3.1 Registration of Foreign GI in China

As far as the sui generis systems are concerned, the MOA has not yet accepted applications for foreign GI products. The AQSIQ only began to accept foreign GI product applications in 2016, although its GI products system was created in 1999. China's main reason for excluding foreign GIs from registering under its sui generis system is that China is not a contracting party to the Lisbon Agreement. In addition, the technical feasibility of examining foreign GI applications is a concern. However, before the Act of 2016, AQSIQ had already registered certain foreign GIs on the basis of a bilateral treaty with the EUFootnote ¹⁷ According to the ‘Memorandum of Understanding’, the EU and China agreed to register 10 GIs of the other party on a reciprocal basis from 2007, and now yet another project of 100 + 100 GIs is underway.

According to the ‘Methods on the Protection of Foreign GI Products of 2016’, AQSIQ accepts foreign GI applications on a reciprocal basis where the country of origin of the foreign GI is in a cooperative relationship with China. Foreign GIs are protected in both their original language and their Chinese translations. Such names cannot be generic in China, or be in conflict with Chinese GIs. The application should be filed with AQSIQ in the name of the foreign owner of the GI with a recommendation from the competent authorities in its country of origin.Footnote ¹⁸ The application will be published after preliminary examination with a 60-day period of opposition. A group of experts will examine the documents and, if necessary, perform a spot examination. Following this examination, the GI will either be approved and published or it will be rejected.

Foreign GI trademark registration in China has been possible since 1989, when China began accepting Madrid international trademark applications. The ‘Collective Trademark and Certification Trademark Registration and Administration Rule of 1994’ opened the door for national GI trademark applications. Evidence should be provided that establishes the legal protection of the GI in the name of the applicant in the country of origin.Footnote ¹⁹ However, the provision itself does not describe the acceptable forms of the legal protection for GIs in the country of origin. In practice, the CTO and the Courts accept any legal form of protection, either as certification trademark, collective trademark, or by sui generis system.Footnote ²⁰ This remarkable flexibility allows the Chinese trademark system to participate in the international GI registration system. Further, GI trademark certificates delivered in their countries of origin should be filed with other evidence on the qualification of GIs.Footnote ²¹ In the case of Fiji Pure Mahogany,Footnote ²² the Beijing High People's Court held that the CTO merely needs to conduct a formal examination of the technical capacity of the certification trademark applicant regarding the inspection of GI product.

The examination of Chinese GI trademark applications is a formal, document-based process, and the CTO relies mainly on historical documents to ensure that the application satisfies the GI definition. For foreign GI trademark applications, besides the formal examination of the submitted documents, the CTO relies mainly on an official document confirming that the GI is protected in its country of origin. Regarding the sui generis system with AQSIQ, though it requires the submission of a test report made in the country of origin indicating the physical and chemical characteristics of the GI product, the main supporting document is still the original official registration document of the GI in its country of origin. In addition, it can be noted that it would not be difficult for China to move from the current practice regarding examination of foreign GI certification trademark or collective trademark to the recognition of foreign GIs under a multilateral system like the one proposed by the Geneva Act. From a national perspective, the recognition of foreign GIs necessitates that the laws of the country of origin and the Chinese law should be identical or similar in two aspects: the conditions of qualification of GIs and the examination procedure of GIs.

3.2 International Registration of GI

Significantly, in examining the substantial conditions of GI registration, examiners are unable to verify the causation between the local natural or human factors of a specific region and the given quality or characteristic of a product from that region (Gangjee, Reference Gangjee2012: 231–237). For example, although examiners may carry out certain physical, chemical, or biological tests, it is difficult to determine whether or how the factors native to the Asian continent subsequently produced the Asian elephant, or whether or how the factors native to the African continent were directly responsible for the African elephant. The objective has thus become merely to identify which quality or characteristic is common among products from a certain region while also identifying the particular natural or human factors that are common throughout that region. Science and technology only enable us to explain the connection between geographical origin and special quality of GI products to a limited extent.Footnote ²³ As a result, it is challenging to determine the rules and practices that should be followed in order to guarantee that a product will have that special quality or characteristic that qualifies it as a GI of a specific region. For these reasons, support from historical documents is vital, as life experience of society provides further insight on the criteria for GIs. From another perspective, the conditions for protecting GIs are different from those for protecting trademarks. GIs are not as easily created as trademarks.

