CNIPA proposes stricter rules on collective and certification trademarks

Introduction
Shift of focus
Filing requirements
Administration of registrants, collective members and users
Fair use of geographical names
Administrative protection and penalty measures
Comment

Introduction

On 7 June 2022, the China National Intellectual Property Administration (CNIPA) issued a notice seeking comments on the Draft Measures for the Administration and Protection of Collective and Certification Marks (the Draft Measures).

The existing Measures for the Registration and Administration of Collective and Certification Marks (the 2003 Measures) were promulgated on 17 April 2003 and came into force on 1 June 2003. The 2003 Measures, as a vital supplement to the Trademark Law and the Implementing Rules of the Trademark Law, provide details of the application procedures and paperwork requirements for the registration and protection of collective and certification trademarks.

Practitioners have called for updates to and revisions of the 2003 Measures ever since the third and fourth amendments to the Trademark Law in 2013 and 2019. On top of that, a few high-profile cases involving collective and certification trademarks with place name components have necessitated the promulgation of administrative guidelines on the protection of such trademarks and the boundaries of fair use.

The Draft Measures consist of 35 articles. This article sets out the main takeaways.

Shift of focus

The name of the Draft Measures indicates a shift of legislative focus from "Registration and Administration" to "Administration and Protection".

Filing requirements

Articles 2 to 9 of the Draft Measures set out general principles on applications for the registration of collective or certification marks. Article 2 also further clarifies the eligibility requirements of applicants filing for such trademarks. Article 6 aligns the registrable elements of geographical indication collective and certification trademarks with the current Trademark Law.

Administration of registrants, collective members and users

Articles 10 to 18 relate to the administration of the registrants of collective and certification marks, as well as the collective members and users:

• Article 10 sets out specific requirements on the trademark management responsibilities of the registrant.
• Article 11 allows registrants to charge reasonable fees from collective members and users.
• Article 12 mandates that where there is any change to the members of collective marks or where certification trademarks are licensed to others, the registrants must apply for such modifications or put on record the licensing within three months upon the entry into force of the licensing contract with the CNIPA.
• Articles 14 and 15 introduce the circumstances under which the registrant shall be obliged to issue a certificate of use and enumerate scenarios where a collective or certification mark should not be used.
• Article 16 provides that the registrants, collective members and users of collective and certification marks are obliged to ensure the goods to which such marks are attached comply with the prescribed quality requirements, and that the collective and certification marks may be used along with their own registered trademarks.
• Articles 17 and 18 lay out the obligations of registrants, collective members and users.

Fair use of geographical names

Articles 21 to 24 address the fair use of geographical names in collective and certification trademarks:

• Article 21 states that, in principle, using a geographical name component in the manner of describing a fact is deemed to be fair use. Examples include:
  • "to indicate the source of geographic origin in a store signage";
  • "to indicate the place of origin of the products or raw materials thereof in the list of ingredients or on the packaging"; or
  • "using such component in the trade name of a business".
• Article 22 also bans the monopoly of geographical names or names of goods incorporated in a collective or certification trademark in catering businesses by allowing individuals or organisations other than the registrant of such trademarks to use these components by way of describing a fact in local snacks, cuisines, menus or window displays.
• Article 23 allows the fair use of geographical names or names of goods incorporated in a collective or certification trademark by any natural person, legal person or other organisation whose goods conform with the requirements of geographical indications.

Administrative protection and penalty measures

Articles 25 to 33 improve the administrative protection measures for collective and certification trademarks and the relevant administrative punishment measures for misusing such marks. In case of trademark infringement, registrants, collective members and users may resort to administrative enforcement actions. The Draft Measures also:

• clarify the remit of the competent authorities and the circumstances to be deemed as infringement in the sense of article 57 of the Trademark Law;
• introduce a similar "innocent distributor" clause; and
• set out administrative consequences and liabilities to be borne by registrants if they fail to perform their administration and supervision obligations.

Comment

The Draft Measures seem to impose on registrants, collective members and users of collective and certification trademarks high obligatory requirements. It remains to be seen whether the CNIPA will relax its regulatory stance and leave more wiggle room for registrants, collective members and users in the final text.

For further information on this topic please contact Yongjian Lei or Mei Huang at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected] or [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.