JSS  Vol.6 No.10 , October 2018
Solutions to Overseas Protection of China’s Geographical Indications
Author(s) Yuanhua Zhu
ABSTRACT
Geographical indication is one of the intellectual property rights protected by several multilateral agreements. Among these agreements, Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement) has the most members and is most influential as well, but a multilateral system of notification and registration of geographical indications has not been established up to now. In order to give better protection to China’s geographical indications in overseas market, additional measures must be taken. Firstly, China’s geographical indications can be registered in target countries. Secondly, the Chinese government should sign bilateral agreements on geographical indications protection with other countries. Thirdly, China has been taking part in several negotiations on free trade area, and the protection of geographical indications should also be taken into consideration. Lastly, the Madrid system of international registration for trademarks is also a practical way.

1. Introduction

Agreement on Trade-related Aspects of Intellectual Property Rights defined geographical indications (GIs) as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. In chronological order, there are four major multilateral treaties related to the protection of geographical indications: Paris Convention on the Protection of Industrial Property, Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration and Agreement on Trade-related Aspects of Intellectual Property Rights. China is the member of the first one and fourth one.

The Paris Convention is the first multilateral treaty to protect geographical indications, but it only makes a simple provision in article 9 and article 10, doesn’t offer feasible legal remedies for the right owners, as well as lacks supervisory mechanism, has no sanction measures if certain members violate their obligation.

The TRIPS Agreement, which has 164 members so far, is the most influential agreement on the protection of geographical indications. Relying on the dispute settlement mechanism of the World Trade Organization, it can be said that it establishes the first global geographical indications protection system [1] . However, the TRIPS Agreement only sets the minimum standards for the protection of geographical indications, and its members are not obliged to grant automatic protection to foreign geographical indications. The fundamental reason is that the Agreement has not established the multilateral system of notification and registration of geographical indications. Therefore, additional solutions are needed to ensure that China’s geographical indications are better protected in other countries.

Geographical indications are mainly used on agricultural products, especially on those of high quality. With the development of world economy, the demands for qualified agricultural products will be more and more. The overseas protection of China’s geographical indications is of great significance in expanding the exportation of Chinese agricultural products, defending the interests of Chinese farmers and other relevant operators. Moreover, it is very important in enhancing the image of Chinese agricultural products in international markets.

2. Solutions to Overseas Protection of China’s Geographical Indications

2.1. Applying for Registration in Target Market Countries

To protect Chinese geographical indications in other countries, the most direct way is to seek protection from the department in charge according to the geographical indication management system of the target market countries. Different countries and regions have different models for the protection of geographical indications. The WTO secretariat has once conducted a questionnaire survey on member states. According to the responses of 43 members and the European Union, the legal protection of their geographical indications can be divided into three types: laws focusing on business practices, trademark law, and special protection [2] .

For the registration of geographical indications in the target market country, it is necessary to study the relevant legal system of the country and register it according to the requirements and procedures issued by the country. In the United States, for example, geographical indications are protected mainly by trademark law: the Lanham Act. Chinese applicants may apply to the United States Patent and Trademark Office (USPTO) for the registration of geographical indications. When filing an application for trademark registration to the USPTO, you must specify the application bases, such as “use in commerce” and “intend-to-use” [3] . Since trademark law in the United States emphasizes the use of trademarks, it is necessary to provide a lot of evidences of their use in applying for a registered trademark. If Chinese geographical indications are to be registered as trademarks in the United States, the applicants must pay attention to the collection of evidence, such as contracts, advertisements, publicity materials and so on [4] .

The advantage of applying for protection in target market countries is that it is direct and effective. However, it is very time-consuming to register single or multiple geographic indications in many countries or regions. In addition, it is difficult for the applicants who are not familiar with the legal environment of other countries. Therefore, this method is more suitable for geographical indications with the following characteristics: the sales area of the products of geographical indications are relatively concentrated, the operators have rich international trade experience and are abundant in financial expenses.

2.2. Protection through Bilateral Agreements

To sign bilateral agreements on the protection of geographical indications is a traditional means which plays an active and important role in the protection of geographical indications. In this aspect, the European Commission is the most active practitioner. Through bilateral agreements, the EC supplements the provisions of the TRIPS Agreement and protects its specific geographical indications such as wine and spirits (Table 1).