As far as foreign GIs are concerned, their protection is dependent upon the existence of the protection in the country of origin. Therefore, once a GI disappears in its country of origin, there is no legitimate interest to protect it in any other country of the world. Under this situation, it is preferable to leave the examination of substantial conditions to the authorities of GI's country of origin. In light of these observations, it is important and necessary to apply the system of international recognition of GIs rather than the substantial examination of foreign GIs (WIPO, 2009; Gangjee, Reference Gangjee2012: 288–295). A substantial examination of foreign GIs is inefficient. More importantly, it is not feasible and could lead to absurd scenarios such as foreign experts having to travel all the way to the Bordeaux region to examine the local French GIs.

The international recognition of GIs can be made possible if several conditions are met. First, the conditions of GI registration must be harmonized. Second, there needs to be an examination procedure for GIs in the country of origin. These two conditions can guarantee consistency of GI criteria amongst the nations: once country A is certain that the GI in country B has the same qualifying criteria as in country A, and the title is delivered after examination, then country A can recognize the GI registered in country B. Indeed, this is the exact intention of the Lisbon Agreement.Footnote ²⁴ The current international treaties, particularly the TRIPS Agreement and the Lisbon Agreement, have harmonized the conditions for GI qualification, but not the examination procedures among countries. To do so, it would be advantageous to require that GI registration in the country of origin be subject to a harmonized examination procedure.Footnote ²⁵ Third, foreign GIs should not be in conflict with a prior GI or trademark that has already been registered or protected in a country. It is here that the arguably irreconcilable conflicts of interest between the Old World and the New World arise because some GIs from Europe are identical to trademarks in the New World. However, for other countries, such conflicts do not exist in general. The EU–China bilateral GI recognition agreements may serve as an example for further bilateral practice between China and other countries. Such bilateral practice will also certainly contribute to the construction of a multilateral system recognizing GIs. The negotiation of the EU–China bilateral GI recognition agreement is more easily achievable than an EU–Canada practice, as there are fewer conflicts of interest between the EU and China in this field. Nonetheless, the EU and Canada have still been able to achieve bilateral recognition through reconciliation. All these support the feasibility of developing a multilateral system for recognizing GIs (Spennemann and Vivas-Eugui, Reference Spennemann and Vivas-Eugui2006).

For purposes of international recognition or registration, GIs differ from other types of IP. International recognition or a register of patents or trademarks is still not possible today.Footnote ²⁶ Each country maintains its own patent policy, which balances private rights and public interests. This results in different domestic rules and practices regarding what is patentable and what is not, even though the general conditions of patentability have been harmonized among countries for a long time. To recognize a patent granted by another country would mean abandoning control on patentability, an important policy tool for protecting national interests.Footnote ²⁷ In contrast, GIs cannot affect the development of a country to the extent that patents do. One patent may prevent an unlimited number of producers from making or commercializing a series of products, and alternative technical solutions are not always available. On the other hand, one GI may simply prevent a limited number of producers of one product from using one sign, and alternative solutions are always there (such as using another sign and making some investment for its promotion). In addition, with general trademarks, the recognition of a trademark registered in another country may give rise to conflict between the foreign trademark and a national trademark. To settle the conflict is as complicated as carrying out an examination of all foreign trademarks. Therefore, this makes the recognition of foreign trademarks unfeasible. Unlike trademarks, GIs are generally composed of geographical names in the language of each country, and thus it is far less likely to see conflicts between GIs originated from different countries. Furthermore, the producers of a region have a legitimate interest to use the geographical name of the region in order to indicate the origin of the products. Therefore, the recognition of foreign GIs would not prejudice general public interest but only affect a limited number of good faith prior trademark owners’ rights or conflicting GI owners’ interests.

