Study On The Determination Of Generic Geographical Indications Under The Framework Of Georaphical Indication Protection

Geographical Indication(GI)is an independent type of intellectual property right(IPR)according to Agreement on Trade-related Aspects of Intellectual Property Rights(TRIPs)and Civil Code of the People’s Republic of China.In comparison to common trademarks,GIs are of weaker distinctiveness,with stronger relation to the place of origin,more heavily loaded with cultural elements and more likely to have to comply with a specific national standard.Additionally,the identity of the users of GIs is uncertain,and governments are more involved in the regulation of GIs.All of these reasons make GIs more susceptible to genericide,whose determination requires a more tailored standard compared to that of trademarks.Chapter One puts forward the definition of generic GIs and its causes.Generic GI is defined as "a GI that has lost its geographical significance as a sign and is unable to refer to quality or other characteristics attributable to a specific geographical place,and can only be used to indicate a type or category of products".Three reasons explain for the genericide of GIs,namely lack of legal protection,inaction on the part of the right holder of GIs,and the intentional designation from competitors in the sense of generic meaning(which do not involve free-riding)or improper fighting between entities from the proclaimed regions of origin concerned.The last reason is easily neglected,which calls for the attention from GI right holders.Chapter Two deals with the laws in force and judicial practice in relation to the determination of generic GIs.Under the trademark law and relating judicial interpretation,the standard of "regional genericide" instead of "nationwide genericide" is to be applied to GIs.The sui generis law of GI protection,namely Provisions on the Protection of Products of Geographical Indications and Regulation on the Agricultural Products of Geographical Indications,does not cover the determination of generic GIs.A thorough examination of relevant cases reveals that the judicial practice is beset with such problems as the application of the lower standard of "regional genericide",the ambiguity in terms of product type,the lower standard of determination in procedures of application and confirmation of rights.Specifying the provisions relating to the determination of generic GIs is not an obligation under international conventions.This has to a certain degree led to the absence of legal provisions in determining generic GIs.Regarding judicial dilemma,the need to balance the interests of all parties to a greater extent has caused the judicial authorities in China to determine that GIs and generic names could co-exist when they are dealing with cases related to the conflict between trademarks and GIs where GIs are preemptively registered as trademarks by unqualified entities.However,under such cases,the judicial authorities only need to specify that the name contained in the trademark constitute a GI in order to balance interests.Chapter Three approaches the issue of determination of generic GIs in international conventions,and the practice in countries and regions including the European Union(EU),the United States(US)and India.The international conventions only touch on the issues on a general way,failing to cover the critical issues including the concept of generic GIs,the criteria for adjudication,etc.All three countries and regions apply the criterion of "loss of geographical significance" to the determination of the generic GI,and none of them prescribes statutory generic names,but there exist some differences as well.The EU and India both regulate the determination of generic GIs through sui generis law on GI protection,while the US does so under the framework of trademark law.GIs shall not become generic in the EU,whereas there is no such provision or case law in the US and India.In the US,the perception of the majority of the relevant public is decisive,whereas in the EU GI will not be determined as a generic name as long as the number of relevant public who do not perceive it as such remains significant.Besides,language is an issue in the determination of generic GIs in the EU since the same term can be expressed differently in different national languages in the member states.By contrast,the US pays more attention to the grammar of the English language itself.For instance,the fact that the first character of a term was previously capitalized but now not capitalized anymore suggests that the term has turned from a proper name into a common name,namely a generic name.The EU has the practice of taking linkage into account when determining generic GIs.This practice is not of reference value because loss of linkage indicates that a GI does not exist anymore de facto and constitute a basis for revocation.Chapter Four takes the position that the sui generis law should be the main law for protecting GIs with trademark law as supplement.Drawing on the relevant experiences from the EU,the US and India,it is proposed that the criterion of "loss of geographical significance" should be applied to the determination of generic GIs as trademarks.In terms of geographical scope,"Daohuaxiang" Case should be taken as a guide and the criterion of"nationwide genericide" should be applied,since the circulation of GIs can extend to the whole country or even abroad irrespective of their area of production.There shall be no statutory generic GIs since the norms of different governmental departments(such as customs tariff rules,food safety regulations,etc.)may be influenced by their respective interests or just out of convenience for management and reference,and statutory standards cannot directly reflect the perception of market players.Regarding the relevant factors to be considered,China can learn from the practice of the EU and presume whether the geographical indication has been perceived as a common name by the relevant public from the product labels with a cultural elements pointing to the GI’s origin.Finally,as the management of GIs is highly involved with administrations,the link between the right holder of a geographical indication and the product is not so strong as that between the right holder of a trademark and its goods,whether the right holder is at fault can be taken into account.