Bilateral agreements can be divided into two types: one is a specialized agreement and the other is a comprehensive agreement. The former refers to the agreement specifically or mainly signed to solve the problem of geographical indications protection, while the latter refers to the content of the agreement including, but not limited to, the protection of geographical indications. In the case that the TRIPS agreement fails to reach a consensus on multilateral system of notification and registration of geographical indications, to sign bilateral agreements is an inevitable choice.

2.2.1. The Project of Mutual Recognition and Protection of Geographical Indications between China and the European Union

As to geographical indication protection, there is a common ground between China and EU. First, both China and the EU are among the world’s top economies, they trade closely and each one is an important trading partner of the other. Statistics shows that China is the EU’s largest import trading partner in 2017. The EU imports from China accounted for 20 percent of its total imports from outside the region. China is also the second largest market of the EU’s export,

Table 1. Some of the bilateral agreements the EC signed for GIs protection.

accounting for 11.1 percent of the EU’s total exports outside the region [5] . Both China and the EU have a long history and splendid culture, both are rich in geographical indication resources and attach importance to the protection of geographical indications. Moreover, the products of geographical indications of China and the EC are complementary to each other to a certain extent. For example, the EU’s wines sell well in China, while Chinese tea and ceramics have been popular in Europe since ancient times. In view of this, China-EU cooperation in geographical indications can achieve a win-win effect. There are three landmark events in the China-EU project of mutual recognition and mutual protection of geographical indications.

One event is the “ten plus ten” project between China and the EU. On September 5, 2005, a Memorandum of Understanding on Geographical Indications was signed between the General Administration of Quality Supervision, Inspection and Quarantine of the PRC and the Department of Trade of the EU. Based on the Memo, China and the EU will list10geographical indications respectively, and give mutual recognition and protection to the other side. This project was formally started in 2007. By November, 2012, through the joint efforts of government agencies, experts and manufacturers of geographical indication products from China and the EU, twenty geographical indications (Table 2) has been approved and protected, which marks the successful completion of the project. This is the first time that the EU accepted the application for protection of 10 geographical indications from other country, which marks a historic breakthrough in international cooperation on geographical indications.

The other event is the “a hundred plus a hundred” project. Based on the “ten plus ten” project mentioned above, China and the EU started the “100 + 100”

Table 2. List of the GIs protected in China―the EU “ten plus ten” project.

Source: The General Administration of Quality Supervision, Inspection and Quarantine of the PRC.

project since 2011. According to the project, each side has submitted 100 geographical indications respectively based on the product popularity, economic benefits, quality and technical requirements. The implementation of “a hundred plus a hundred” project marks the “ten plus ten” project has been recognized by both China and the EU. A list of the 200 geographical indications between China and Europe (Appendix 1) was published on the official website of the European commission on June 2, 2017.

The third event is the negotiations of Agreement between China and the EU on cooperation of Geographical Indications which has been started from March, 2011. Sixteen rounds of negotiations have been held so far, which shows how arduous the negotiations are. On July 16, 2018, Li Keqiang, Premier of the State Council of the People’s Republic of China, and Donald Tusk, President of the European Council, and Jean-Claude Juncker, President of the European Commission, held the twentieth China-EU leaders’ meeting in Beijing and issued A Joint Statement on the Twentieth China-EU Leaders’ Meeting. The joint statement shows that the two sides agreed to speed up the negotiations on the agreement and committed to make substantial progress in the next round of negotiation. The negotiation will be ended y the end of October, 2018 if possible.

The Agreement between China and the EU on cooperation of Geographical Indications will be the first agreement between the governments of China and the EU on the protection of geographical indications. After signing the agreement, China’s products of geographical indication will enter the EU market more conveniently. It has great influence on expanding the export of Chinese agricultural products, and expanding the popularity of Chinese agricultural products brands in international market, and promoting the development of rural economy of China.

The agreement will be of great significance in the protection of geographical indications in China. This shows that China’s protection system of geographical indication product conforms to internationally recognized standards, and its examination procedures and technical requirements can fully link up with countries and regions with developed geographical indications protection systems, such as the European Union. It will play an important role in perfecting the construction of the special protection system of geographical indications in China, improving the level of intellectual property protection, and enhancing the international image of China’s intellectual property protection.

