Keemun TM: A storm in a teacup

By Ding Jinling, Wanhuida Peksung IP Group
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Keemun is a famous Chinese black tea produced in the mountain areas of the Dongzhi, Shitai and Qimen counties in Anhui province. The area has been traditionally recognized as the growing region of Keemun by various literature and historical records, and the tea growers and producers in the region have helped to shape the Keemun black tea production technique.

丁金玲 DING JINLING 万慧达北翔知识产权集团 律师 Attorney-at-Law Wanhuida Peksung IP Group
丁金玲
DING JINLING
万慧达北翔知识产权集团
律师
Attorney-at-Law
Wanhuida Peksung IP Group

On 28 September 2004, the Keemun Black Tea Association (KBTA) filed an application for the registration of the name “祁门红茶” ( Keemun Black Tea) as a certification trademark in class 30, to protect this geographical indication. The application designated exclusively Qimen county as the growing region of Keemun black tea. This was based on an affidavit of the Anhui Provincial Agriculture Commission, dated 2004.

On 27 October 2008, Anhui GuoRun Tea Industrial (GuoRun), a producer of Keemun tea, filed an opposition against the certification mark. GuoRun disagreed with the definition of the growing region set by the KBTA and cited an updated affidavit of the Anhui Provincial Agriculture Commission, dated 2007, which included the areas of Dongzhi, Guichi and Shitai in the Keemun growing region.

In 2009, while the opposition was still pending at the China Trademark Office (CTMO), the Anhui Provincial Administration for Industry & Commerce intervened. A meeting was convened to reconcile the dispute between KBTA and GuoRun, and facilitate the smooth registration of the certification mark. Under the mediation of the Anhui administration, GuoRun agreed to withdraw its opposition and KBTA agreed to file a modification of the geographic region designated by the certification mark. Holding up its end of the bargain, GuoRun withdrew the opposition and the certification mark was registered on 7 November 2008.

However, KBTA reneged on its promise. On 27 December 2011, GuoRun filed for the cancellation of the certification mark with the Trademark Review and Adjudication Board (TRAB), arguing that the registration of the disputed mark had been obtained by fraudulent or other illegitimate means (article 41.1 of the 2001 Trademark Law).

On 19 October 2015, the TRAB ruled to invalidate the certification mark. Then the KBTA brought an action before the Beijing IP Court.

The trial court held that in order to justify the finding that the disputed mark is registered by using fraudulent or illegitimate means, it is necessary to establish the fact that the trademark registrant has: (1) deliberately deceived the CTMO to seek an unfair competition edge or illegal interests; and (2) fabricated or concealed facts and submitted a forged application or other documentations to the CTMO. On 24 April 2017, the court ruled in favour of the KBTA and rescinded the TRAB’s invalidation decision.

GuoRun then appealed to the Beijing High Court. The court of appeal opined that due to the strong technicality in the determination of the geographic range of the geographical indication (GI) certification/collective trademark, the CTMO, in practice, only conducts formality examinations on the filing documents of the marks involved.

Under such circumstances, the GI trademark applicant bears a higher obligation and must act in good faith when submitting filing documents. The applicant is obligated: (1) not to produce forged application files; and (2) to give a full and accurate account of the circumstances.

Obtaining a registration by filing fabricated files, or by resorting to other deceptive means, falls under the “fraudulent” circumstance as provided by article 41.1 of the Trademark Law. Obtaining registration by choosing to neglect the obligation of giving the CTMO a full and accurate account of the circumstances falls under the circumstance of using “other illegitimate means” as provided by article 41.1 of the Trademark Law.

The court found that notwithstanding the clear knowledge of the existing controversies over the determination of the Keemun production region, the KBTA had failed to inform the CTMO, which breached the good faith principle and fell under the circumstances as provided by article 41.1 of the Trademark Law.

On 25 December 2017, the Beijing High Court overturned the first instance judgment. This excellent decision emphasizes the very general concept of good faith, which is most welcome.

The question arises, however, because of the invalidation of the Keemun certification mark, can anybody use the name to sell tea?

The author does not believe this could happen. Despite the invalidation of the Keemun certification mark, unauthorised use of the mark could still constitute infringement and unfair competition over an unregistered GI trademark. It may be recalled that the Beijing No.1 Intermediate Court once granted GI protection over the unregistered Champagne trademark in a civil litigation.

Besides, this is the first administrative litigation involving a dispute over the geographical range of a GI mark. It sheds some light on the remedial approaches to be taken in similar cases:

1. Where the trademark registrant is open to negotiation, if a consensus can be reached and sanctioned by the competent authority, the registrant may amend its rules governing the use of the GI mark, designating the uncontested region agreed by both parties, and submit the same to the CTMO for examination and approval;

2. If the trademark registrant refuses to amend the rules, an interested party may file an opposition or invalidation, citing articles 10.1.7 and 44.1, or article 7 of the 2013 Trademark Law, depending on the circumstances of the case;

3. Theoretically, an interested party may also institute a civil lawsuit against an infringer, provided that evidence suffices to prove that, although not covered by the established geographical range of the GI mark involved, it deserves the same GI mark protection against the infringer; and

4. Another alternative would be for an interested party – in case the trademark registrant sent out a cease and desist letter – to lodge a non-infringement suit requesting the court to clarify the geographical ambiguity and confirm that it is entitled to use the GI mark.

Ding Jinling is an attorney-at-law at Wanhuida Peksung IP Group

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