4.1 Content of Protection in Treaties

Under the Lisbon Agreement, AO shall be protected against any usurpation or imitation.Footnote ²⁸ The TRIPS Agreement instructs WTO members to prevent false indication or suggestion of a GI's geographical origin, acts that confuse or mislead the public regarding the good's geographical origin, and use that constitutes unfair competition in accordance with art. 10bis of the Paris Convention.Footnote ²⁹ This article applies when a geographical indication which, although literally true as to the territory, region, or locality in which the goods originate, leads the public to believe that the goods originate in another territory. The second provision refers implicitly to the conflict between the New World and the Old World, which may happen in the New World, in the Old World, or in a third country. The misleading or confusing acts under these provisions should be determined by referring to the knowledge from local people of the region or country where the registration or protection is claimed. The TRIPS Agreement also offers additional protection for GIs identifying wines and spirits: WTO members shall provide legal means for interested parties to prevent use of such GIs for wines or spirits not originating in the place indicated by the GI concerned (WTO, 1994: art 23.). It is evident that this additional protection comes from the Lisbon Agreement's protection of AO.

The Geneva Act replaced the protection against usurpation in the Lisbon Agreement and the TRIPS Agreement with a four-legged protection.Footnote ³⁰ It has combined elements of the Lisbon Agreement, the TRIPS Agreement, and the Paris Convention, and introduced a better-quality GI protection rule. The first element of the protection prohibits use of GIs on goods which do not satisfy the requisite conditions for use, a prohibition which is more GI-specific than art. 22.2 of the TRIPS Agreement is. The second element applies the trademark dilution theory on GIs, which provides new and enhanced protection for GIs’ reputation. The third element is the adoption of art.10bis (3)3 of the Paris Convention for GI matters. And the fourth element is the extension of additional protection of GIs under art.23.1 of the TRIPS Agreement for wines and spirits to other kinds of products, which is a direct response to the requirement from developing countries in the negotiation under art. 23.4 of the TRIPS Agreement.

On the contrary, none of the three treaties has required a specific legal form for these protections. They neither qualify the content of protection as rights, nor create obligations on procedures or measures for the implementation of such protection. The Geneva Act stipulates that a public authority or any interested party for GIs, of a private or public nature, are eligible to bring proceedings in national procedures.Footnote ³¹ Furthermore, the TRIPS Agreement has deliberately excluded the obligation to provide availability of judicial procedures for GI protection.Footnote ³² This demonstrates the divergence among countries on this issue as well as the flexibility of the treaty implementation.

4.2 Protection of GI in China

The Chinese sui generis system and trademark law provides two kinds of protection for GIs.

4.3 Common Functions of GI and Trademark

Though GIs and trademarks apparently have different functions as far as the legal regimes are concerned, they share essentially common functions (WIPO, 2004). In other words, all the legal functions of GIs can be protected by trademark law (Ibele, Reference Ibele2009: 36–49; Gangjee, Reference Gangjee2012: 2–8). A key feature of GIs is that the characteristics of agricultural products are inherently determined by the land where they are produced (Calboli, Reference Calboli and Gervais2015: 433–434), and thus special agricultural products are known by their geographical origin. The local producers have a legitimate interest to use the GI to indicate the true origin of their products and to benefit from the special reputation of the products from the region. With this right to use the geographical names, there concurrently exists the right to prevent others from using the names in order to prevent false indications of a product's origin and free-riding on the reputation of the products of the region. This serves to protect both producers’ interests and consumers’ interests, the primary objective of GI protection. Mr. Dev Gangjee has summarized the various arguments that justify the protection of GIs (See Gangjee, Reference Gangjee2012: 274).Footnote ⁴¹ Some of these arguments are of a cultural, political, or economic nature (Blakeney, Reference Blakeney2017: 162–173),Footnote ⁴² while some are an indirect consequence of GI protection.Footnote ⁴³ From a legal perspective, the following legitimate interests should be protected:

1. (1) Consumer interest in receiving accurate information about the geographical origin of products in order not to be misled;

2. (2) Producer and consumer interests in distinguishing the products from those of others;

3. (3) Producer interest in protecting a widely-developed reputation;

4. (4) Producer and consumer interests in identifying specific characteristics of GI products.

