Pudong Intellectual Property Office Investigated and Handled the Case of Infringement of the Exclusive Right to Use Geographical Indication Trademark "BORDEAUX"

December 7, 2021

Brief of the case:

The Trademark No. 19564618 "BORDEAUX" is a collective geographical indication trademark registered on Wine by the Conseil Interprofessionnel du Vin de Bordeaux (CIVB). The exclusive right period is until July 20, 2027.

On April 25, 2019, the Intellectual Property Office of Pudong New Area, Shanghai, received a clue from the Administration for Market Regulation of Chengdu that Shanghai Feitong Trading Co., Ltd., exhibited, at the China Food & Drinks Fair, the wine alleged of infringing the exclusive right to use the registered Trademark "BORDEAUX". According to the investigation, starting from July 2018, Feitong entrusted Yantai Aoweiyiman Wine Co., Ltd. to process and produce the "BURKE LAFAEL" series of dry red wines. Feitong provided wine bottles, wine caps, wine bottle labels, inner and outer boxes and other materials. Among them, the design and production of the wine bottle labels were entrusted to Shenzhen David Gospel Packaging Design & Printing Co., Ltd. based on the patterns provided by Feitong, and then the labels were handed over to Yantai Aoweiyiman Wine Co., Ltd. for labelling. Feitong used the text "BORDEAUX" on the labels of wine bottles without authorization, and obtained an illegal business revenue of 385,900 yuan.

The case-handling authority determined that the act of Feitong in production and sale of the above-mentioned infringing goods constituted an infringement under Article 57(1) of the Trademark Law. Due to the large quantity of goods involved and the high value of the case, the case had reached the standards for criminal prosecution, and the case-handling authority transferred it to the public security agency.

On June 4, 2020, the People's Court of Pudong New Area, Shanghai, made the criminal judgment in accordance with the law, and the defendant Shanghai Feitong Trading Co., Ltd. was convicted of counterfeiting registered trademarks, and a fine of 100,000 yuan was imposed; the defendant ZHUGE xx (the actual operator of Shanghai Feitong Trading Co., Ltd.) committed the crime of counterfeiting registered trademarks and was sentenced to a set term of imprisonment of 1 year and 6 months and a suspension of 1 year and 6 months, with a fine of 50,000 yuan being imposed; the seized wine with the counterfeit registered trademark was confiscated; and the defendant ZHUGE xx was prohibited from engaging in food production, sales and related activities during the probation period.

Expert Comments:

Geographical indications are precious resources and fortune of a specific area. The production and sale of goods with counterfeit geographical indications will seriously damage the reputation of geographical indications and infringe upon the legal rights and interests, such as the competitive advantage, of producers and operators in specific regions. The protection of geographical indications is not only a manifestation of China's fulfillment of its obligations under international treaties for the protection of intellectual property rights, but also an important measure to promote its rural revitalization strategy. There is a view that the infringement object of the crime of counterfeiting registered trademarks under Article 213 of the Criminal Law does not include collective trademarks and certification trademarks. The investigation and handling of this case demonstrates and clarifies that collective geographical indication trademarks belong to the infringement object of the crime of counterfeiting registered trademarks, which reflects the "equal protection" of geographical indication trademarks at home and abroad in China, and reflects the effective operation of the cross-regional cooperation mechanism for trademark administrative law enforcement and the effective connection between trademark administrative enforcement and criminal justice in China. (HUANG Pulin, the Legislative Affairs Commission of the National People's Congress, Fuzhou, Jiangxi)