The project explores an effective way for the overseas protection of geographical indications in China. The basic path of the project is: to launch a pilot project at first, in this step, several geographical indications are listed, then to expand the list, and finally to sign a formal agreement. This practice can be extended to the cooperation with other countries and regions.

2.2.2. Bilateral Agreement on Free Trade Area

China has also actively explored the use of bilateral agreements to protect geographical indications. Since 2003, the Chinese government has vigorously promoted the construction of free trade zones, and has signed 16 agreements1 with Switzerland, South Korea and other countries, involving 24 countries or regions.

Among the agreements that have been signed, four are related to geographical indications (Table 3), special articles are provided. Another one which is worth mentioning is the Agreement with New Zealand. In the definition of “intellectual property” in chapter 12, article 159, the agreement provided that “geographical indication” is one of the intellectual property rights defined in the TRIPS Agreement, but there are no more detailed contents, nor is there a list of mutually recognized geographical indications like in the other three.

Through the agreement of free trade area to protect the geographical indication, China has accumulated some experience and achieved preliminary results. However, some problems have also emerged. First, the number of agreements relating to geographical indications protection is small, accounting for merely 25% of the total. Second, the number of geographical indications on the list of relevant agreements is small, too. The third is that the level of protection on these geographical indications is not high enough, only basic protection consistent with the TRIPS Agreement are provided. Finally, the names of the listed geographical indications are not uniform in language and characters, some in Chinese characters, some in Latin letters, while others in both Chinese characters and Latin letters.

Table 3. Bilateral agreements concerned GIs China signed in FTA.

Source: Website of China Free Trade Area Network.

At present, agreements between China and Norway, Sri Lanka, Israel and other countries are under negotiations, agreements with Singapore, New Zealand, and other countries are in the process of being upgraded, free trade zones with Canada, Bangladesh and other countries have also been in study, the above problems are expected to be solved in the future.

2.2.3. Bilateral Agreements under the “Belt and Road” Initiative

The “Belt and Road” initiative refers to the cooperative initiative proposed by China’s President Xi Jinping in 2013to build the “Silk Road Economic Belt” and the “21st Century Maritime Silk Road”. The initiative aims to build a community of shared interests, shared future and shared responsibility for political mutual trust, economic integration and cultural inclusion by developing economic partnership with countries along the belt and road through the existing bilateral and multilateral mechanisms and regional cooperation platforms. Since the “Belt and Road” initiative was proposed, it has received high attention from the international community, and relevant countries have actively participated in it. In the speech at the opening ceremony of the Boao Forum for Asia 2018 annual conference on April 10, 2018, Xi Jinping said that more than 80 countries and international organizations have signed cooperation agreement with China over the past five years.

Intellectual property is an important issue in the construction of “Belt and Road” construction. In July, 2016, a high-level conference on intellectual property rights was held in Beijing, during which a round table conference on intellectual property rights was held. An agreement was reached on the “Joint Initiative on Strengthening Cooperation in the Field of Intellectual Property Rights of Belt and Road Initiative”. On May 14, 2017, during the Summit Forum on International Cooperation of “Belt and Road”, The National Intellectual Property Administration of the PRC and the World Intellectual Property Organization signed the Agreement Between the Government of the People’s Republic of China and the World Intellectual Property Organization on Strengthening Cooperation on Intellectual Property Rights of “Belt and Road” in Beijing. This is the first document on cooperation in intellectual property rights relating to “Belt and Road” signed by the Chinese government and international organizations. It marks that the two sides will carry out comprehensive and in-depth cooperation around the construction of “Belt and Road”, and promote the development of intellectual property rights in countries and regions along belt and road.

The construction of “Belt and Road” international cooperation platform has brought opportunities for the overseas protection of China’s geographical indications. While establishing the system of integration of intellectual property rights in the “Belt and Road” region, it is necessary to consider the national situation of different countries concerned and the individual requirements in the protection of intellectual property rights. China has signed bilateral treaties or memorandums with various countries, which can satisfy the interests of both sides, achieve the goal of cooperation [6] . With the further development of the Silk Road Economic Belt, the freight express from China to central Asia and Europe will be more unimpeded than moow, which will save a lot of time and cost for the export of China’s goods, more and more products of geographical indications will go abroad.

