For geographical indications (GIs) that have obtained trademark registration, the scope of protection as trademarks differs from that of ordinary registered trademarks, and protection for GI trademark rights is limited. On the one hand, the owner of a GI trademark cannot refuse the legitimate use of the GI by producers or sellers of goods originating from the designated GI region—even without authorization, they may still use it. On the other hand, because a GI contains a place name, others may use the place name descriptively and truthfully in the ordinary way. This provides clear guidance for GI trademark right holders in rights protection and also delineates a clear scope of use for GI users.
A geographical indication is a sign that indicates that a given good originates in a particular region and that the specific quality, reputation, or other characteristics of the good are primarily determined by the natural or human factors of that region. GIs typically adopt the format “place name + generic name of the product.” Given that a GI contains a specific place name, the GI administrator cannot prohibit others from reasonably using that place name. The reasonable use of a place name is also a common defense raised by alleged infringers in GI-related infringement cases. After a GI is registered as a certification mark or collective mark, it can be protected under trademark law. Using a GI on products that do not meet origin or particular quality requirements is suspected to constitute trademark infringement. Using the place name contained in a GI descriptively, if untrue, is suspected to constitute false advertising and falls under unfair competition.
Case One
In the dispute over infringement of trademark rights between the Aksu Region Apple Association and a certain fruit and vegetable supermarket in Suihua City, the Aksu Region Apple Association is the owner of GI certification trademark No. 5918994, which is used to certify the origin and specific quality of apples. Without permission, the defendant supermarket used the “Aksu Apples” sign extensively on the packaging of apples it sold, misleading consumers, and highlighted “Aksu Apples” in its sales promotion.
The court held that the “Aksu” apples sold by the defendant were labeled on the cartons as “from Xinjiang” and “produced by the core base of Xinjiang Aksu crystal-sugar-heart,” but did not indicate a specific place of origin, address, telephone number, etc. The defendant also failed to appear and present evidence proving that the apples originated from the Aksu region or that it had the right to use the “Aksu” trademark. The defendant’s prominent use of the word “Aksu” on the outer packaging as the trademark for the goods would lead the relevant public to believe that the goods originated in the Aksu region, causing confusion with the Aksu apples for which the plaintiff holds trademark rights, and thus constituted infringement of the plaintiff’s No. 5918994 trademark.
This case shows that where permission from the trademark owner has not been obtained, prominent or distinctive trademark use of a GI, coupled with the absence of evidence proving that the product actually originates from the geographical area of the GI, constitutes trademark infringement.
Case Two
In the dispute over infringement of trademark rights between the Yangshan Honey Peach Farmers’ Association of Huishan District, Wuxi City, and Chen Mouyuan, the Association is the owner of the “陽山” trademark No. 2016462, designated in Class 31 for peaches. The defendant, operating a Pinduoduo shop, sold goods titled “Authentic Wuxi Qicai Yangshan Honey Peaches Fresh Fruit 250g, 15 pieces, in-season peaches, extra-sweet fuzzy peaches [to be shipped by August 31].” The plaintiff claimed trademark infringement and unfair competition. The defendant argued that the title merely described the product’s origin as Wuxi Yangshan—a normal description of origin—and that the goods indeed came from Yangshan Town, Wuxi City, thus no infringement. The defendant submitted two certifications issued by the Fengcheng Honey Peach Professional Cooperative to prove that the goods came from Yangshan.
The Shanghai Intellectual Property Court pointed out that the key to determining trademark infringement lies in whether the honey peaches sold by Chen Mouyuan actually originated in Yangshan Town, Wuxi City, as stated, and whether this would cause confusion among relevant consumers.
The court noted that the scope of trademark protection obtained by a GI through registration as a certification or collective mark is limited. If the specific goods indeed originate from within the geographical area approved for the GI, then—absent contrary evidence showing the goods do not possess the specific qualities required by the GI—it should be presumed that the goods meet the conditions for using the GI, and producers and sellers of such goods have the right to legitimately use the GI. After analyzing the evidence, the court found that during July–August 2020, the honey peaches sold by Chen Mouyuan were procured from the Fengcheng Honey Peach Professional Cooperative. During July–August 2020, the peaches sold by Chen came from Yangshan Town, Wuxi City, and Chen had the right to legitimately use the wording “Yangshan” to indicate the origin of the peaches. However, for other periods of sale, there was insufficient evidence to prove that the peaches also originated within the geographical area approved for the Yangshan GI, and thus the promotional conduct during those other periods constituted infringement.
