First Intermediate People's Court, the court held that "considering that the unregistered geographical indications and unregistered well-known trademarks bear and embody the objective facts that are gradually formed in the process of commodity circulation and recognized by the relevant public in the market, the legal protection that the two should enjoy should also be the same, so according to the principle of consistency of legal interpretation, unregistered geographical indications can also refer to the protection method of unregistered well-known trademarks, in accordance with the Trademark Law. Article 16: Civil remedies are sought. ”[1]
In general trademark infringement litigation, the basic logic of the adjudication is four: first, to examine whether the trademark claimed by the right holder is legal and valid; second, whether the alleged infringing mark is used on the same or similar goods approved for registration with the right trademark; third, to compare whether the right trademark and the alleged infringing mark constitute the same or similar, and in the case of similarity, it is necessary to judge whether it may cause confusion and misunderstanding among the relevant public; fourth, if the defendant defends that the right-use claim is not infringing, examine whether its reasons are established. In the handling of trademark infringement lawsuits involving geographical indications, the most focused dispute basically falls on the issue of "whether it constitutes legitimate use (or fair use)", which is also a difficult point in the trial of trademark disputes involving geographical indications.
One view was that any entity that was not a member of the registrant's collective (in the case of registration as a collective mark) or used without the registrant's permission (in the case of registration as a certification mark) would constitute infringement rather than "proper use" if it used the gigapitous text call of the geographical indication in its production and business activities. Another view is that geographical indications are collectively owned intellectual property rights of the regions indicated, which have a certain degree of public welfare, and the rights of the registrant of geographical indication trademarks are restricted. If a registered GI trademark consists only of "place of origin + generic name of the product", then the distinctiveness of this structure as a trademark is relatively weak. Subjects that are not members of the registrant collective or are used without the permission of the registrant, even if this particular text call is used in its entirety in production and business activities, as long as its goods meet the conditions for using the geographical indication trademark, it is "proper use" and is not infringing.
Article 59 of the Trademark Law stipulates: "The exclusive owner of the registered trademark shall not have the right to prohibit the proper use of the generic name, graphic or model of the goods contained in the registered trademark, or directly indicating the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods, or the geographical names contained therein." ”
This is a general provision of the Trademark Act on fair use. The same applies to the treatment of geographical indication marks. However, based on the unique nature of geographical indication trademarks, there are still many differences in judicial practice on the issue of judging and determining whether fair use is constituted in individual cases.
Article 4 of the Implementing Regulations of the Trademark Law stipulates: "A group, association or other organization that does not require participation in the registration of the geographical indication as a collective trademark may also use the geographical indication properly, and the group, association or other organization has no right to prohibit it." ”
Article 18 of the Measures for the Administration of the Registration and Administration of Collective Trademarks and Certification Marks stipulates: "The proper use of geographical indications in the second paragraph of Article 6 of the Implementing Regulations refers to the proper use of geographical names in geographical indications.
The following is a look at the court's criteria for dealing with such issues in the light of some specific cases:
Case 1: In a trademark dispute over geographical indications[2] heard by the Chaoyang Court in Beijing, the court held that the defendant used "West Lake Longjing" on the tea gift box it sold, but if the tea did come from the West Lake Longjing Tea Protection Base, the plaintiff Longjing Tea Association could not deprive it of its right to use "West Lake Longjing" on the tea gift box to identify the origin of the goods. The evidence submitted by the defendant can preliminarily prove that the tea involved in the case sold by the defendant comes from the West Lake Longjing Tea Protection Base. Therefore, the defendant's use has reasonable grounds and will not cause the relevant public to misunderstand, so it does not constitute infringement.
Case 2: In a case of trademark infringement of geographical indications in West Lake Longjing, which was also heard by the Guangzhou Intellectual Property Court, the court of second instance held that "the defendant's infringement of the trademark right of geographical indications in this case was manifested in the use of a trademark similar to the "West Lake Longjing" geographical indication certification trademark of the "West Lake Longjing" geographical indication certification trademark in which the Longjing Tea Association enjoyed the trademark right on the packaging of the allegedly infringing products it manufactured and sold. Even if the source of the tea claimed by the defendant is true, it does not have the right to use the same or similar certification mark as "West Lake Longjing" without the permission of the right holder. ”
From the adjudication point of view of the above two cases, it is clear that the Guangzhou Intellectual Property Court's determination of the reasonable use of geographical indications is stricter than that of the Chaoyang Court in Beijing, which clearly pointed out that the use of geographical indications without the permission of the right holder of the geographical indications, even if the real origin of the products involved in the case originated from the area protected by the geographical indications, its use was not legitimate and legal.
