The National Intellectual Property Administration (NIPA) recently issued the Regulations on the Registration and Administration of Collective and Certification Trademarks (hereinafter referred to as the Regulations), which guide the registrants of collective and certification trademarks to register, use, exercise and protect their rights in a standardized, reasonable, moderate and bounded manner; clarify the boundaries of rights, balance the lawful use of trademarks and the fair use by others; combine supervision and promotion, and support the development of local industries. The Regulations will come into force on February 1.

The relevant person in charge of the Department of Laws and Regulations of the NIPA (hereinafter referred to as the Department) introduced that in order to give full play to the role of collective and certification trademarks in promoting the development of local characteristic economy and enhancing the benefits of cluster industry development, and to solve the problems of unclear boundaries of rights, unclear rights and obligations of registrants and users, and maintain the orderly and fair trademark registration order and market environment, the NIPA issued the Regulations.

“This is an important measure for China to improve the legal norm system in the field of intellectual property. The Regulations have clear formulation ideas, prominent problem awareness, and clear governance orientation, which will help to better play the role of collective and certification trademarks in promoting the development of local characteristic economy and enhancing the benefits of cluster industry development.” Guan Yuying, a researcher at the Intellectual Property Research Center of the Chinese Academy of Social Sciences, said.

Clarify the management rules and use requirements

Throughout the text, the Regulations show the formulators’ attention to strengthening the management requirements for registrants and users.

In terms of strengthening the management of registrants, Article 11 of the Regulations stipulates that registrants shall implement daily management in accordance with the rules for the use and management, check whether the use behavior of others meets the requirements of the rules for the use and management, whether the goods meet the quality requirements, and timely cancel the use qualification of users who do not meet the rules for the use and management, etc. Articles 15 and 16 of the Regulations stipulate that the registrant of a collective trademark shall not permit non-members of the collective to use its collective trademark, and the registrant of a certification trademark shall not use its certification trademark on the goods it provides. Article 12 of the Regulations also stipulates the amount, payment method, and payment deadline of the use fees charged by the registrant.

Users shall ensure that the goods using collective and certification trademarks meet the quality requirements of the rules for the use and management; users may use collective and certification trademarks together with their own registered trademarks; goods produced outside the designated geographical area shall not use geographical indications registered as certification trademarks or collective trademarks… The Regulations specify the requirements for users.

“As the registrants and users of collective and certification trademarks, they should strengthen the management and use of their registered trademarks, help consolidate the foundation of the implementation and development of China’s trademark system, and play the role of trademarks in promoting economic and social development.” Wang Lianfeng, professor of the Intellectual Property School of East China University of Political Science and Law and director of the Trademark Law Research Institute, said.

Focus on hot issues and respond to social concerns

In order to indicate the origin of products and their raw materials, others use the place names contained in collective and certification trademarks in the enterprise name and ingredient list, packaging bag, etc.; others use the place names, product names and other words contained in collective and certification trademarks related to catering in the form of factual description in special snacks, dishes, menus, window displays, Internet product details display, etc. Are these behaviors legitimate use? Does the registrant of the exclusive right to use the registered trademark have the right to prohibit such behaviors?

The relevant person in charge of the Department introduced that the Regulations refine the situations of fair use, balance the interests of rights holders and the public interest, and guide the rights holders to protect their rights in a bounded manner.

“Place names above the county level or place names known to the public that apply for registration of collective and certification trademarks shall have distinctive features, easy to identify, and shall not harm the public interest. The Trademark Law reserves the possibility of public resources such as place names being collectively used by local operators for commercial activities, which can continue to exert the influence of collective and certification trademarks containing place names, or use the public effect to create emerging regional brands to promote regional economic development. However, because it contains public resource elements, it determines that the registration requirements and rights exercise norms of collective and certification trademarks are different from ordinary trademarks, especially the need to strengthen the management responsibilities of registrants, to avoid overstepping the rights protection and harming the public interest or the legitimate rights and interests of others.” Guan Yuying introduced that the Regulations specify several specific situations of fair use of place names contained in collective and certification trademarks by others, emphasizing that fair use should be for the purpose of factual description and in line with commercial practices, without misleading the public, and based on good faith and legality.

The Regulations stipulate that the registrant of the exclusive right to use the registered trademark has no right to prohibit the fair use of the place names contained in collective and certification trademarks in the enterprise name and in the ingredient list, packaging bag, etc. for the purpose of indicating the origin of products and their raw materials. The use of place names and product names contained in collective and certification trademarks in the form of factual description in special snacks, dishes, Internet product details display, etc. and without causing misleading to the public also belongs to the situation of fair use.

“This regulation strengthens the operability of the registration and use norms of collective and certification trademarks containing place names, deepens the understanding of the particularity of collective and certification trademarks by all parties, and is conducive to guiding the standardized behavior of registrants and users, maintaining the fair competition market order, and strengthening the governance of intellectual property.” Guan Yuying suggested that in the specific implementation of the Regulations, the relevant subjects should also pay attention to the difference between geographical indication collective and certification trademarks and other collective and certification trademarks with weaker connection with the natural environment, and form a more stable legal expectation.