Longjing Tea (龙井茶), sometimes called by its literal translated name Dragon Well Tea, is a variety of
pan-roasted green tea from the area of Longjing Village in Hangzhou City, Zhejiang Province. Longjing
Tea is one of the top ten most famous teas in China.
Especially, “Longjing Tea” is a Geographical Indication
Certification Mark (“GI Certification Mark”) registered in
China by Zhejiang Agricultural Technology Extension
Center, with the registration No.5612284 covering “tea”
(Class 30), valid from Dec. 7, 2008 to Dec. 06, 2028.
On September 19, 2021, Shanghai Pudong New Area Court
held a public hearing on the case of TWG Tea (Shanghai)
Co., Ltd. (“plaintiff”) vs Pudong New Area Intellectual
P ro p e r t y O f f i ce / P u d o n g N e w A rea G ove r n m e n t
(“defendants”) for administrative penalty, and ruled in
court that the plaintiff's claim was dismissed [(2021) HU
0115 XING CHU No.399]. The infringement is confirmed and
so is the penalty.
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Administrative Penalty: TWG was fined RMB 545,000 for
selling “Longjing Tea” without authorization. TWG Tea
(Shanghai) Co., Ltd. (“TWG Shanghai”) is a subsidiary of
Tea brand TWG.
In November 2019, officers from Pudong New Area
Intellectual Property Office went to TWG store at Century
Avenue and found 11 boxes of “Shengxi Longjing Tea” and
5 boxes of “Longjing Tea” on sales. The officers seized the
above-mentioned goods on site.
Later in March 2020, the officers visited the warehouse of
TWG Shanghai located at Pudong New Area and seized
1129 boxes of “Longjing tea” and 178 boxes of “Shengxi
Longjing tea”.
Through further investigation, the officers also founded
TWG Shanghai imported tea from Singapore three times
from July 2018 to July 2019, and commissioned a certain
trading company located in Shanghai to deal with the
relevant import procedures. As required by TWG Shanghai,
the trading company produced the Chinese labels and
distinctively demonstrated Chinese characters “Longjing
Tea ( 龙井茶 )” and “Shengxi Longjing Tea ( 盛玺龙井茶 )”, as
well as attached them to the tea packaging of 2496 boxes,
which was then transferred to the warehouse and sold by
TWG Shanghai.
As above stated, “Longjing
Tea” is a GI Certification Mark,
which has its usage rules and
represents a specific place of
origin and quality.
According to Article 4 of
Implementing Regulations
of Chinese Trademark Law,
“ W h e r e a G e o g r a p h i c a l
Indication is registered as a certification mark, the
natural person, legal person or other organization whose
commodities meet the conditions for use of the said
geographical indicator may request authorization to use the
certification mark, and the organization that controls the
certification mark in question shall consent”.
According to Zhejiang Agricultural Technology Promotion
Center which is the right holder of “Longjing Tea” GI
Certification Mark, TWG Shanghai did not obtain the
authorization from them to use “Longjing Tea” GI
Certification Mark.
Such trademark use behavior by TWG Shanghai has
constituted trademark infringement against “Longjing Tea”
GI Certification Mark.
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On November 2, 2020, Pudong New Area Intellectual
Property Office issued an administrative penalty against
TWG Shanghai, ordering the same to immediately stop
the infringement against “Longjing Tea” GI Certification
Mark, confiscated a total of 1,422 boxes of its unsold tea
in question and imposed a fine of RMB 545,000.
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TWG Shanghai was not satisfied and applied for the
administrative reconsideration, while it was not supported
by the Pudong New Area Government. The company
appealed and filed the administrative lawsuit before
Shanghai Pudong New Area Court accordingly.
Court: TWG Shanghai constituted Trademark
Infringement against GI Certification Mark
After examination, Shanghai Pudong New Area Court
dismissed the request from TWG Shanghai and maintained
the previous administrative penalty issued by Pudong
New Area Intellectual Property Office. The key issues in the
Court are summarized as below:
☕Firstly, the Court confirmed Longjing Tea has
high reputation in China and its specific quality
is mainly determined by the natural factors, harvesting
conditions and production process of its producing
areas.
☕The plaintiff TWG Shanghai attached the Chinese
label to the imported tea box, and indicated the
product name as “Shengxi Longjing Tea ( 盛熙龙井茶 )"
and “Longjing Tea ( 龙井茶 )" on such package. This kind
of using behavior constituted trademark use.
☕The plaintiff did not obtain the authorization from
the right owner of “Longjing Tea", and cannot
prove that the tea involved in the case was derived from
the area where Long jing Tea was grown and had
corresponding specific qualities based on the existing
evidence.
Therefore, according to Article 57 of Trademark Law,
(which states that “Using a trademark that is similar
to a registered trademark on the same goods, or
using a trademark that is identical with or similar to a
registered trademark on similar goods, which may be
easily confusing, without the licensing of the trademark
registrant”), the plaintiff’s behavior constitutes an
infringement of the exclusive right to use a registered
trademark
☕The plaintiff deems the label was attached before
its entry to the Free Trade Zone which enjoy
special position, thus it cannot be directly governed
under Chinese Trademark Law. The Court deem due to
the particularity of Customs policies in the Free Trade
Zone, the procedures for entering are indeed more
convenient.
However, trademark infringements generated in the Free
Trade Zone cannot be ruled out from the application of
Chinese Law. Moreover, the goods involved in the case
have entered and been sold in China, which still need to
be regulated under Chinese Law as well.
☕ In addition, the Court deem the plaintiff’s illegal
act does not constitute a condition for lightening,
mitigating or exempting administrative penalty.
According to Article 60 of Trademark Law,
“Where the foresaid infringement is confirmed, the
administrative department for industry and commerce
shall order the infringer to cease such infringement,
confiscate and destroy the infringing goods and tools
used in producing such goods or forging logos of the
registered trademark.
In the event of illegal business revenue of over RMB
50,000, a fine up to five times of the revenue may be
imposed; in the event of no illegal business revenue
or illegal business revenue of less than RMB 50,000, a
fine up to RMB 250,000 may be imposed”.
Pudong New Area Intellectual Property Office made a
penalty decision of confiscating the infringing products
and imposing twice of the illegal business amount, which
is in compliance with the law.
Be careful for the possible Trademark
Infringement over GI Certification Mark
Generally speaking, the judgment of trademark
infringement against GI Certification Mark could obey
the same standard of ordinary trademark as stipulated in
Article 57 of Trademark Law.
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However, the judgement of “confusion” shall have a
certain difference due to the different identification
function. In the case of ordinary trademark infringement,
the “confusion” refers to the provider of goods or
services, while in the case of GI Certification Marks, the
“confusion” refers to the producing area of goods and
related quality characteristics.
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The above-mentioned case serves as a warning to the
companies. When importing the goods and making
corresponding Chinese labels, it is better to make a
trademark clearance to analyze the possible risks.
At the same time, for GI Certification Mark owner, it is
feasible and favorable to clean up the infringement
activities in the market through possible actions, such as
administrative complaints, civil litigation etc.
Ariel Huang
Source: https://www.hfgip.com/news/imported-longjing-tea-infringed-gi-certification-mark
