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Why Do Foreign Geographical Indications, Collective Marks, Certification Marks are Easily Squatted in China?
(Ngày đăng: 2023-10-16)

Why Do Foreign Geographical Indications,

Collective Marks, Certification Marks are Easily Squatted in China?

 

Attorney Le Quang VinhBross & Partners

Email: vinh@bross.vn

 

(Ordinary) Trademarks Containing Geographic Names are Restricted from Registration

 

China limits the grant of protection to ordinary trademarks containing geographical names because Article 10 (para. 2) of the 2019 Trademark Law stipulates the names of administrative units at the district level or higher or foreign geographical names known to the public cannot be registered as trademarks, unless the geographical name has a different meaning, or it forms part of a collective mark, or certification mark.

 

According to the 2021 trademark examination Guide issued by the China National Intellectual Property Administration (CNIPA), the signs Shenzhen Jiuda, Xinjiang Red, and Dalian in order from left to right below are all geographical names of administrative regions at or above the country level so they are not registrable as trademarks.

 

A blue and white logoDescription automatically generated

A black symbol with white backgroundDescription automatically generated

A logo with circles and linesDescription automatically generated

 

However, a geographical name has different meanings, that is, a geographical name whose connotation is determined by the dictionary and this meaning is stronger than the meaning of the geographical name so it does not confuse the public, it can be accepted for registration. For example, the Chinese characters Huangshan in the trademark below has a stronger meaning than the geographical name.

 

A close-up of a symbolDescription automatically generated

 

In addition, China does not refuse geographical names if the trademark contains a geographical name independent of other distinctive signs, and the geographical name only serves as a true indication of the place of business (residence) of the applicants like the first 3 examples from left below. Similarly, geographical names that play a role as part of certification trademarks or collective trademarks such as the fourth example Parma Ham in Chinese are also accepted for protection.

 

A black and white logoDescription automatically generated

[Chinese word is East Wind 248]

A close up of a logoDescription automatically generated

A yellow oval sign with black textDescription automatically generated

 

[Chinese word is Shaoxing rice wine]

 

 

[Chinese word is Parma Ham]

 

Unlike geographical names describing China's administrative units at the county level and above which are not protected as trademarks, China does not refuse to protect trademarks that are/contain foreign geographical names unless it is known to the Chinese public. Foreign geographical names are geographical names outside of China, including names of countries, names of regions that exist as full names, abbreviations, or names in foreign languages, or their Chinese translations. The mark California used for beer, even though written in Chinese characters as below, is still considered a geographical name known to the Chinese public and cannot be protected as a trademark.

 

A black text on a white backgroundDescription automatically generated

 

Many other foreign geographical names, including well-known those that are protected as geographical indications (Gis) under foreign laws, are not automatically considered foreign geographical names known to the Chinese public. This is the reason why “Buon Ma Thuot & Chinese characters”, “Phu Quoc & device” and “罗曼尼·” (Chinese transliteration of Romanée-Conti) designated for coffee, fish sauce, and wine in classes 30 and 33 respectively as illustrated below are still granted protection in favor of Chinese applicants. Please keep in mind that Buon Ma Thuot (Buôn Ma Thuột/Buôn Mê Thuột in Vietnamese), Phú Quốc (Phu Quoc in Latin writing), and Romanée-Conti (Chinese transliteration is 罗曼尼·) are all famous geographical names abroad and are all protected as GIs in Vietnam and France.

 

A black and white symbolDescription automatically generated

 

[Coffee]

A black and white logo with a fish jumping out of the waterDescription automatically generated

[Fish sauce]

 

 

[Wine]

 

How to Prevent Foreign Famous GIs, Collective Marks, Certification Marks from being Squatted in China?

 

All abroad famous brand names, including geographical indications, certification marks, and collective trademarks, are at high risk of being misappropriated or squatted very quickly in China by reason of 2 rationales: (1) CNIPA only grants protection to any trademark earliest filed with CNIPA (China adopts “first to file” rule), and (2) CNIPA does not by default consider geographical names or place names constituting geographical indications, certification marks, collective marks are foreign geographical names known to the Chinese public.

 

The lesson learned here is that foreign stakeholders those who are registrants of collective marks, certification marks, or geographical indications in foreign countries need to immediately apply for trademark registration in China (applied-for trademarks in the form of Chinese translation/transliteration are also highly recommended). In case it is discovered that a trademark squatter has quickly applied for or already obtained a preemtive registered trademark (identical or similar to a geographical name that is also registered as a collective trademark, certification mark, geographical indication in your home country), it is necessary to promtly fight against the trademark squatters by trademark opposition procedure or invalidation action.[1]

 

Bross & Partners, an intellectual property firm ranked First (Tier 1) for 3 consecutive years (2021-2023) by Legal 500 Asia Pacific Magazine, has extensive experience related to registration and dispute resolution. Trademark (brand) dispute in China.

 

Please contact Email: vinh@bross.vn ; Mobile: 0903287057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.

 

 

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