Zhoushan City Aquatic Product Alliance initiated a civil action
against Beijing Shenmaren Food Sales Co. ("Shenmaren"),
on the grounds that " Zhoushan Jingxuan Daiyu" produced
by Shenmaren with the indication of "ZHOUSHANDAIYU"
prominently printed on the package would likely mislead the public
and infringe upon the exclusive right of Zhoushan City Aquatic
Product Alliance to use the mark. Zhoushan City Aquatic Product
Alliance requested Shenmaren to cease the infringement and
compensate for their losses.
Shenmaren defended that their products were made from Daiyu
("hairtail" in Chinese pinyin) in Zhoushan district, thus
they were legitimate to use "ZHOUSHANDAIYU" and such use
did not constitute infringement to the trademark right of Zhoushan
Aquatic Product Alliance. Moreover, Shenmaren claimed that they
also used their own mark "Xiaojiaolong" on the products,
and thus their use of "ZHOUSHANDAIYU" would not cause
confusion to the public. Upon hearing, Beijing First Municipal
Intermediate People's Court held that:
Whether Shenmaren infringes upon the exclusive
right of the said certification mark should not depend on the
likelihood of misleading the public on the origin of products but
the likelihood of causing misrepresentation of a given quality of
the products from that origin. Zhoushan Aquatic Product
Alliance's claim that Shenmaren's prominent printing of
"ZHOUSHANDAIYU" on the package would be likely to cause
confusion to the public and infringe the exclusive right of using
the certification trademark, was made based on a misunderstanding
of law, and Zhoushan Aquatic Product Alliance virtually mixed up
the Certification Marks and Common Trademarks. Whether the mark is
prominently used or causes confusion as to the origin are
irrelevant to the finds of infringement of Certification Mark. In
this case, the mark "ZHOUSHANDAIYU and the device" is a
geographical identification of the certification mark, certifying
that the products bearing such mark come from Zhoushan territorial
waters. Therefore, labeling Daiyu ("hairtail" in Chinese
pinyin) originated from Zhoushan territorial waters as
"Zhoushan Jingxuan Daiyuduan" is a legitimate way to use
a geographical identification and does not infringe upon the
exclusive right of Zhoushan Auqatic Product Alliance to use the
The Court therefore rejected all claims of Zhoushan Aquatic
Product Alliance. Zhoushan Auqatic Product Alliance disagreed with
this judgment and appealed to the Beijing High People's Court.
According to Article 16 section 2 of the PRC Trademark Law, Article
6 and Article 49 of the Implementing Regulations of the Trademark
Law on geographical indication, and Article 18 section 2 of the
Administrative Measures Concerning the Registration of Collective
Marks and Certification Marks on "legitimate use of
geographical indication", Beijing High People's Court held
that Zhoushan Aquatic Product Alliance, as the registrant of the
said certification mark, should permit natural person, legal person
or other organizations to use the certification mark on goods that
has met the requirement for use of said geographic indication.
Moreover, any natural person, legal person or other organization
who does not request authorization to use the certification mark
may also duly use the geographic indication on the products it
sells if such products met the condition, and Zhoushan Aquatic
Product Alliance does not have the right to prohibit such use.
However, Zhoushan Aquatic Product Alliance has the right to request
the cease of the production and to bring a claim for infringement
of certification mark when the goods bearing a geographical
indication do not originate in the region indicated. The evidence
presented by Shenmaren was insufficient to prove that the goods
they sold originated from Zhejiang Zhoushan territorial waters.
Under such circumstances, marking "Zhoushan Jingxuan
Daiyuduan" on the products was regarded as an illegal use of
the certification mark and such use constituted infringement to the
exclusive right to use the said certification trademark. Shenmaren
should bear the legal responsibilities to cease the infringing
activities and to compensate the losses of Zhoushan Aquatic Product
Alliance. The Beijing High People's Court therefore supported
the claims of Zhoushan Aquatic Product Alliance. This is the first
certification mark infringement case, and the judgment has
indicative effect on clarifying the criteria in finding
infringement of certification mark which differ from those of other
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