In this case, the court made clear that the scope of GI protection as a trademark is limited and that use of a GI does not require authorization by the trademark owner. As long as the goods truly originate in the GI region and meet the GI product quality requirements, the producers and sellers of the goods may use the GI.
In addition, with respect to the specific qualities of goods produced in the geographical area of the GI, a presumption applies: if the specific goods indeed originate from within the geographical area approved for the GI, then—absent contrary evidence showing that the goods do not possess the specific qualities required by the GI—it should be presumed that the goods meet the conditions for using the GI, and the producers and sellers of such goods have the right to legitimately use the GI.
Based on these two points, in this case, for the honey peaches sold by Chen in July–August 2020, since they came from Yangshan Town, Wuxi City, Chen had the right to directly use “Yangshan” without authorization from the trademark owner, i.e., the GI administrator.
Case Three
In another case concerning Yangshan honey peaches, namely the dispute over infringement of trademark rights between the Yangshan Honey Peach Farmers’ Association of Huishan District, Wuxi City, and Xinyi Ganmou E-Commerce Co., Ltd., the defendant Ganmou Company operated two shops on Pinduoduo selling goods titled “Authentic Wuxi Yangshan Variety Xinyi Honey Peaches Fresh Fruit 200g Gift Box, in-season freshly picked peaches” and “[SF Express in stock] Authentic Wuxi Yangshan New Baifeng Xinyi Honey Peaches 300–350g super-large soft peaches fruit.” The defendant argued that indicating “Yangshan variety” in the product name was a legitimate description and that the product name also explicitly mentioned Xinyi honey peaches, without misleading consumers, and thus did not constitute infringement. The defendant claimed that in 2006, to support the development of northern Jiangsu, Wuxi City in Jiangsu Province introduced Wuxi Yangshan honey peaches to that region as a special agricultural product, and Xinyi City in Jiangsu introduced various early-, mid-, and late-season varieties for cultivation in Xinyi City. Ganmou Company submitted a “Certification” issued by a certain bureau in Xinyi City, showing that the “New Baifeng” variety honey peaches sold in the defendant’s “Xinyi Honey Peaches Fruit Flagship Store” on the Pinduoduo platform were a variety introduced in 2014 from Huishan District, Wuxi City, to a certain mountain orchard in Xinyi City.
The Shanghai Intellectual Property Court held that the trademark at issue is a certification mark, the function of which is to certify that a product originates from a certain place or possesses specific qualities. For trademark use that does not meet the specific origin or quality requirements, the trademark owner is entitled to prohibit such use and pursue liability for infringement. In this case, although Ganmou Company claimed that the varieties it sold were indeed introduced from Huishan District, Wuxi City, its use of “Yangshan” in the product sales links exceeded the scope of normal product information description and constituted trademark use. Even if Ganmou marked the place of origin as Jiangsu or Xuzhou, Jiangsu, in the product details, using the term “Yangshan” in the product sales title would still cause consumers to confuse its goods with those of the user of the trademark at issue, thereby infringing the registered trademark exclusive right of the Yangshan Peach Farmers’ Association.
In this case, the Shanghai Intellectual Property Court further clarified that for trademark use that does not meet specific origin or quality requirements, the trademark owner is entitled to prohibit such use and pursue liability for infringement. The honey peaches sold by Ganmou Company neither originated from the geographical area designated by the “Yangshan” GI nor could their specific qualities be determined. Although some of the peaches sold by Ganmou were varieties introduced from the area where the “Yangshan” GI is located and were cultivated in Xinyi City, Jiangsu, that area is not the geographical area designated by the “Yangshan” GI; therefore, Ganmou had no right to use the “Yangshan” GI. Ganmou’s use could lead consumers to mistakenly believe that the peaches it sold were GI products of Yangshan, and thus constituted trademark infringement.
