The Beijing Number 1 Intermediate People's Court has recognised that the geographical indications 'Champagne' and '香槟' ('Champagne' in Chinese) should be protected, even though they were not registered in China at the time that the case was filed.
Plaintiff Comité Interprofessionnel du Vin de Champagne (CIVC) was established in 1941 and thus one of the first regional wine committees created in France. It was established by statute to manage the common interests of growers and Champagne houses. The CIVC sets strict norms and only sparkling wines produced in the Champagne region of France, using certain types of grape and according to a certain process, have the right to be called 'Champagne'.
In 2011 the CIVC discovered that Beijing Sheng Yan Yi Mei Trading Co Ltd was selling soft drinks under the names '香槟' and 'Champagne'. The CIVC sued Sheng Yan Yi Mei before the Beijing Number 1 Intermediate People's Court.
The court took a long time to formally accept the case and even longer to make a decision. It finally rendered its judgment on February 10 2015, in favour of the CIVC.
The court held that although 'Champagne' was not registered as a trademark in China at the time that the case was filed, it had already been established by the relevant administrative authorities that the denomination 'Champagne' is not the generic name of an alcoholic beverage and must be protected as an appellation of origin.
Further, the CIVC had produced evidence that 'Champagne' had gained high popularity in China and that the relevant public recognised this word as a geographical indication identifying sparkling wines originating from Champagne, France. The following was added to the evidence produced before the court:
- the wide promotion made by the CIVC and Champagne producers in China;
- many articles published in domestic media, periodicals and newspapers; and
- a variety of authoritative reference books.
The court also noted that since joining the World Trade Organisation and becoming a party to theAgreement on Trade-Related Aspects of Intellectual Property Rights, China has committed to provide legal protection for geographical indications. The court therefore held that obtaining trademark registration as a collective or certification mark in China was not a precondition for legal protection.
The court ordered the defendant to cease selling the infringing products. No appeal was filed and the judgment is now final.
The main difficulty in this case was determining whether a name consisting of a geographical indication can be protected in China without any kind of registration. This is the first time that such a straightforward question has been raised in civil litigation. There were some precedents, but these were the result of specific notices issued by the State Administration for Industry and Commerce, not actual civil infringement actions.
In 2011, when the case was launched, the only legal ground was Article 16 of the Trademark Law:
"Where a geographical symbol of the goods exists in the trademark and the designated goods do not originate from the place indicated by the said symbol, thereby misleading the public, such a trademark shall be refused for registration and shall be prohibited to be used."
The court took almost three years to make a decision.
Registration of geographical indications in China is strongly recommended. There are three ways to achieve this:
- as a certification or collective mark at the Trademark Office;
- as a sui generis geographical indication at the General Administration of Quality Supervision, Inspection and Quarantine; or
- as an agricultural product with the Ministry of Agriculture.
The first method is the easiest, but still requires the submission of specific documentation. The other two methods can be achieved on a case-by-case basis, but no detailed regulations have been issued (despite being announced) to explain how foreign geographical indications can obtain such protection.
A geographical indication owner may also use the Law against Unfair Competition or the Law for the Protection of Consumers to deal with malpractice affecting its name.
After the present case was filed, the CIVC – which had a preference for the sui generis type of protection (which is the French system) – filed an application with the General Administration of Quality Supervision, Inspection and Quarantine on January 17 2012, which was approved on April 11 2013. Meanwhile, the CIVC also obtained a registration for CHAMPAGNE, in both Latin and Chinese characters, as collective trademarks.
Filing for registration is the recommended approach for all geographical indication owners. However, this latest judgment will constitute an important reference in future cases where a geographical indication owner has not yet registered IP rights in China and may rely only on Article 16 of the Trademark Law and on the evidence of the geographical indication's reputation in China.
For further information on this topic please contact Yongjian Lei, Minfeng Yang or Chi Tian at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email (email@example.com, firstname.lastname@example.org or email@example.com). The Wan Hui Da Intellectual Property Agency website can be accessed at www.wanhuida.com.
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