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I. Preface
As an obligation to afford protection to Geographical Indications in accordance
with the provisions of the Trade-Related Intellectual Property Rights
(hereinafter "TRIPS"), and to strengthen its protection mechanism
for Geographical Indications after its accession to the WTO, the ROC,
on 28 November 2003, amended the Trademark Act by inserting Article 72,
which prescribes that "any person who wishes to exclusively use a
mark to certify the characteristics, quality, precision, place of origin
or other matters of another person's goods or services shall apply for
certification mark registration."
As suggested by the term itself, "Geographical Indication" (hereinafter
"GI") relates to a geographical name. Therefore, it is necessary
to stipulate these operational points governing the circumstances under
which a geographical name can be used as a geographical indication and
then be registered as a certification mark in order to prevent another
person from using the same.
2. Definition
2.1 Definition of GIs
In accordance with Article 22 of the TRIPS, the term "GIs" used
in these Points refers to the indications that identify a good as originating
in the territory of a member, or a region or locality in that territory,
where the given quality, reputation or other characteristics of the good
are essentially attributable to its geographical origin. Where an application
for registration of a GI as a certification mark is filed under Article
72 of the Trademark Act, the mark itself shall represent regional geographical
names, or be reprentative signs and words in relation to geographical
names so as to indicate adequately the geographical origin, as well as
shall satisfy the requirements of geographical indications. All GIs that
are approved for registration as certification marks will be included
in a list of protected GIs of the ROC for publication use. In addition,
the list may be disclosed in exchange for other countries' lists of protected
GIs under international bilateral or multilateral protection agreements.
2.2 Elements of defination for GIs
| (1) |
An indication used to identify the geographical origin
of a good
The indication itself must refer to the geographical name of a particular
region or geographical significance whether composed of words, phrases,
symbols or emblematic images, and identifies certain goods (from raw
materials, processing to packaging) in connection with that particular
region. |
| (2) |
Originating in the territory of a member or a region
or a particular locality in that territory
The size of a geographical area, can be the territory of a member,
a single administrative region, or a combination of different administrative
regions of the territory, or even a particular region where origin
of the raw material is grown or the relevant goods are processed,
produced or manufactured. |
| (3) |
The link with the given quality, reputation or other
characteristics of the goods relevant to the geographical origin
Under this element, a particular or excellent quality, reputation
or other characteristics of the goods shall be attributable to their
geographical origin, namely, all the production stages of the goods,
such as gathering raw materials and processing, are relevant to that
geographical origin to some extent, which generally refers to the
environmental factors of that geographical region, including natural
factors such as climate, soil, altitude, area of irrigation, wind
and water quality, or human factors such as traditional or manual
skills in that geographical region. |
2.3 Determination on the Link between the Goods and the Geographical
Origin
In respect of the requirement of a particular or excellent quality, reputation
or other characteristics of the goods essentially attributable to their
geographical origin, any of the following conditions shall be satisfied:
| (1) |
All stages of production (gathering raw materials,
processing, packaging) are in the designated region. |
| (2) |
The raw materials (such as tea leaves) must have originated
in the designated region. For an exception, a small proportion of
raw materials may come from other regions. |
| (3) |
A certain production stage that gives a product its
distinctive characteristics must occur in the designated region. |
3. Application
3.1 Legal bases
| (1) |
Article 72 of the Trademark Act prescribes, "Any
person who wishes to exclusively use a mark to certify the characteristics,
quality, precision, place of origin or other matters of another person's
goods or services shall apply for certification mark registration.
Only a juristic person, an organization or a government agency that
is capable of certifying another person's goods or services shall
be eligible to apply for certification mark registration. The applicant
defined in the preceding paragraph who engages in business of the
goods or services concerned shall not apply for certification mark
registration thereof." |
| (2) |
Article 80 of the Trademark Act prescribes unless otherwise
provided in this Chapter, the provisions of this Act regarding trademarks
shall apply mutatis mutandis to certification marks. |
| (3) |
Article 38 of the Trademarks Regulations: In applying for a certification
mark registration, the applicant shall submit an application specifying
the following information:
- Goods or services to be certified;
- Contents to be certified by the certification mark;
- Requirements for labeling the certification mark;
- Applicant's qualifications or capability to do the certification;
- Manners governing the use of the certification mark; and
- A declaration made by the applicant stating that he/she does
not engage in the manufacturing and marketing of the goods or
services concerned.
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| (4) |
Article 40 of the Trademarks Regulations prescribes
that the provisions of the Regulations relating to trademarks shall
apply mutatis mutandis to certification marks. |
3.2 Filing process
The protection of a GI is different from that of the general indication
of source or the description of a place of origin. GIs that are filed
as certification marks under the Trademark Act shall be subject to the
provisions of the Trademark Act regarding application for registration
of certification marks.
3.2.1 Applicant
Under Article 72-2 of the Trademark Act, only a juristic person, an organization
or a government agency that is capable of certifying another person's
goods or services shall be eligible to apply for certification mark registration.