The first interest is protected by trademark law,Footnote ⁴⁴ competition law,Footnote ⁴⁵ and even consumer protection law.Footnote ⁴⁶ This interest is just a peripheral element for GIs because it is protected even with respect to non-GI products.Footnote ⁴⁷ The other three interests are the key factors of GIs and they are the basis for the legal functions of GIs. The second interest gives rise to the function of GIs in distinguishing product suppliers, the same as the function of trademarks. The fact that the producers of GI products are a group of entities while a general trademark is used by one entity cannot justify the denial of this function. In the event of co-ownership or license of a trademark, there can also be several producers under a general trademark. As GIs are usually geographical names, they are therefore not inherently distinctive because they are descriptive of the geographical origin of products in most cases.Footnote ⁴⁸ In fact, the reason for the protection of GIs is different from that of the protection of ordinary trademarks. The latter is due to the distinctive character of the sign which is derived from the arbitrary relationship between the sign and the products; the former is justified by the legitimate interests of the producers and consumers regarding a specific product. The unique link between a GI and the producers regarding a product from a specific area, as well as a GI's special reputation, are characteristics which establish the distinctiveness of the GI in law, and the GI registration's objective is to recognize and preserve the unique link and special reputation in law. The distinctive character of GIs should be viewed from this perspective.

The third interest implies that a GI is a carrier of the products’ or producers’ reputation. This is also a function of a trademark. The scope of a trademark's protection is defined by two factors: the specialty principle (the trademark sign and designated goods) and the reputation of the trademark (the higher the reputation, the greater the scope of protection). The same principle is applicable to GIs. The protection of a product's reputation performs two functions: to allow GI producers to benefit from the reputation they have developed and to prohibit others from free-riding on that reputation. It is also in this regard that competition law may complement trademark law for such protection.

The fourth interest highlights the important role that GIs perform in promoting local products in the market: consumers recognize GI products by their geographical origin as well as the specific characteristics that differentiate them from the competing products. The protection of this interest is assured by the indication and guarantee of quality that serves as a GI's function. This function is also assumed by trademarks, as consumers not only distinguish the supplying origin of a product via its trademark but also recognize the different characteristics of products under different trademarks. The difference between a general trademark and a GI or GI certification or collective trademarks lies in two aspects. First, the characteristics of products under general trademarks are not defined or indicated in any legal documents and are perceived by consumers who follow their evolution in the consumption practice, and suppliers can, in principle, change or modify these characteristics as they wish (Passa, Reference Passa2006: 53–55). In contrast, the characteristics of GI products are explicitly defined and described in published legal documents which bind GI producers. The second aspect is that general trademarks have no explicit or regulated means for guaranteeing the characteristics of products, whereas the conditions to guarantee the characteristics of GI products are defined and regulated in legal documents that are binding to GI producers.

It is clear that the four legitimate interests of GIs that should be protected by law are common to those of trademarks (Gangjee, supra note 32 at 4; Feng, Reference Feng2017a: 3–10. Dong et al., Reference Dong, Song, Wang and Xia2017). In fact, both collective trademarks and certification trademarks have the common functions of all trademarks (distinguishing suppliers of goods, indicating quality of goods, carrying reputation of suppliers, etc.) besides their respective unique functions (identifying members of trademark owner organizations for collective trademarks or certifying specific characteristics of goods for certification trademarks) (Passa, Reference Passa2006: 510–12; Heath and Marie-Vivien, Reference Heath and Marie-Viven2015; Winters, 2016: 157–159; Feng, Reference Feng2017a: 3–10). Already, a non-GI collective trademark may be registered for use by a group of members defined by, among other things, their geographical location, and a non-GI certification trademark may well be registered to certify, among other things, the geographical source of the designated goods. The difference between a non-GI collective trademark or certification trademark and a GI collective trademark or certification trademark lies in the following: first, GI producers, in general, have no choice but to adopt the GI sign as used in practice, while a non-GI trademark applicant is free to choose a sign to register; second, the quality or characteristics of GI goods have already been decided, while a non-GI trademark applicant is free to define it; third, there must be a connection between the quality or characteristics of a GI product and its geographical origin, while such connection is not required for non-GI trademarks; fourth, GI trademark users (producers) are usually fixed, while non-GI trademark users can be anyone who wishes to join the users’ group and provide compliant goods. Notably, if a collective trademark or certification trademark protects a GI, the GI does not change the nature, the function, or the content of the collective trademark or certification trademark; it only becomes a subset of the collective trademark or certification trademark.