Case 3: The Beijing Higher People's Court heard a trademark infringement dispute between the Zhoushan Aquatic Products Circulation and Processing Industry Association of Zhejiang Province and Beijing Shenma Ren Food Sales Co., Ltd.[3], which was rated by the Supreme Court as one of the 50 typical INTELLECTUAL property cases in 2012. The court of first instance in this case held that the defendant's labeling of the "Zhoushan Selected Striped Fish Segment" on the striped fish originating in the Zhoushan sea area was a legitimate use of the geographical indication and did not infringe the plaintiff's trademark rights, and the evidence provided by the defendant could preliminarily prove that the origin of the striped fish produced and sold by the company was Zhoushan, and the plaintiff, as the registrant of the certification trademark, belonged to an organization with the ability to supervise the goods, and should provide evidence to prove whether a certain striped fish product belonged to the striped fish in the Zhoushan sea area, otherwise it should bear the burden of proof. The court of second instance held that although the defendant did not request the plaintiff to use the trademark in question, if the fish-bearing goods it produced and sold were indeed produced in the waters of Zhoushan, Zhejiang Province, the plaintiff could not deprive it of the right to use "Zhoushan" to identify the origin of the goods on the fish-carrying goods, including the labeling of its goods in the manner in this case, the "Zhoushan Selected Fish Segment". In this case, the defendant, as the producer of the goods involved in the case, bore the burden of proof as to whether the goods involved in the case had arisen in the sea area of Zhoushan, Zhejiang Province. The evidence provided by the defendant could not prove that the products involved in the case came from Zhoushan and should bear tort liability. Although the judgment results of the first instance and the second instance of this case are different, there are two points that the first and second instance courts have the same view: first, if the fish strip really comes from Zhoushan, it does not constitute infringement; second, the above facts need to be proved by evidence.
Case 4: The Aksu Regional Apple Association and Xining North Xingmin Vegetable and Fruit Commercial Company heard by the Xining Intermediate People's Court over trademark infringement [4]. The case was rated by the Supreme Court as one of the 50 typical IP cases in Chinese courts in 2020. In this case, the court held that "the trademark involved in this case is a geographical indication certification trademark, that is, it proves that the apple is produced in the Aksu region of the Xinjiang Uygur Autonomous Region, and the specific quality of the goods is mainly determined by the natural factors in the Aksu region." Although Xingmin Commercial Bank did not request the use of the certification trademark to the Aksu Regional Apple Association, the Aksu Regional Apple Association, as the registrant of the trademark, could not deprive natural persons, legal persons or other organizations of the goods that were indeed produced in the Aksu Region of the right to use the place names in the certification trademarks. The Aksu Regional Apple Association has the right to prohibit the trademark marked on the goods by natural persons, legal persons or other organizations that are not produced in the Aksu region and to pursue their responsibility for infringement of the right to prove the trademark in accordance with the law. In this case, the apples sold by Xingmin Trading Company were indeed produced in the Aksu region, so the Aksu Regional Apple Association could not deprive the apples sold by Xingmin Trading Company of the right to identify the origin of apples with "Aksu apples" and "Aksu". The court also held that "the Aksu Regional Apple Association should have the ability to distinguish whether the apples produced in the Aksu region meet the specific quality of the geographical indication, and it has neither expressed an opinion nor submitted evidence on whether the apples sold by Xingmin Trading Company do not have the specific quality of Aksu apples." Therefore, its appeal that the geographical indication certification mark has both the protection of the origin and quality characteristics, and if the user's product does not meet the product characteristics of the geographical indication, the use of the product should be prohibited even if the product is the true source of the geographical indication", the court did not accept it".
