China issues draft AMDs to collective marks and certification marks

The China National Intellectual Property Administration (CNIPA) on June 7 began to solicit public comment on the draft amendments to the Measures for the Administration and Protection of Collective Marks and Certification Marks (《集体商标、证明商标管理和保护办法》), indicating the consultation window would stay open until July 21. The statute was enacted in 1994, bearing the then title the Measures for the Registration and Protection of Collective Marks and Certification Marks (《集体商标、证明商标注册和管理办法》), and underwent a revision in 2003.


The Trademark Law of the People’s Republic of China and the Implementing Regulations of the Trademark Law (《商标法实施条例》) were both overhauled in 2013 and the Trademark Law was further revised for a fourth time in 2019. The draft amendments to the Measures were initiated to accommodate and conform to the changes in the aforesaid governing law and statute. China introduced the concept of collective mark by following the Paris Convention for the Protection of Industrial Property (《保护工业产权巴黎公约》), which China became a contracting party to in 1985, and the concept of certification mark by following the Madrid Agreement Concerning the International Registration of Marks (《商标国际注册马德里协定》), which China became a contracting party to in 1989. The codification of the enforcement and protection of collective marks and certification marks in China was officially inaugurated by the enactment of the Measures for the Registration and Protection of Collective Marks and Certification Marks in 1994.


A spade of abusive and malicious litigation arising out of the use of collective marks such as 潼关肉夹馍 (pinyin: Tongguan Roujiamo), 逍遥镇胡辣汤 (English: Xiaoyao Town Spicy Soup), and 库尔勒香梨 (English: Korla Fragrant Pear) in 2021 has accelerated the amendment of the Measures starting in 2020. The Tongguan Roujiamo Association sued over 300 roujiamo snack bar operators nationwide for infringing a collective mark No. 14,369,120 it registered for goods in Class 30 in 2015. The mark was applied for by the organization to protect a variety of roujiamo, a Chinese hamburg or meat sandwich, made following an allegedly thousand-year-old recipe originating from Tongguan county, Weinan city, Shaanxi province.


Different rulings, some of which were even in stark conflict due to inconsistent application of statutes related, were handed down by courts adjudicating some of the lawsuits. The furor ended in the opinion delivered by the Supreme People’s Court (SPC) in December that the Association shouldn’t have brought legal action against roujiamo snake bar operators properly owning trademarks including潼关 (pinyin: Tongguan), constituents of the collective mark owned by the Association, and its public apologies to all accused operators and the general public and lawsuit withdrawals ensued. That’s almost exactly the case with the owners of the other two disputed collective marks.


Despite the SPC’s welcome intervention, some thorny fundamental legal questions about collective marks in China are still left unanswered. For one thing, the great genericness of certain names such as Tongguan Roujiamo and Xiaoyaozhen Hulatang challenges the necessity of their registration as collective marks. In addition, more stringent criteria examining agencies are supposed to apply to the vetting of credentials of representative trade organizations such as the Tongguan Roujiamo Association as applicants for registration of collective marks and certification marks. Besides, an upstream concern prevails about the criteria of characteristics goods or services must have to be identified as protectable by collective or certification marks, which pivot and predicate efforts of their enforcement.


The CNIPA notes that the amendments have been designed to address fallouts from the Measures falling behind the reality that more and more Chinese businesses dealing in agricultural goods and specialty foods are consciously utilizing collective marks and certification marks to gain competitive edges. They will hit some of the questions left by the aforementioned cases of national proportions right on the nail. For instance, Article 5 Paragraph 2 of the draft amendments provides that locations of origin, ingredients, manufacturing methods, quality standards, and other characteristics of goods or services protected by collective marks and certification marks shall be examined as part of the administrative responsibilities, which are absent in the current version of the Measures.


The full text of the draft amendments is available here.