For all these reasons, it can be concluded that trademark law is capable of assuming the responsibility of protecting the functions of GIs. Therefore, once a GI is registered as a certification trademark or collective trademark, it is protected against all acts that prejudice the above-mentioned functions of the GI. However, as far as Chinese law and practice is concerned, in the sui generis systems, only administrative procedures are available. On the other hand, trademarks are protected by both administrative and judicial procedures and measures, as GI trademark owners can bring lawsuits for compensation in the event of infringement. The availability of a broader range of remedies is evidence that trademark law provides a more efficient and complete protection relative to the sui generis systems.

5.1 Prior GI v. Subsequent Trademark

The TRIPS Agreement requires that the registration of a trademark should be refused or invalidated if it contains or consists of a GI indicating goods not originating in the territory portrayed or if use of the GI in the trademark for such goods would mislead the public as to the true place of origin.Footnote ⁴⁹ The Geneva Act requires that the registration of a trademark should be refused or invalidated if the use of the trademark would result in the situations covered by art. 11 paragraph (1), i.e., the use of GIs on goods not satisfying conditions of GI use, diluting use of GIs, consumer-misleading use of GIs, or imitating use of GIs.Footnote ⁵⁰ The Geneva Act defines the conflicts between prior GIs and subsequent trademarks from the perspective of GI infringement, which is a more complete and systematic approach as compared to the TRIPS Agreement. The TRIPS Agreement merely prevents the registration of trademarks which would mislead consumers regarding geographical origin and does not even cover trademark registrations for goods which originate from the GI area but do not satisfy the criteria for GI goods.

In Chinese Trademark Law, it is prohibited to register or use a trademark consisting of a GI while the goods do not originate from the area indicated by the GI if the registration or the use of the trademark would mislead the public. This provision was introduced with the revision of the PRC Trademark Law in 2001 for the implementation of the TRIPS Agreement. For the application of this provision, the CTO or the courts first need to determine if the claimed GI satisfies the definition of a GI in the trademark law. If the GI has been registered as a GI trademark or is registered with the AQSIQ or the MOA, the CTO and the courts will, in general, directly recognize it as a valid GI. Nonetheless, the related documents on the GI must still be provided along with the GI certificate so that a formal examination can be performed. For non-registered GIs, the authorities will carry out an examination. This indicates, at the same time, a willingness from the CTO and the courts to protect non-registered GIs.

In the Yangliuqing Case,Footnote ⁵¹ the Beijing High People's Court recognized that ‘Yangliuqing’ is a non-registered Chinese GI on traditional Chinese New Year pictures and paper cuttings and therefore its registration as trademark by an entity without relation to the GI must be rejected. In the Pomerol case,Footnote ⁵² a Chinese individual registered a Chinese-character trademark (bomeilong by pronunciation), which corresponds to the generally known translation of ‘Pomerol’ in China. INAO applied for the invalidation of the trademark on the grounds that the trademark consists of a GI. The court considered that it was not enough for INAO to provide just the French Regulation which protects Pomerol as an AO, but that evidence should also be provided on the given quality, reputation or characteristics of the wines, the human and natural factors of the area, and the causation between both. Though this invalidation action was rejected due to insufficient evidence, the Chinese courts have demonstrated their willingness to protect foreign GIs, even if they have not been registered in China.

