Unauthorized use of geographical indications beware of infringement
2022-04-18
Reading guide To the north of Changsha, Hunan and to the east of Xiangjiang River, there is a small town called zhangshugang. It produces "zhangshugang pepper", which is called "sky high price pepper". Its market price is 75 times that of ordinary pepper, and it is often "difficult to find one pepper". Recently, the second instance of Changsha intermediate people's court in Hunan Province concluded a case of infringing the trademark right of geographical indications by taking "zhangshugang pepper" as the dish name. The court held that after the geographical indication trademark is registered, the trademark can be used only after the goods meet the specific conditions and fulfill the declaration and other relevant procedures. Therefore, the use of "zhangshugang pepper" as the dish name in a restaurant is an improper use, which constitutes an infringement of the exclusive right to use the registered trademark. This judgment clarifies the concept, use conditions and proper use of geographical indication certification trademark, which has played a positive role in standardizing the market and promoting the development of local industries. Origin of "zhangshugang pepper" "Zhangshugang pepper" is a specialty of Zhangshu Town, Xiangyin County, Hunan Province. The price can reach more than 260 yuan per kilogram at the beginning of listing every year, which is still in short supply. In 2013, the Pepper Industry Association of Zhangshu Town, Xiangyin County registered the geographical indication certification trademark of "zhangshugang pepper". The approved commodity of the trademark is pepper (plant) in category 31, and the registration is valid from January 21, 2013 to January 20, 2023. The rules for the use of the geographical indication certification trademark of "zhangshugang chili" records the conditions for the use of the geographical indication certification trademark of "zhangshugang chili": the production area covers 8 villages, including Wenyi new village, Longjia new village, Liuzhuang village, Xingyuan village, Xiangyuan village, baijingang village, jintaishan Village and zhangshugang community in zhangshugang, Xiangyin County; The products using the geographical indication certification trademark of "zhangshugang pepper" must be pepper planted and produced within the administrative area of Zhangshu Town, Xiangyin County; Producers and operators who meet the above use conditions may apply for the use of the geographical indication certification trademark of "zhangshugang pepper". Take "zhangshugang pepper" as the dish name With the increasing popularity of "zhangshugang pepper", fake versions of "zhangshugang pepper" are emerging one after another in the market. On March 26, 2020, the staff of Pepper Industry Association in Zhangshu Town, Xiangyin County chose some dishes for consumption according to the menu provided by the restaurant in the catering store operated by a catering company. Among them, a dish called "zhangshugang pepper" costs 35 yuan. The Pepper Industry Association of Zhangshu Town, Xiangyin County believed that the catering company violated its exclusive right to use its registered trademark, so it filed a lawsuit with the people's Court of Changsha County on August 18, 2020, requiring the restaurant to immediately stop the infringement and compensate for economic losses and rights protection expenses. The plaintiff submitted relevant contracts to the court of first instance to prove the promotion and retail unit price of "zhangshugang pepper" (ranging from 88 yuan to 288 yuan according to different seasons). In this regard, the catering company believes that the goods it sells have legal sources, and submitted two delivery notes stamped with the seal of "a food firm in Liuyang City". The documents show that the time is March 22, 2020 and March 27, 2020 respectively. The commodity name includes zhangshugang pepper, the quantity is 5 and 6 respectively, and the unit price is 13 yuan. Infringement of registered trademarks Changsha County Court of first instance held that the catering company's behavior constituted an infringement of the exclusive right to use the registered trademark of "zhangshugang pepper" No. 11056297 of Pepper Industry Association in Zhangshu Town, Xiangyin County, so it ordered it to stop the infringement and compensate 10000 yuan for economic losses. The catering company believed that it should not bear tort liability and appealed to Changsha intermediate people's court. After hearing the case, Changsha intermediate people's court held that the geographical indication certification trademark is a special commercial sign, which is usually expressed in the way of "geographical name + general product name". In this case, the appellant used "zhangshugang pepper" on the menu as the dish name. In general, the dish names on the menu are used to distinguish different dishes, not different sources. Usually, the dish name only adopts the method of "food name or its combination" or "food name + cooking techniques" (such as "fish head with chopped pepper", "cold cucumber", etc.), which is enough to distinguish different dishes without involving the specific food origin, unless the quality of the food is related to the specific origin. The alleged infringement logo is "zhangshugang pepper", in which "Gang" has the same pronunciation as "Hong Kong". When the relevant public see the logo, it is easy to mistake "zhangshugang" for "zhangshugang". Even when the appellant states the goods sold in the appeal, it is also expressed as "zhangshugang pepper". The expression of the sued infringing logo is consistent with the expression "geographical name + product name" commonly used in the certification trademark of geographical indications. When the relevant public sees the logo, it is easy to think that the pepper comes from zhangshugang. The taste, spicy degree and other qualities of the pepper are related to the natural factors or geographical factors in zhangshugang, which is the role of the certification trademark of geographical indications; The appellant's intention of using "zhangshugang pepper" as the dish name is also to distinguish the pepper from the general pepper and remind consumers that the pepper used in the dish comes from zhangshugang, so this way of use is the use of trademark. Since the function of geographical indication certification trademark is to prove the specific quality of the goods, the trademark can be used only after the goods meet the specific conditions and fulfill the declaration and other relevant procedures. Even if the pepper involved in the case did come from zhangshugang, the appellant only had the right to use the place name of "zhangshugang" properly, so this way of