In order to prevent the public from raising doubt about an applicant's
capability to fairly and reasonably manage the use of certification marks,
the applicant's capability to certify shall be examined on a case-by-case
basis with respect to the goods to be certified and the contents to be
identified by the certification mark (specification governing the use
of the certification mark).
3.2.2 Written Applications
In order to satisfy the requirements for a GI, a written application shall,
in addition to complying with Article 8 applicable mutatis mutandis to
Article 40 of the Trademarks Regulations, contain the representation of
the proposed certification mark and indicate the following information
according to Article 38 of the Trademarks Regulations:
3.2.2.1 Representation of the certification mark
In applying for a certification mark registration, the applicant shall
submit an application accompanied by five duplicate copies of the certification
mark representation, between 8 centimeters and 5 centimeters in length
and width. In the case of a colored trademark, two additional black and
white duplicates thereof shall be provided.
3.2.2.2 Product specifications governing the use of the certification
mark
In general, a GI signifies that the given quality, reputation or other
characteristics of the goods has/have a significant relevance to the geographical
origin, in particular, the natural environment factors. Therefore, it
is less likely that a GI will exist with respect to services. The following
are illustrations with respect to goods. If the contents to be certified
relate to services, the nature of the services shall be taken into consideration
on a case-by-case basis. For the easy description by the public and examination,
the applicant shall provide a specification of product governing the use
of the certification mark including the following information in accordance
with Article 38 of the Trademarks Regulations:
| (1) |
Goods to be certified
The application shall specify the goods to be certified. As the
goods identified by a GI must have a particular or excellent quality,
reputation or other characteristics, the specification shall include:
- Names of the goods;
- Description stating the particular or excellent quality, reputation
or other characteristics of the goods; and
- Evidences or certificates proving that the goods have the said
quality, reputation or characteristic.
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| (2) |
Contents to be certified
In addition to the description of characteristics of the goods,
the contents to be certified by the certification mark shall include:
- Demarcation of the geographical area－the size of the indicated
geographical place includes:
1.?Geographical areas relevant to political or administrative
units:
For example, political subdivisions on maps: the largest geographical
region, for instance, the territory of the Republic of China,
followed by districts or local administrative units such as counties,
cities, villages or towns, or any part thereof.
2. Geographical areas relevant to non-political regions :
A specified region, for example, tea-growing area.
- Raw materials of the goods and their origin.
- Description of the characteristics of raw materials of the
goods: Including description in terms of the physical, chemical,
microbiological and sensory features, and relevant evidences proving
such features.
- Description of the manufacturing methods and process of the
goods: For example, effective, credible, unchangeable or recognized
production methods at local or regional areas.
- Description of special facts or factors related to the geographical
environment: The description shall state that the goods in fact
originate from the geographical region and that there is a significant
link between the quality, reputation or characteristics of the
goods and that geographical origin. For example, any description
stating that the characteristics or quality of the goods are/is
relevant to the special natural factors of the geographical origin
such as soil, climate, wind, water quality, altitude and humidity,
and evidences related thereto.
All the above contents are mainly related to the examination of
whether they comply with the substantial requirements for a GI.
Therefore, the geographical boundaries and the link between the
quality, reputation or characteristics of the goods and the geographical
origin shall be described in details, and relevant objective facts
and evidence shall be provided to further examination (see Annex).
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| (3) |
Conditions for labeling a certification mark
The applicant of a certification mark shall prescribe the conditions
for labeling the GI, describe the methods that a person may acquire
consent to the labeling of the mark, and the form of the mark that
is permitted to be used in connection with the articles or documents
related to another person's goods. Where, after the registration
of a GI as a certification mark, goods are produced within the relevant
geographical region and meet the conditions of use stipulated by
the right holder of the certification mark, a request for consent
to the labeling of that certification mark in the form and manner
as prescribed may be filed with the right holder of that certification
mark. Without good cause, all requests shall be treated in the same
manner by the right holder of the certification mark.
The conditions shall include:
- Circumstances under which the goods may be labeled with the
GI, for example, how another person acquires consent to the labeling
and the required conditions of the goods.
- Description as to the form and manner of labeling, for example,
the form of the mark that is permitted to be used in connection
with the articles or documents related to another person's goods,
and the form of the label showing the certification mark and a
detailed description stating the manner and position of the labeling.
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| (4) |
Applicant's qualifications or capability to do certification
An examination shall be carried out with respect to the business scope,
functions, personnel, organization, technology, equipment, financial
status and the form of organization of an applicant in order to verify
if the applicant has the capability to certify another person's goods.
