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05 April 2021
In 2016 the French National Institute of Origin and Quality (INAO) filed an invalidation action against the trademark 罗曼尼·康帝 (a Chinese transliteration of 'Romanée-Conti'), which had been registered by a Chinese natural person, Wu Liping, in Class 33. The INAO cited Article 16(1) of the Chinese Trademark Law 2001:
In case… the designated goods of a trademark containing a geographical indication does [sic] not originate from the place as indicated by the geographical indication, [and] thus misleads the public, the trademark shall not be registered and its use shall be prohibited. However, where the registration is obtained in goodwill, it shall remain valid.
The Trademark Review and Adjudication Board (TRAB), under the China National Intellectual Property Administration, rejected the invalidation request because Romanée-Conti had not been registered as a geographical indication (GI) in China. Therefore, the TRAB stated that it could not be granted protection.
The INAO brought an administrative proceeding before the Beijing IP Court. On 28 September 2018 the Beijing IP Court overturned the TRAB decision. The registrant and the TRAB appealed before the Beijing High Court.
The INAO submitted as evidence two editions of the Official Journal of the French Republic to prove that France had recognised Romanée-Conti as a controlled designation of origin by decree on 11 September 1936. The journal also stated the specifications of Romanée-Conti wines, including:
Both courts found the official journal admissible.
The Beijing High Court held that the evidence presented proved that:
Therefore, on 10 June 2019 the court of appeal ruled that 罗曼尼·康帝 should also be protected as a GI of wines. As the disputed trademark 罗曼尼·康帝 contained the Chinese characters that were found to have a stable corresponding relationship with the GI Romanée-Conti, it violated Article 16(1) of the Trademark Law.
The Beijing High Court affirmed that:
although [Romanée]-Conti has not been applied for registration as a geographical indication trademark in China, registration is not a prerequisite to invoke protection of geographical indications in the Trademark Law.
This suggests that unregistered foreign GIs may be granted protection in China.
For further information on this topic please contact Mei Huang or Xiaoning Pu at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email (firstname.lastname@example.org or email@example.com). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.
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