Recently published in the World Trademark Review, Susan Fan uncovers the effects of the EU-China Agreement on Geographical Indications.
Introduction
On 1 March 2021, the AGREEMENT BETWEEN THE GOVERNMENT OF THE PEOPLE'S REPUBLIC OF CHINA AND THE EUROPEAN UNION ON COOPERATION ON, AND PROTECTION OF, GEOGRAPHICAL INDICATIONS (“the EU-China GIs Agreement”) came into effect. The EU-China GIs Agreement protects around 200 iconic European and Chinese goods against imitation and misuse, recognizing 100 Geographical Indications (“GI”) each from the European Union and China, with a second batch to follow that will include an additional 175 GIs each from the EU and China within four years. Now in force, the EU-China GIs Agreement will further strengthen the trade and economic cooperation between the EU and China and benefit consumers and enterprises on both sides. This article will explore what geographical indications are, the effect of the EU-China GIs Agreement and how GIs are obtained and protected.
What are Geographical Indications?
The GI system is a special product quality control system and an intellectual property protection system adopted for famous, excellent, and special products with distinctive regional characteristics. The “origin” refers to the specific geographic region of a particular country where a special product is produced, the geographical features and cultural characteristics of the specific geographic region, such as the water, soil, climate, production history, etc., will directly determine or affect the quality, characteristics, or reputation of the product. Such special product is named after the specific geographic region, such as “Anji White Tea” from China or “Parma Ham” from Europe.
Effect of the EU-China GIs Agreement
Both the EU and China have numerous products that are protectable as GIs. For rights holders from the EU, the entry into force of the EU-China GIs Agreement offers an additional way to protect their specialty products.
For example, “Prosciutto di Parma”, also known as “Parma Ham”, is exclusively reserved to hams produced according to the strict rules defined by the Consorzio’s specifications and based in its place of origin, Parma of Italy. After the EU-China GIs Agreement, in addition to the protection afforded as a Protected Designation of Origin (“PDO”) in the European Community, the genuine Parma Ham shall also receive protection in China under the Agreement as an established GI in the EU.
Accordingly, for those products which do not come from Parma, or those that do not meet the conditions of Parma Ham, but are advertised as “Prosciutto di Parma” or even accompanied by expressions such as “kind", "type", "style", "imitation" or the like[1], seeking recourse afforded to GI in China shall be available, rather than relying solely on making complaints and enforcing rights under the grounds of false advertising or unfair competition.
Similar protection is also offered to rights holders of Chinese specialty products. Using “Anji White Tea” as an example, after its GI is protected in the European market, the GI cannot be used on such teas if they are not produced in accordance with the “Anji White Tea” GI rules. Moreover, the GIs listed in the EU-China GIs Agreement by China not only cover alcoholic beverages, tea, agricultural products, food, etc., but also products with Chinese characteristics, such as rice paper and Shu brocade, which represent traditional Chinese culture. This is the first time that the EU has included such GIs in its agreement. Previously, the EU’s agreements on GIs signed with foreign countries only cover agricultural products, food, and alcoholic beverages. It can be said that products with GIs not only help build unique brands and bring great economic benefits but also play a considerable role in the protection of the traditional cultural heritage of specific geographic regions.
How are GIs Obtained and Protected?
According to the statistics from the China National Intellectual Property Administration (“CNIPA”), in 2020, 10 applications for the protection of GI products were accepted, 6 GI products were approved, 1,052 enterprises were approved for using special marks of GIs, and 765 GI trademarks were approved for registration. As at the end of 2020, a total of 2,391 GI products were approved, 9,479 enterprises were approved for using special marks, and an accumulated number of 6,085 GI trademarks were registered. This means that the awareness and protection of GIs are constantly evolving. In the context of the EU-China GIs Agreement, how exactly can GIs in Europe or China be protected?
In order for a GI to receive protection in other territories, it must already be established. This means that the GI should be formally recognized in its home territory, such as a Protected Designation of Origin or a Protected Geographical Indication (“PGI”) in the EU, or as a recognized GI-protected-product in China.
However, for products that have yet to be recognised as GI products, it is still necessary for them to first obtain official recognition. For a product originating from Europe that wants GI protection but not yet covered by the EU-China GIs Agreement, it needs to apply for the registration of foreign GI with the State Administration for Market Regulation or the competent department of the Ministry of Agriculture in China, or to register the name of the GI as a Collective Trademark/Certification Trademark. In China, there are currently three government departments in charge of the registration and management of GIs. The Trademark Office of the CNIPA is responsible for registering and managing the GIs as Collective Trademarks or Certification Trademarks; the State Administration for Market Regulation and the Ministry of Agriculture are responsible for protecting and managing the GIs registered with them. It is worth mentioning that since the GIs registered with the Trademark Office of the CNIPA have legal status as trademarks, this kind of protection for GI products is much stronger and more easily enforced.
If a name of geographical indication is not a registered GI or protected as a Collective Trademark/Certification Trademark, does the rights holder have any recourse? The answer is “yes”. For example, in the case of Comité Interprofessionnel du Vin de Champagne v. Beijing Sheng Yan Yi Mei Trading Co., Ltd. regarding the infringement of the GI and unfair competition, the soft drink named “Seven Star Red Grape Champagne” sold by Beijing Sheng Yan Yi Mei Trading Co., Ltd. was prominently marked with the words “香槟 (Champagne in Chinese)” and “CHAMPAGNE”. Although at the time of the filing of the lawsuit, “Champagne” had not yet been registered as a GI product or a Collective Trademark/Certification Trademark in China, the court held that whether the GI has been registered as a Collective Trademark or Certification Trademark in China should not be a necessary condition for its legal protection in China. Given that the name “Champagne (香槟)” can serve as an indication of the specific origin of the product, it should be legally protected as a GI on sparkling wines in China. Therefore, the Chinese court supported the Plaintiff’s claim and prohibited the Defendant from using the GI of “Champagne”.
Nevertheless, to avoid the expense of court litigation, the most effective mechanism for protecting products of specific geographic origin would still be the registration system, that is, achieving legal certainty by obtaining recognition of GI products from the Chinese authorities. In addition, it is possible to further obtain extended protection through the EU-China GIs Agreement. If a GI is not registered in China, it is still possible to gain legal protection, but the evidentiary requirements and the uncertainty will be relatively high. Given the challenges in China, it is advisable for GI owners to adopt a more robust IP protection strategy to seek additional rights.