Case Four
In the dispute over infringement of trademark rights and unfair competition between a certain Rice Association and Fuzhou City XX Rice Industry Group Co., Ltd., the Rice Association is the owner of certification trademarks No. 1607996 and No. 5789043, designated in Class 30 for rice. On the defendant’s official website, images introducing its rice as having entered the CNR TV shopping channel contained the wording “Wuchang Rice National Geographical Indication Protected Product.” Its special VAT invoices included the wording “Daohuaxiang Wuchang Fragrant Rice” and “Wuchang Rice.” At the same time, the outer packaging of six rice products it operated indicated the products were “planted in Wuchang.”
After trial, the court held that the defendant’s use of the wording “Wuchang Rice” in website promotions and on invoices constituted trademark use, which would cause the relevant public to mistake the defendant’s rice as being grown in Wuchang City and possessing the specific qualities of Wuchang rice, thereby constituting trademark infringement. The defendant’s use of the wording “planted in Wuchang” on product packaging, without sufficient evidence proving that the rice originated from Wuchang City, constituted false advertising.
This case shows that for products not originating from the geographical area of the GI, prominent use of the GI in publicity constitutes trademark infringement. Descriptive use of a geographical name that does not accord with the facts constitutes false advertising and thus unfair competition.
Conversely, if the defendant could have proven that its goods indeed originated in Wuchang City, then labeling the six rice products as “planted in Wuchang” on the outer packaging would have been reasonable descriptive use, not false advertising.
According to Article 5 of the Rules for the Use and Administration of the “Wuchang Rice” Certification Mark, the geographical scope for use of the above certification mark is the paddy fields within the “C”-shaped basin in Wuchang City, irrigated by the Longfengshan Reservoir or the Lalin River and Xilang River water systems. The specific geographical scope is: east of Xichengzi Village, Hongqi Township in the Xilang River and Lalin River basins; west of the Weisha River; north of Mopanshan; and south of Shodahu Mountain.
Therefore, if the defendant could prove that the origin of the rice it sold was within Wuchang City—east of Xichengzi Village, Hongqi Township in the Xilang River and Lalin River basins; west of the Weisha River; north of Mopanshan; and south of Shodahu Mountain—then its use of “Wuchang Rice” in TV advertisements and on invoices would constitute legitimate GI use and would not constitute trademark infringement.
In Summary
The scope of protection for GIs as trademarks differs from that of ordinary trademarks, reflected in the limited protection for GI trademark rights. Specifically, this is reflected in two aspects:
On the one hand, the owner of a GI trademark cannot refuse the legitimate use of the GI by producers and sellers of goods originating from the designated GI region—even without authorization they may still use it;
On the other hand, because a GI contains a place name, others may truthfully and descriptively use the place name in the ordinary way.
This provides clear guidance for GI trademark right holders in rights protection and delineates a clear scope of use for GI users.
For natural persons, legal persons, or other organizations whose goods meet the conditions for GI use, they are entitled to legitimately use the GI contained in the certification or collective mark even without authorization by the GI trademark owner.
If specific goods indeed originate from within the geographical area approved for the GI, then—absent contrary evidence showing that the goods do not possess the specific qualities required by the GI—it should be presumed that the goods meet the conditions for GI use, and the producers and sellers of such goods have the right to legitimately use the GI.
This means that a GI trademark owner cannot enforce against all unauthorized trademark uses when protecting its rights; it may prohibit and pursue liability only for trademark uses that do not meet specific origin or quality requirements.
In addition, for others’ reasonable descriptive use of the place name in a GI—such as using the place name to indicate the origin of raw materials—if there is evidence proving the description is true, then it constitutes fair use; otherwise, it constitutes false advertising as an unfair competition act.
References:
(2021) Hu 73 Min Zhong No. 725 civil judgment.
(2021) Hu 73 Min Zhong No. 708 civil judgment.
(2021) Hei 12 Min Chu No. 42 civil judgment.
(2024) Hei Min Zhong No. 267 civil judgment.