5.2 Prior Trademark v. Subsequent GI

According to the TRIPS Agreement, registration or use of trademarks shall not be prejudiced by GIs where trademark rights have been acquired via registration or used in good faith before entry into force of the relevant WTO member's accession protocols or before the GI is protected in the country of origin.Footnote ⁵³ This means that good faith in trademark registration or use is not enough to prevent the protection of GI; and that once the TRIPS Agreement has entered into force in a country, a GI protected in one member of the WTO will have the possibility to affect the registration or use of trademarks in another member of the WTO if such registration or use has taken place after the entry into force of the TRIPS Agreement in the member concerned. In addition, the Panel in the WTO dispute settlement case EC–Geographical Indication (WTO, 2005) held that EU law, which permits the coexistence of a GI and a prior trademark right, can be justified by art. 17 of the TRIPS Agreement because this constitutes a permitted exception to trademark rights.Footnote ⁵⁴ The Geneva Act has reiterated this rule of the TRIPS Agreement and requires, regarding the said Panel's decision, that, in the case of limited exception to trademark rights in favour of a GI, the protection of the GI shall not limit the rights conferred by that trademark in any other way.Footnote ⁵⁵ This is an effort to limit the impact and scope of the Panel's decision on the exception to trademark rights in favour of GIs.

In Chinese Trademark Law, prior GI related trademark registrations are incontestable in two situations. First, though the Chinese Trademark Law 2001 revision introduced GI protection, this does not affect GI-related trademarks registered in good faith prior to 1 December 2001, the date the revised trademark law was promulgated.Footnote ⁵⁶ Second, if the registration of a trademark prejudices a third party's rights, the invalidation action should be launched within five years from the trademark's registration date.Footnote ⁵⁷ Therefore, all trademarks that have been registered for more than five years can no longer be invalidated except in the case of bad faith registration of well-known trademarks. This incontestability of GI-related prior trademarks in these two situations has given rise to obstacles for subsequent registration as trademarks or continuous use of GIs in China. There are still a significant number of Chinese and foreign GIs that have not yet been registered as trademarks. In seeking to resolve this conflict, the Chinese courts have permitted the coexistence of prior trademarks and subsequent trademark applications or continuous use of GIs in order to protect the legitimate interests of GI producers. The rationale for this coexistence has evolved to reflect the understanding of GIs in Chinese judicial practice.

One such example exists in the Enshi Yulu case,Footnote ⁵⁸ where Yueyang Tea Factory registered ‘YULU’ as a trademark on tea in 2000. Enshi Yulu Tea Association then applied for the registration of the GI certification trademark ‘ENSHI YULU’ on tea in 2008. Yueyang Tea Factory filed an opposition on the basis of its prior trademark registration. The evidence showed that ‘Enshi’ is the name of a region in China and ‘Enshi Yulu’ is a GI for a local tea also called YULU. The Court considered that the function of a certification trademark is only to indicate the given characteristics of the goods and has no function of distinguishing goods suppliers. Therefore, it was decided that an ordinary trademark cannot constitute an obstacle to the registration of a certification trademark because there is no likelihood of confusion. In this way, the Chinese courts permit the coexistence between prior trademarks and subsequent GI trademark applications. However, the CTO and the TRAB consider that GI certification trademarks or GI collective trademarks do have the function of distinguishing goods suppliers, and their coexistence with an ordinary trademark would cause confusion among consumers. From a legal point of view, the CTO and the TRAB are right, but the opinion of the Chinese Courts must be looked at from a political point of view. The courts consider that the existence of the GI significantly predates the registration of the prior ordinary trademark. Therefore, while it is no longer possible to invalidate the prior ordinary trademark, to refuse the subsequent GI trademark application is unfair. The denial of the function of supplier distinction for certification trademarks and collective trademarks is a pragmatic solution that the courts have found to allow the coexistence between a subsequent GI trademark and a prior ordinary trademark. However, the denial of a distinguishing function for certification trademarks and collective trademarks would lead to mass coexistence between such trademarks (not only GI related trademarks) and ordinary trademarks, which would mislead the related public regarding the origin and characteristics of products. This is, in fact, a legal permission to counterfeit collective trademarks or certification trademarks. In truth, another solution may be considered more preferable to this. In the general trademark practice on evaluating likelihood of confusion, not only should the similarity between trademarks and between goods be taken into account, but also the reputation of the marks in the market (Feng, Reference Feng2017b: 92–94). In other words, without denying the distinguishing function of certification trademarks or collective trademarks, the coexistence of prior ordinary trademarks and subsequent GI certification trademarks or collective trademarks can be justified by the fact that there is no likelihood of confusion in the market, since the reputation of the GI usually is sufficient to permit the related public to distinguish GI trademarks from ordinary trademarks. It is in this type of situation that we can see how it is important to take into account the particular facets of a GI: reputation and special characteristics of GI products drawn from their geographical origin, which differ from non-GI certification trademarks or collective trademarks.

