Trial Docket: (2015) JingZhiXingChuZi No. 6629
Appellate Docket: (2017) JingXingZhong No. 3288
City of Beijing
[Headnotes]
Registration for a geographic appellation mark should not be proved, by law, if the geographic boundaries are not certain; The applicant for registration of geographic appellation mark carries a heavier duty of candor when submitting application documents than an applicant in an ordinary application for goods or services, the breach of which will remove the justification for the trademark registration, as "registration obtained through fraudulent means" or "registration obtained through other improper means."
[Synopsis]
Plaintiff (Appellee): Qimen Red Tea Association of Qimen County (The Association)
Defendant (Defendant at trial): State Administration for Industry & Commerce, Trademark Review & Adjudication Board (The Board)
Third Party (Appellant): Anhui GuoRun Tea Co., Ltd. (GuoRun)
On September 28, 2004, the Association filed a trademark application for registration under No. 4292071 for "Qimen Red Tea and Design" (in designated color) (the disputed mark) which, upon examination, was approved for "tea, tea substitute" etc., in class 30, effective from November 7, 2008 through November 6, 2018. On December 27, 2011, GuoRun filed a petition with the Trademark Review & Adjudication Board (the Board) for disputing the registration, noting that "Qimen Red Tea" is produced not only in Qimen County, but also in the vicinity such as Guichi, Dongzhi, Qimen, Shitai, Qianxian. For this reason it raised the dispute over the registration.
On October 19, 2015, the Board issued its decision of trademark invalidity for Registration No. 4292071 "Qimen Red Tea." ShangPingZi [2015] No. 84747 (the Decision at issue), holding that the Association in filing the application for registration of "Qimen Red Tea" as a geographic appellation, designated the geographic appellation as within the administrative region of merely the area of Qimen County, in contradiction to historical realities, and in breach of the duty of candor for filing application for trademark registration, thus triggering Article 41 of the Trademark Law of 2001 for obtaining registration through fraudulent means. In sum, the Board, in compliance with Article 41(1) of the Trademark Law of 2001, Article 44(1)(3), and Article 46 of Trademark Law of 2013, decided: the disputed trademark shall be declared invalid.
Dissatisfied with the decision, the Association instigated judicial review of the administrative proceedings with Beijing Intellectual Property Court. The court decided at trial: (1) The decision is reversed; (2) The case is remanded to the Board for a new decision. GuoRun was not satisfied with the trial decision, and appealed. The People's High Court found that the Association with full knowledge that the geographic scope for "Qimen Red Tea" is under dispute failed to inform the trademark registration authorities of the dispute, and by failing to take action when GuoRun withdrew its opposition per request of Anhui Second Bureau of Commerce, in attempted hope that the trademark application be approved for registration by competent authorities. Such activities are precisely the "other inappropriate means to obtain registration." Therefore, the appeals court decided: (1) The trial decision is reversed; (2) All complaints of the Association are dismissed.
[Judge's Comment]
Geographic appellation is an indicia of a product's geographic origin having certain quality, reputation or other unique features which are more or less derived from natural or cultural elements in the original location. This is a case of first impression for judicial review of the administrative process in approving trademark registrability for geographic appellation in terms of its geographic boundaries, a core issue for protection of geographic appellations. At the appellate level, the court clarified two issues: one, registration for a geographic appellation mark should not be proved, by law, if the geographic boundaries are not certain; two, the applicant for registration of geographic appellation mark carries a heavier duty of candor when submitting application documents than an applicant in an ordinary application for goods or services, the breach of which will remove the justification for the trademark registration, as "registration obtained through fraudulent means" or "registration obtained through other improper means."