27/05/2020 – China, CNIPA, Genericity: oriGIn comments to the “Guide on evaluating generic names in the context of GIs protection procedures”

Legislation Law PoliciesEarlier this year, the China National Intellectual Property Administration (CNIPA) – the authority in charge of all Intellectual Property Rights (including GIs) in China since 2019 – has published a proposal of “Guide on evaluating generic names in the context of GIs protection procedures” open to public comments.

oriGIn prepared and submitted to the CNIPA the following comments: 

 
  1. Article 3: Deleting the second sentence, as generic products do not have specific qualities.
  2. Article 6 might generate legal uncertainty. One of the basis of GIs laws is that, once a name is protected, it should not become subsequently generic. This because the solid defence and enforcement provided by GIs laws prevents the “generalization” of protected names. This has been recognised in the WIPO Geneva Act of the Lisbon Agreement. As a result, oriGIn suggested redrafting art. 6 or deleting it altogether.
  3. Article 7.1: Making a specific reference to the Chinese law. Following the territoriality nature of Intellectual Property Rights (IPRs), genericity must be evaluated based on the national law.
  4. Article 7.3: Adding a reference to the consumption of products in the Chinese Market.
  5. Article 7.4 seems not to consider the territorial nature of IPRs. The fact that the products referred by the same name of the GI are produced outside the place of origin could be relevant to evaluate the genericity of the GI name in China only if they are imported and consumed in relevant quantities in China, so that the perception of national consumers is influenced. As a result, oriGIn suggested deleting or reformulating art. 7.4.
  6. The formulation of article 7.5 might generate legal uncertainty. As a result, oriGIn suggested giving more details about other factors or deleting this article.
  7. Adding a criterion (article 7.6) which make specific reference to the importance of taking into account the perception of Chinese consumers in assessing whether a name has acquired a generic nature in China. Independent market surveys should be mentioned in this respect. 

oriGIn will keep monitoring this process and inform its members about the final version of the CNIPA “Guide on evaluating generic names in the context of GIs protection procedures” in China.

 

 

 

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