The National Interprofessional Cognac Bureau (BNIC) is a coordination and decision-making body for the Cognac industry, comprising an equal number of winegrowers and merchants. The primary mission of the BNIC is to represent, foster and protect the geographical indication (GI) "Cognac" in France and abroad. The BNIC owns registrations for the GI collective trademarks COGNAC and 干邑 ("Cognac" in Chinese characters) in class 33 in China.
On 7 April 2015 a Chinese company, Zhejiang Zhen Wine Network Technology Ltd, applied for the registration of the trademark 康涅克 ("Kang Nie Ke" in Chinese) in class 33. The mark was registered on 28 May 2016.
On 17 December 2020, the BNIC brought an invalidation proceeding against the mark before the China National Intellectual Property Administration (CNIPA), contending that "Cognac" was a famous foreign place name and an appellation of origin/GI for French wine. As "康涅克" was a Chinese translation of "Cognac", it should thus be invalidated.
The CNIPA invalidated the registration of the disputed mark, giving the following reasons:
- The evidence furnished by the BNIC substantiated that:
- "Cognac" was a GI for French wines;
- "康涅克" was one of its Chinese transliterations; and
- "Cognac" had acquired, prior to the application date of the disputed mark, a high reputation in mainland China.
The disputed mark was identical to 康涅克, yet the evidence adduced by the registrant was insufficient to prove that the goods bearing the mark originated from the Cognac region. Consequently, if the disputed mark was used on wines, the relevant public would likely be misled into believing that the wines to which the disputed mark was attached originated from the Cognac region or had certain characteristic features thereof. This would fall under the scenario described in article 16.1 of the 2013 Trademark Law.(1)
- The evidence furnished by the BNIC sufficed to prove that "康涅克" was extensively perceived as the Chinese transliteration of the known foreign geographic name "Cognac" in China. Given that the registrant had failed to prove that the disputed mark had acquired, through use, other meanings apart from that of the prior GI and known foreign place name, the disputed mark violated article 10.2 of the 2013 Trademark Law.(2)
It is not unusual for a single foreign trademark, GI or place name to correspond to several Chinese translations, other than the official one. Some trademark squatters have chosen to register the unofficial Chinese translation(s) to reduce the risk of being challenged.
In prosecution practice, the CNIPA has granted protection to unregistered Chinese translations (official or unofficial) of foreign trademarks/GIs. Nevertheless, this is probably the first time that the agency has made it clear in writing that:
the protection of foreign GIs includes the protection of their Chinese translations, which are not limited to a certain fixed official translation. Any Chinese translation that may be perceived by the relevant public as the Chinese counterpart of the foreign GIs could be included in the scope of protection.
The decision will be particularly conducive to the protection of the unofficial unregistered Chinese counterparts of foreign GIs in China.
For further information on this topic please contact Xiaoning Pu at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.
An earlier version of this article was first published by WTR.
Endnotes
(1) "A trademark is prohibited from being registered or used if it comprises a GI component of the designated goods but the goods do not originate from the place indicated by said GI, thus misleading the public".
(2) "[F]oreign geographic names known to the public shall not be used as trademarks unless said names have other meanings".