2.3. Protection of Geographical Indications in Regional Agreements

WTO has been playing an important role in promoting the globalization of world economy since its establishment. However, with such a huge trade framework, it is difficult to coordinate the interests of all parties, regional trade agreements therefore have come into being. By 2017, 647 Regional Trade Agreements have been notified to the WTO, of which 433 have entered into force [7] . Some of the Agreements were designed to protect geographical indications, for example, the North American Free Trade Agreement, the Bangui Agreements, and Resolution 486 on the Common System of Intellectual Property of the Andean Community and so on.

There are at least two advantages in protecting geographical indications through regional agreements. The first one is cultural proximity. The difference of dietary culture, for instance, between countries in the same region is smaller than that of the countries far away from each other. For example, Chinese consume more green tea than black tea, while Britons prefer black tea. European and American consumers like cheese, but Chinese consumers are in less demand. The second advantage is that the geographical proximity is convenient for transportation. Products of geographical indications are mostly agricultural products, and a considerable proportion of that are fresh products, the timeliness of delivery is essential, transportation between regional countries have remarkable advantages in this aspect.

At present, China is actively conducting negotiations on regional agreements, such as the Free Trade Agreement Between China, Japan and South Korea, and the Regional Comprehensive Economic Partnership Agreement. Taking the second one as an example, the consultation on this agreement were launched in 2012, with the first round of formal talks held in March, 2013 in Seoul, South Korea, 13 rounds of negotiations have been held so far. If the agreement were reached, this free trade area will become the world’s third largest economic trade area after the North American Free Trade Area and the European Union. In the negotiation of geographical indication related clauses, if the geographical indications list is involved, it is suggested that each side should carefully choose the products. The complementary products which mean there are no competing products in other sides are preferred. Moreover, if a geographical indication of one side has become a generic name in other sides, it is better not to be listed [8] .

2.4. Protection of Trademarks by International Registration System of Madrid

Before the establishment of a multilateral system of notification and registration of geographical indications under the TRIPS Agreement, the Madrid system for international registration of trademarks is an effective way to protect geographical indications in overseas market.

The Madrid system is a system for the international registration of trademarks administered by WIPO. The system is governed by two international treaties: one is Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as “the Madrid Agreement”) which was concluded in Madrid in 1891, and the other is Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as “the Madrid Protocol”), concluded in Madrid in 1989. There are 55 parties to the Madrid Agreement and 101 parties to the Madrid Protocol. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated contracting parties. China became one of the contracting parties to the Madrid Agreement on October 4, 1989, and that to the Madrid Protocol on December 1, 1995.

At present, the consciousness of Chinese enterprises to register their trademarks through the Madrid system is not strong enough (Table 4), which leads to many Chinese trademarks have been rush registered in other countries. According to incomplete statistics, nearly 15% of Chinese well-known trademarks have been rush registered abroad and more than 100 cases of trademark infringement abroad every year [9] , such as the trademark “Zhenjiang Xiang Cu” in Korea and the trademark “WANGZHIHE” in Germany. Although some Chinese companies finally get back the trademark rights through international litigation, a high cost was paid. For example, Beijing Wangzhihe Food Group is a Chinese corporation that specializes in the production and sales of sufu, it applied for the registration of trademark “WANGZHIHE” to the German Patent and Trademark Office in July, 2006, but was noticed that this trademark had already been registered by German OKAI Company. After negotiation but reached no agreement, Wangzhihe Group sued OKAI Company and eventually won the lawsuit in Apr, 2009 [10] . Besides the expenses Wangzhihe Group paid for this lawsuit, the cost of time which is nearly 3 years is also very high.

Some enterprises are forced to change their infringed trademarks to avoid the

Table 4. Madrid application of China’s trademarks (2008-2017).

Source: Annual Development Report (2008-2017) of China’s Trademark Strategy issued by State Administration for Industry & Commerce of the People’s Republic of China.

high cost of money and time for redundant lawsuit procedures, this resulted in a huge loss of intangible assets. “LEGEND”, for example, once a famous trademark for computer, was substituted by “LENOVO” because it was registered in many countries [11] . The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. The cost of registering a trademark is obviously more economical than the cost of safeguarding the rights of the trademark after being infringed [10] . It can be said that registration is the best protection.