In the enforcement of trademarks, GI products can be an exception to trademark rights. In Jinhua Ham,Footnote ⁵⁹ the plaintiff registered the trademark ‘Jinhua Ham’ in 1979 and the defendant was a producer of the GI products known as ‘Jinhua Ham’ that were registered with AQSIQ in 2002. A lawsuit was brought against the use of the words ‘JINHUA HAM’ on the defendant's products. The court determined that both the trademark owner and the GI producer have the right to use JINHUA HAM in the forms that had been registered with the respective authorities. The use of the words by the GI producer is a fair use that the trademark owner has no right to prohibit. However, the GI producer should use the words ‘JINHUA HAM’ in the manner prescribed by AQSIQ in order to be distinguished from the registered trademark.

Another way that the Chinese courts permit the use of the GIs with regards to a prior trademark is to recognize a GI as a generic product name, but this is not a correct practice. In the case Qinzhou Yellow,Footnote ⁶⁰ the plaintiff had been the owner of the registered trademark ‘Qinzhou’ (an ancient region name in Chinese history) on millets since 1991 (Wang, Reference Wang2018: 73–88). The defendants are producers of the GI product ‘QINZHOU YELLOW’, which was registered with AQSIQ on millets in 2003. The plaintiff sued the defendants for the infringement of its trademark. The Chinese Supreme People's Court upheld the judgment of the Shanxi Provincial High People's Court, in which Qinzhou Yellow was recognized as a generic product name of the region. This finding justifies the defendant's use of the trademark at issue because a trademark owner cannot prevent others from using the generic name of goods even if the generic name is part of the trademark.Footnote ⁶¹ However, though the Court's objective is understandable, a GI should not be qualified as a generic term, as this will put it in the public domain. A GI is not a generic term though it belongs to a group of related producers of the region. A generic term designates a class or category of products whose producers are unlimited as there is no requirement on the geographical origin of the products. On the other hand, a GI designates a particular product whose producers are geographically limited and whose specific quality or characteristics are attributable to its geographical origin. A GI can only ‘become generic if the direct link between the geographical origin of the product and a specific quality of that product, its reputation or another characteristic of the product, attributable to that origin has disappeared, such that the name does no more than describe a style or type of product’.Footnote ⁶² In both of the above cases, the qualification of the GIs as a generic name did not prevent the registration as GI certification trademark or GI products with AQSIQ.Footnote ⁶³ This proves also that their qualification as generic names is incorrect. In reality, there are different ways to arrange the interests of related parties. Another solution can be to recognize the coexistence of a trademark and a GI. As GI trademarks of the CTO, GI products of the AQSIQ, and agricultural GI products of the MOA are respectively all marked with a special sign of GIs, and as the GI products enjoy certain reputation in the market, these two factors can enable the public to distinguish the trademark owner and GI producers as different suppliers.

Considering the above discussions of the conflicts between trademarks and GIs, it should be noted that the principal condition which should be satisfied to allow coexistence of a GI with a prior registered ordinary trademark, regarding either subsequent applications for GI trademark registration or for continued use of GI, is that the GI should have existed before the registration of the prior ordinary trademark.Footnote ⁶⁴ With this approach, the principle of priority can be applied, but the priority would not be based on the time of registration but on the prior existing legitimate interests: the legitimate interests of GI producers on the GIs which existed before the prior trademark's registration prevail, and the principle of exclusivity is equitably applied since an exception in favour of GI producers is granted to the rights of the prior trademark owner (Gangjee, Reference Gangjee2007: 1253). It can also be considered that, from a different point of view, a special or preferential status has been given to GIs in this solution, as non-GI trademarks cannot be treated in the same way (Gangjee, Reference Gangjee2012: 255–259). In truth, this solution is equitable and justified because a simple and absolute application of the ‘first in time, first in right’ principle of trademark registration system would be disadvantageous to GI producers (ibid.: 257–264).