The difference in the identification criteria in the above cases actually reflects a special problem of the proper use of geographical indications, that is, in addition to satisfying the conditions of indeed originating from the geographical indication production area, the goods do not need to consider other conditions before they can be used. It has been argued that "because the actual place of origin of the commodity is consistent with the geographical indication production area, and whether the use of non-members of the geographical indication association is approved by the right holder of the geographical indication, the scope of the right to prohibit geographical indications is clearly demarcated in form, but in essence, the connotation of geographical indication protection is the specific quality, reputation and performance of the specific commodity formed by the special natural, human, climatic and other factors." The criteria for the fair use of geographical indications not only require whether the products involved in the case originate from the origin of the geographical indication products and whether they are licensed by the right holder of the geographical indications, but also consider whether the goods involved in the case materially meet the characteristics required by the geographical indication products, and only if the standards of the geographical indication products are met in both form and substance can it be determined that the fair use of geographical indications can be determined. Even if it comes from the scope of protection of the geographical indication product, but does not meet the requirements of the geographical indication product in essence, it should fall within the scope of the geographical indication trademark prohibition right and not have the legitimacy of use. Therefore, although geographical indications do not have exclusiveness over geographical names, geographical indications protect the public interests of society, and according to the principle of balance of interests and the principle of good faith, although non-members of geographical indication commodity production areas have the right to indicate the place of origin on the packaging of goods, the use of the name of origin should be out of good faith, and they should fulfill reasonable duty of care and avoidance to ensure the unique quality and reputation of geographical indication products." [5] The author agrees with the above views. That is to say, in the examination of the proper use of geographical indication trademarks, two principles should be adhered to: first, natural persons, legal persons or other organizations whose goods are indeed produced in a specific area of the geographical indication, although they have not joined a specific association or applied for the use of a certification trademark, still enjoy the right to properly use the geographical name in the geographical indication trademark; second, the goods involved in the case should in essence conform to the characteristics required by the geographical indication product. The author believes that the above-mentioned handling standards not only protect the legitimate rights and interests of the registrant of a geographical indication trademark and the majority of business entities with legitimate reasons for using the trademark, but also take into account the legitimate rights and interests of other business operators who have not applied for the use of the geographical indication trademark. Of course, there is one more question that cannot be avoided. That is, if there is a substantive review, the difficulty lies in how to review. Who bears the burden of proof that the quality of the goods is up to the level of a geographical indication product? Whether or not the unique criteria are met is determined by who will continue to study in practice.
In terms of the allocation of the burden of proof, the court of first and second instance in the "Zhoushan Fish Belt Case" held a different opinion: the first instance held that on the premise that the defendant could provide prima facie evidence, the plaintiff, as the holder of the certification trademark, should provide evidence to prove whether a certain fish product belonged to the zhoushan sea area, while the second instance held that the burden of proof of this fact was all the defendant's and did not need to be assigned to the plaintiff. In the Aksu Apple case, the Court of Second Instance held that the management association as a gigifying mark for geographical indications should be able to discern whether an apple produced in the Aksu region had the specific quality that the geographical indication should have. From the supreme court's publication of this case as a typical case, it is not known whether it can explain the way in which the supreme court prefers the allocation of the burden of proof for second-instance judgments.
Whether it is the "Runaway Town" or the "Tongguan Meat Sandwich Bun" trademark rights protection incident, the practical circles, the theoretical circles, the rights defenders, the respondents, or the public, everyone has different positions and judgments. However, as a referee, I think we should still base ourselves on the provisions of the law, and make some serious analysis and reflection from the original intention of the legislation and the fairness and orientation of the adjudication, which is the right way.
Resources
[1] See (2012) A Zhongmin Chuzi No. 1855 Civil Judgment.
[2] See (2015) Chaomin (知) Chuzi No. 33892 Civil Judgment.
[3] See (2012) Gao Min Zhong Zi No. 58 Civil Judgment.
[4] See (2020) Qing 01 Zhi Min Chu No. 40 Civil Judgment.
[5] Refer to "Analysis on the Determination of the Proper Use of Geographical Indication Certification Trademarks", Ma Tengfei, in Wanhuida Intellectual Property Rights.
[6] Image source: Public account "Geographical Indications Service Geng Zhaozhu"
(This article is authorized to be published, only represents the author's views, and may not be reproduced without permission)