Case Brief:

Disputed trademark:

Main grounds provided by the petitioner: "康涅克" is the transliteration of "COGNAC", which is the Appellation of Origin/geographical indication of French eau-de-vie products, and has been legally registered and protected in the European Union, France and China as Appellation of Origin and geographical indication. The disputed trademark is a copy of the Appellation of Origin and geographical indication "COGNAC" in France, which can easily confuse and mislead consumers. The petitioner requested to announce the disputed trademark to be invalid in accordance with Article 16 and other provisions of the Trademark Law.

The respondent made response as follow: the evidence submitted by the petitioner showed that the Chinese expression corresponding to "COGNAC" is "干邑", and "康涅克" is not the Chinese translation of "COGNAC". Therefore, the disputed trademark is not directly related to "COGNAC", and does not infringe the name of "COGNAC" of the prior geographical indication. The respondent requested to uphold the registration of the disputed trademark.

Case Analysis:

The focus of this case involves the protection of foreign geographical indications in China and the protection of Chinese translation of foreign geographical indications.

In this case, it can be proved by the decree on May 1, 1936 and the decree No. 2009-1146 on September 24, 2009 issued by the French government as well as the Announcement on Approving the Protection of Geographical Indications for COGNAC issued by the former General Administration of Quality Supervision, Inspection and Quarantine of China submitted by the petitioner that "COGNAC" is protected as a geographical indication of the origin of eau-de-vie products in both China and France, and has constituted the geographical indication referred to in Article 16.2 of the Trademark Law of China before the date of application for registration of the disputed trademark.

The disputed trademark "康涅克" is the Chinese transliteration of the aforementioned geographical indication "COGNAC", and the overall compositions of the two marks are similar; the disputed trademark is designated for use on wine and other goods, which belong to the same or similar goods as the goods brandy that the petitioner's geographical indication is directed to. The evidence submitted by the petitioner is sufficient to prove that its geographical indication "COGNAC" has already gained a certain reputation worldwide including in China before the filing date of the disputed trademark. However, the evidence on file submitted by the respondent cannot prove that its designated goods are originated from the above appellation. In combination with the screenshots of the respondent's online shop, purchase records and other evidence submitted by the petitioner, it is sufficient to prove that the respondent has the subjective intention of clinging to the petitioner's geographical indication for "干邑" in actual use, which is hardly fair. Therefore, the disputed trademark, as approved for use on wine and other goods, can easily mislead the relevant public to believe that the goods are originated from the region indicated by the geographical indication or have relevant quality characteristics, which violates the provision of Article 16.1 of the Trademark Law.

The protection of geographical indications in foreign languages includes the protection of their Chinese translation. The Chinese translation of geographical indications in foreign languages is not limited to a fixed official translation, and all Chinese translation forms that can make the geographical indications reflected in the minds of the relevant public can be included in the scope of protection, including transliteration. In this case, although the respondent argued that the Chinese expression "干邑" is the Chinese translation of "COGNAC" and the petitioner also often uses "干邑" and "COGNAC" together in actual use, "康涅克", as a common Chinese transliteration of the aforementioned geographical indication "COGNAC", should be included in the scope of protection.

Typical Significance:

The specific quality, reputation or other characteristics of the goods indicated by geographical indications are gradually formed in the long history, and are the gifts of nature and the crystallization of the wisdom of the working people. This article analyzes and describes the concept, relevant laws and regulations, and the application of geographical indications through a specific case. Meanwhile, it has been pointed out that in the protection of foreign geographical indications, the scope of protection should not be limited to official translations, and other translation forms such as transliteration should not be neglected, which provides effective legal protection for geographical indications, and has positive significance for maintaining the market reputation of geographical indications, protecting the legitimate rights and interests of the consumers, ensuring orderly market competition, and optimizing the business environment. (REN Hang, LI Ying, the 8^th Review Division, Trademark Office of the CNIPA)

(Source: China Market Regulation News)