5.3 When American GI vs. European GI in China

What will happen when an American GI trademark encounters a European GI in China if the two GIs are identical but refer to different American and European regions? To date, no such cases have come before the Chinese authorities, but it can be predicted how the law will be applied according to legal rules and the current practice.

Before AQSIQ, according to the Methods on the Protection of Foreign GI Products of 2016, if an application for GI product registration is filed by an American or European GI owner, the GI needs to be filed both in its original language and in its Chinese translation. The rule states that the adopted Chinese translation of the GI shall not be in conflict with any Chinese GI, but there is no provision regarding conflict between GIs in their original languages.Footnote ⁶⁵ Nevertheless, an opposition procedure is available for anyone once the application is published following the formal examination. In the event of opposition, AQSIQ will first organize a negotiation between the parties. If no agreement can be reached, then AQSIQ will make a decision. That means, it is up to the related foreign GI owners to utilize their right of opposition against conflicting GI applications. If the opposition is not filed by the deadline, one may apply for cancellation of the registered GI products if the GI has ceased to be protected in the country of origin, or if a Chinese court has decided the GI protection should be cancelled or if there is any serious violation of Chinese law.Footnote ⁶⁶ From this, it can be concluded that, if the use of a registered GI with AQSIQ is deemed as infringing on a trademark in China, this can be a possible ground for the cancellation of the GI product.

Before the CTO, if an American or European GI is filed for registration as a collective trademark or certification trademark, an examination will be carried out regarding the conditions to qualify the GI and the protection of the sign as a GI in its country of origin. In addition, the CTO will examine whether Chinese consumers would be misled regarding the geographical origin of the goodsFootnote ⁶⁷ and whether there are prior trademarks identical or similar to the filed GI trademark.Footnote ⁶⁸ Whether Chinese consumers would be misled depends on what the Chinese consumers understand about the GI. In the case CALISSONS D'AIX,Footnote ⁶⁹ a Chinese individual applied for the registration of the said trademark with the CTO while the mark had already been registered from 1991 as a certification trademark in France on the special almond cake from the region of Aix.Footnote ⁷⁰ The French producers’ association filed an opposition against the registration. The CTO considered that ‘AIX’ is a French geographical name with which the Chinese public is familiar and ‘CALISSONS’ is a French specialty of the region. Therefore, the registration of the mark would mislead the Chinese public about the geographical origin of the products. Another misleading situation would be an American GI being incorrectly understood by the relevant Chinese public to be a region of Europe, which will cause the related trademark application to be refused. These are the types of situations that art. 22.4 of the TRIPS Agreement attempts to address.Footnote ⁷¹ However, if the Chinese consumers do not know what the GI means, then there is no risk of being misled.

As for the conflict between a prior ordinary trademark and a subsequent GI trademark application, if the GI was protected in the country of origin before the prior trademark registration, the CTO and the courts will generally permit their coexistence. This practice is in conformity with the case law of the WTO in EC–Geographical Indications. As for the conflict between two identical or similar GI trademark applications, one from US and the other from Europe, the later application will be rejected and coexistence would only be possible in two situations: 1) if it can be proved that the related Chinese public knows either of them well and can distinguish them in the market, or 2) a coexistence agreement can be reached between the two parties.Footnote ⁷² In trademark law practice, a coexistence agreement is a solution often adopted by companies who have similar trademarks. Indeed, the coexistence agreement can also be used by associations of GI owners or by governments in bilateral negotiations. They can even conclude a global coexistence agreement regarding certain GIs. One such agreement is the Canada–.EU Trade Agreement, in which the two contracting parties have agreed on the adjusted protection level and scope of certain European GIs in a very pragmatic manner, taking into account the habitude of Canadian consumers and the interests of related industries.