By Joy Dong
In the evolving landscape of intellectual property, few issues are as nuanced and as globally resonant as the conflict between place-name trademarks and geographical indications (GIs). As countries seek to protect both private enterprise and regional heritage, the legal overlap between these two regimes has become a focal point of regulatory and judicial scrutiny.
The Core of the Conflict
At the heart of the issue lies a deceptively simple question: Who owns a place name?
Trademarks are designed to identify the source of goods or services, often granting exclusive rights to a single entity.
Geographical indications, by contrast, denote that a product possesses qualities or a reputation due to its geographic origin, and are typically shared by a group of producers in that region.
When both systems lay claim to the same name, say, “Xiangshan” for tea or “Luzhou” for liquor, conflict is inevitable. The tension arises when a trademark containing a place name is registered by a private entity, potentially blocking the later recognition of a GI that uses the same name to represent a broader community.
The Chinese Context: A Legal Balancing Act
China’s trademark law prohibits the registration of place names above the county level, but with important exceptions. Trademarks registered before 1993, or those that have acquired distinctiveness through use, may continue to enjoy protection, even if they contain geographic terms.
Meanwhile, China’s GI system has matured through dual-track protection: via certification/collective trademarks under the Trademark Law, and via product recognition under administrative regulations. This duality has led to overlapping rights and, at times, inconsistent enforcement.
Chinese courts and regulators have increasingly leaned toward protecting GIs, especially when they are seen as representing collective interests or public resources. However, this tilt must be balanced against the legitimate rights of earlier trademark holders, many of whom have built substantial brand equity over decades.
Global Perspectives: U.S. vs. EU Approaches
United States: The U.S. treats GIs as a subset of trademarks, emphasizing the “first to file” principle. If a trademark is registered in good faith, it generally prevails even against a later GI claim.
European Union: The EU adopts a more GI-friendly stance. Under its sui generis system, GIs can coexist with earlier trademarks if there is no likelihood of consumer confusion. The EU-China GI Agreement reflects this approach, allowing coexistence unless bad faith is proven.
Lisbon Agreement (Geneva Act): This international treaty offers strong protection for GIs, even against earlier trademarks, provided the GI is recognized in its country of origin. However, it also respects prior trademark rights acquired in good faith.
Toward a Coexistence Framework
To resolve these conflicts, a few guiding principles are emerging:
1. Time Priority: Earlier rights, whether trademark or GI, should be respected, but not blindly. The formation date of a GI (i.e., when it gained public recognition) may be more relevant than its registration date.
2. Consumer Confusion: The likelihood of confusion remains a key test. If both marks can coexist without misleading consumers, coexistence should be permitted.
3. Public vs. Private Interest: GIs often represent collective heritage and regional economies. Where a trademark monopolizes a place name that holds broader cultural or economic value, courts may favor the GI.
4. Corrective Measures: Solutions such as modifying the GI name (e.g., adding administrative qualifiers like “County” or “Town”), transferring trademark ownership to local associations, or establishing usage guidelines can help mitigate conflict.
Policy Recommendations
For China: A unified GI protection regime, clearer rules on the priority of rights, and mechanisms for dispute resolution (e.g., mediation or administrative coordination) would enhance legal certainty.
For Businesses: Entities holding place-name trademarks should assess the risk of GI challenges and consider collaborative models with local producers.
For Regulators: Transparency in GI recognition, public participation, and alignment with international norms will be key to balancing innovation with heritage protection.
Conclusion
The intersection of geographical trademarks and GIs is not merely a legal puzzle: it’s a reflection of how societies value identity, commerce, and fairness. As China and other jurisdictions refine their frameworks, the goal should not be to choose one system over the other, but to harmonize them in a way that respects both private initiative and public legacy.
Cover photo by T.H. Chia on Unsplash