Keemun is a famous Chinese black tea produced in the triangular mountain area of the Dongzhi, Shitai and Qimen counties in Anhui Province. Various literature and historical records have traditionally recognised the area as the growing region of Keemun. The tea growers and producers in the region have helped to shape the Keemun black tea production technique.
On 28 September 2004 the Keemun Black Tea Association (KBTA) filed an application for the registration of the name ???? (Keemun Black Tea) as a certification trademark in Class 30 in order to protect this geographical indication. The application sought to have Qimen County designated as the exclusive growing region of Keemun black tea. This was based on an affidavit from the Anhui Provincial Agriculture Commission in 2004.
On 27 October 2008 Anhui GuoRun Tea Industrial Co, Ltd (GuoRun), a producer of Keemun tea, filed an opposition against the certification mark. GuoRun disagreed with the KBTA's definition of the growing region and cited an updated affidavit from the Anhui Provincial Agriculture Commission in 2007, which included the areas of Dongzhi, Guichi and Shitai in the Keemun growing region.
In 2009, while the opposition was still pending at the China Trademark Office (CTMO), the Anhui Provincial Administration for Industry and Commerce (AIC) intervened. A meeting was convened to reconcile the disputes between KBTA and GuoRun and facilitate the smooth registration of the certification mark. Under the mediation of the AIC, GuoRun agreed to withdraw its opposition and KBTA agreed to file a modification of the geographic region designated by the certification mark. Holding up its end of the bargain, GuoRun withdrew the opposition and the certification mark was registered on 7 November 2008.
However, KBTA reneged on its promise.
On 27 December 2011 GuoRun filed for the cancellation of the certification mark with the Trademark Review and Adjudication Board (TRAB), arguing the registration of the disputed mark had been obtained by fraudulent or other illegitimate means (Article 41.1 of the Trademark Law 2001).
On 19 October 2015 the TRAB ruled to invalidate the certification mark.
KBTA brought an action before the Beijing Intellectual Property Court.
The Beijing Intellectual Property Court held that in order to justify the finding that the disputed mark was registered by using fraudulent or illegitimate means, it is necessary to establish the fact that the trademark registrant had:
- deliberately deceived the CTMO to seek unfair competition edges or illegal interests; and
- fabricated or concealed facts and submitted a forged application or other documentations to the CTMO.
On 24 April 2017 the court ruled in favour of the KBTA and annulled the TRAB's invalidation decision.
GuoRun appealed to the Beijing High Court.
The Beijing High Court opined that due to the strong technicality in determining the geographic range of the geographical indication (GI) certification and collective trademark, the CTMO, in practice, conducts only a formality examination of the relevant mark's filing documents.
Under such circumstance, GI trademark applicants bear a higher obligation and must act in good faith when submitting filing documents, including by:
- not producing forged application files; and
- giving a full and accurate account of the circumstances.
Obtaining a registration by filing fabricated files or by resorting to other deceptive means falls under 'fraudulent' circumstances as provided by Article 41.1 of the Trademark Law. Obtaining registration by choosing to neglect the obligation of giving the CTMO a full and accurate account of the circumstances falls under the circumstance of using "other illegitimate means" as set out under Article 41.1 of the Trademark Law.
The court found that, notwithstanding the clear knowledge of the existing controversies over determining the Keemun production region, the KBTA had failed to inform the CTMO, which breached the good faith principle and fell under the circumstances as set out under Article 41.1 of the Trademark Law.
On 25 December 2017 the Beijing High Court overturned the first-instance judgment.
This decision emphasises the general concept of good faith and is most welcome.
However, the invalidation of the Keemun certification mark begs the question as to whether anyone could use this name to sell tea. It seems unlikely as the unauthorised use of the mark could still constitute infringement and unfair competition over an unregistered GI trademark.
While the Beijing First Intermediate Court once granted GI protection over the unregistered Champagne trademark in a civil litigation, this recent case is the first administrative litigation involving a dispute over the geographical range of a GI mark. It sheds some light on the following remedial approaches that may be taken in similar cases:
- Where the trademark registrant is open to negotiation, if a consensus can be reached and approved by the competent authority, the registrant may:
- amend its rules governing the use of the GI mark;
- designate the uncontested region agreed by both parties; and
- submit the same to the CTMO for examination and approval.
- If the trademark registrant refuses to amend the rules, an interested party may file an opposition or invalidation, citing Articles 10.1.7, 44.1 or 7 of the Trademark Law 2013, depending on the circumstances of the case.
- In theory, an interested party may also institute a civil lawsuit against an infringer, provided that the evidence adduced proves that although not covered by the established geographical range of the GI mark involved, it deserves the same GI mark protection against the infringer.
- In case the trademark registrant sent out a cease and desist letter, another alternative for an interested party would be to lodge a non-infringement suit requesting the court to clarify the geographical ambiguity and confirm that it is entitled to use the GI mark.
For further information on this topic please contact Xingnan Ming or Nan Jiang at Wanhuida Peksung by telephone (+86 10 6892 1000) or email (email@example.com or firstname.lastname@example.org). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
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