To register a geographical indication through the Madrid system, the applicants should register it as trademark in China firstly, then apply to the International Registration Division of the Trademark Office of China for international registration. After the formality examination, the International Registration Division applies to the International Bureau of WIPO for registration. If there are no irregularities in the application, the International Bureau of WIPO records the trademark in the International Register, and publishes the international registration in the official publication of the Madrid system, WIPO Gazette of International Marks, and notifies it to each designated Contracting Party.

To protect geographical indications through the Madrid system has many advantages. The first one is linguistic simplicity. The applicant may apply in English or French to the WIPO International Bureau through the trademark office of the home country, without having to apply separately to multiple countries in accordance with the laws relating to the protection of their geographical indications in multiple languages. Second is the economy of expenses. There is no need to pay several different fees to multiple countries, but a set of fees to the WIPO International Bureau. Third is the convenience of management. International registration through the Madrid system is valid for 10 years and may be renewed for a further period of 10 years after payment of the prescribed fee. The Madrid system has similar benefits to trademark maintenance and renewal. Likewise, if there is a change in name and/or address, it may be recorded with effect for all designated Contracting Parties by means of a single procedural step.

3. Conclusions and Future Research

3.1. Conclusions

All protection systems are the reflection of economic interests. The protection of geographical indications is more of an issue of economy than an issue of intellectual property or of consumer protection [12] . China has abundant resources of geographical indications which may become the strengths of China’s intellectual property rights [13] . To improve the protection level of China’s geographical indications in foreign countries and to protect China’s economic interests, the following aspects are suggested.

Firstly, as a member of the TRIPS Agreement, China has the obligations to fulfilling the requirements of the agreement. On the other hand, China has the right to pursue the reasonable interests. China should take a more active part in the formulation of international protection rules. In the negotiations of article 23.4 of the TRIPS Agreement, China should insist on extending the multilateral system of notification and registration for wine and spirits to other geographical indications.

Secondly, National Intellectual Property Administration who is responsible for the management of geographical indications in China should strengthen the propaganda of the international registration of geographical indications, enhance the awareness of international protection of the operators, support and encourage them to carry out international registration.

Thirdly, strengthen the investigation into overseas infringement on China’s geographical indications. In this regard, we can study the experience of India by setting up a specialized foundation and contract the task of infringement surveillance around the world to international agencies [14] . Once the infringement such as rush registration occurs, the right owner should immediately file opposition according to the laws of the host country. As to abuse and other infringements, the right owners should file a lawsuit or through consultation and use other ways to protect their legitimate rights and interests.

Finally, we should sum up the experience of the project of “mutual recognition and protection of geographical indications between China and the EU”, actively launch bilateral or multilateral negotiations with other countries, sign special agreements on protection of geographical indications and carry out win-win cooperation.

3.2. Future Research

This article brings forward several solutions to protect China’s geographical indications in overseas markets, but the solutions are generally from a macroscopic perspective, more detailed measures are needed to study in the future. In addition, none of the above solutions is universal, China’s geographical indications should be divided into different categories according to certain variables, and a certain solution is applied to a certain category to get more effective protection.

Appendix 1

List of the GIs protected in China-the EU “a hundred plus a hundred” project

Source: Official website of Department of Agriculture and Rural Development of the European Commission.

NOTES

1The 16 agreements include 13 agreements China signed with the following countries or association: Maldives, Georgia, Australia, Korea, Switzerland, Iceland, Costa Rica, Peru, Singapore, New Zealand, Chile, Pakistan, the Association of Southeast Asian Nations. The other three ones are: The Cross-Strait Economic Cooperation Framework Agreement, the Mainland and Hong Kong Closer Economic Partnership Arrangement, as well as the Mainland and Macau Closer Economic Partnership Arrangement. (Source: official website of General Administration of Customs of China)

Cite this paper
Zhu, Y. (2018) Solutions to Overseas Protection of China’s Geographical Indications. Open Journal of Social Sciences, 6, 146-160. doi: 10.4236/jss.2018.610012.
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