use was not used properly. The appellant used the dish name of "zhangshugang pepper" to sell dishes, which constituted an infringement of the appellant's exclusive right to use the registered trademark No. 11056297. As for the defense of legal source, the court held that considering the popularity and price of "zhangshugang pepper", the appellant's business scope and mode of use, it can be determined that the Appellant was not in good faith when selling the commodity, so its defense of legal source cannot be established, and it should bear the responsibility of compensation for losses. In conclusion, the second instance of Changsha intermediate people's court rejected the appeal and upheld the original judgment. (Tao Chen, Cheng Jing, sun Shuang) Referee analysis Scope of exclusive right and prohibition right of geographical indication trademark Geographical indications refer to signs indicating that a commodity comes from a certain region, and the specific quality, reputation or other characteristics of the commodity are mainly determined by the natural or human factors of the region. They can be applied for registration as certification trademarks or collective trademarks. As the intellectual property system most closely related to the agricultural industry, the effective judicial protection of geographical indication trademark is conducive to the brand construction of local agricultural products and characteristic products, and to consolidate the legal basis for rural revitalization, so as to promote high-quality and efficient agriculture, prosperity of farmers and promote agricultural and rural modernization. Geographical indication trademarks are usually expressed in the form of "geographical name + general product name". For example, "Tongguan roujiamo" and "Xiaoyao town hu la soup", which caused heated discussion at the end of last year, as well as the well-known "Wuchang rice" and "West Lake Longjing". Compared with ordinary trademarks, geographical indication trademarks have certain particularity: in terms of the function of trademarks, geographical indication trademarks weaken the identification characteristics of ordinary trademarks (commodity trademarks and service trademarks) on the source of goods or services to some extent, and focus on the proof of the origin, raw materials, manufacturing methods, quality or other specific quality of goods or services. Geographical indication trademarks are not as specific as ordinary trademarks in identifying the source of goods, but may point to a group of qualified commodity providers, and the trademark management and use rules guarantee specific quality standards, carrying the goodwill of groups in specific areas; As far as the subject is concerned, the registrant of geographical indication trademark is an organization that has the ability to supervise a certain commodity or service, and the user is a unit or individual that meets the use conditions. Therefore, the application, registration and management of geographical indication trademark are slightly different from that of commodity trademark and service trademark. Based on this, the geographical indication trademark registrant must disclose the relevant use conditions and application procedures through the use management rules, so that the relevant subjects can apply for and obtain the right to use the certification trademark. The reason why geographical indications can be registered in the form of certification trademark or collective trademark is that the specific quality, reputation or other characteristics of a certain type of general products identified by geographical indications can basically be attributed to the natural factors such as climate, geology, soil and raw materials of the production place and the corresponding human factors such as production technology, processing technology and local proprietary technology, It shows the special quality of a certain type of products from the region. In a sense, geographical indication trademark actually brings public resources into the protection scope of private rights, but the protection of geographical indication trademark is not equal to the monopoly of public resources. Therefore, we should reasonably determine the scope of the exclusive right and prohibition right of geographical indication trademarks in order to balance the public interests and the legitimate rights and interests of trademark owners. Article 6 of the regulations for the implementation of the Trademark Law of the people's Republic of China stipulates that if a geographical indication is registered as a certification trademark, the natural person, legal person or other organization whose goods meet the conditions for using the geographical indication may require the use of the certification trademark, and the organization controlling the certification trademark shall allow it. Where a geographical indication is registered as a collective trademark, the natural person, legal person or other organization whose goods meet the conditions for using the geographical indication may request to participate in the group, association or other organization that registers the geographical indication as a collective trademark, and the group, association or other organization shall be admitted as a member in accordance with its articles of Association; If it is not required to participate in a group, association or other organization that registers the geographical indication as a collective trademark, it may also use the geographical indication properly, and the group, association or other organization has no right to prohibit it. Article 18 of the measures for the registration and administration of collective trademarks and certification trademarks stipulates that the above-mentioned proper use of the geographical indication refers to the proper use of the place names in the geographical indication. Therefore, on the one hand, if the goods do come from a certain place of origin, the relevant subjects can apply for the use of the trademark in accordance with the use management rules published by the trademark registrant; The geographical names in the geographical indication trademark can also be used properly without permission, that is, the prohibition right of the geographical indication trademark should not be extended to the behavior of prohibiting others from using the geographical names properly; On the other hand, in terms of use, the above legitimate use is also limited to the use of "place names", which shall be used in good faith and with reasonable care, rather than the complete expression of "geographical name + general product name". (outlook new era)
Edit：Luo yu Responsible editor：Wang xiao jing
Source：People's Court Daily
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