For instance, those who apply for registration of "台灣" (Taiwan)
as a GI must be government agencies, juristic persons, organizations
or associations that are responsible for coordinating and managing
the goods concerned such that they are qualified to certify or capable
of certifying the goods, while other regional GIs may be filed by
local agencies, organizations, groups or association that have the
competency to monitor and control the same. |
| (5) |
Manner governing the use of a certification mark
The applicant of a certification mark shall state the method and
mechanism related to monitoring and controlling the use of the certification
mark. If a third party is appointed to perform the monitoring, controlling
and management of the certification mark, both the applicant and
the appointed third party's competence to do the certification shall
be examined together.
- Detailed information as to monitoring and controlling process,
for example, the name of the monitoring and controlling institute,
labeling standards, inspection methods and controlling methods.
- Monitoring and controlling methods and relevant regulations,
for example, how to conduct periodic or non-periodic supervision
and the inspection procedures, inspection standards and the time
limit for making corrections related thereto, and the consequences
of failure to correct within the given time limit.
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| (6) |
An applicant's declaration stating that he/she does not engage
in the manufacturing and marketing of the goods to be certified
or in the provision of services to be certified.
- The applicant shall prepare a declaration, stating that he/she
does not engage in the manufacturing and marketing of the goods
to be certified, and the declaration shall be signed or sealed.
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3.3 Government Fee
In accordance with the Trademark Government Fee Standards, the payable
fee is prescribed as follows:
| (1) |
Filing fee: NT$5,000 per application. |
| (2) |
Registration fee: NT$2,500 per application; if payment
is made in installments, NT$1,000 for the first installment and NT$1,500
for the second installment. |
4. Examination and Approval
An application for registration of a GI as a certification mark shall
be examined pursuant to Article 24 applicable mutatis mutandis to Article
80 of the Trademark Act to determine if there exists any of the conditions
under which a certification mark is not registrable as set forth in Article
23-1 or Article 59-4 of the same Act. Where the application is found to
be in compliance with the Act, it shall be approved for registration pursuant
to Article 25. Only after the applicant pays the registration fee within
two months as of the following date of the service of the approval decision
shall the approved trademark be registered and published and the trademark
certificate be issued.
4.1 Examination Process
Considering that this country has no individual legislation governing
the protection of GIs, an application for registration of a GI as a certification
mark shall be given the same protection as that granted to a general certification
mark, and shall be examined pursuant to the relevant provisions of the
Trademark Act. However, in examining whether a certification mark application
meets the requirements for protection as a GI, the TIPO will ask the Council
of Agriculture of the Executive Yuan (for agricultural products other
than wines and spirits), the Department of National Treasury of the Ministry
of Finance (for wines and spirits) or other competent authorities related
to the goods concerned to provide administration assistanceex officio.
The agency providing administration assistance may also offer opinions
alone or with other agencies. The TIPO will further examine the application
pursuant to the Trademark Act by taking into account the said opinions.
The mark seeking registration may still be registered as a certification
mark if it does not comply with the requirements for protection as a GI
but meets the requirements for protection as a certification mark.
4.2 Examination Matters:
| (1) |
Does the application comply with the requirements for
a certification mark application? (Relevant documents specified in
above 3.2 Written Application shall be submitted for examination.) |
| (2) |
Does the application violate the provisions of Article
23-1 of the Trademark Act? |
4.3 Notification of Amendment
In respect of the examination of a certification mark, the representation
of the certification mark and the goods sought to be certified stated
in the written application are not subject to change in order not to affect
another person's rights and interests. If a certification mark is found
not to comply with the conditions set forth in the articles governing
the use of the certification mark under above 3.2.2.2 and corrections
are made after a notification of correction is given, the filing date
thereof will remain unchanged. In addition to stating the GI characteristics
of the certification mark sought to be registered, the applicant may,
if the application is found to possibly meet the requirements for GIs,
be requested by the TIPO to make necessary amendments and then the application
will be referred to relevant agencies for their opinions. (See Annex:
Flow Chart of Application for Registration of Certification Marks)
4.4 Publication and Opposition
It is provided in Article 40 applicable mutatis mutandis to Article 80
of the Trademark Act that anyone may file an opposition with the TIPO
within three months from the publishing date of the certification mark
concerned. The protection of GIs is mainly to maintain competition order
in the marketplace and protect consumers' rights and interests. Therefore,
it is important to let the consuming public have the chance to voice,
through opposition proceedings, their opinions as to whether protection
shall be given to a particular GI.
5. Registration
5.1 Legal Effect of Registration
Where an application for registration of a GI as a certification mark
has been approved for registration, the right holder thereof enjoys the
right to prevent another person from using the GI. A person may use a
GI provided that the use complies with the conditions and manner of using
the certification mark and has been agreed by the right holder thereof.
In accordance with Article 27 applicable mutatis mutandis to Article 80
of the Trademark Act, trademark rights that have a term of ten years counting
from the publication date of a registered certification mark shall be
bestowed upon the right holder; a request for renewal may be filed within
the certification mark term; a certification mark term of ten years shall
be provided per each successful renewal. The right holder of a registered
certification mark may by law prohibit another person from abusing or
misusing the mark, or misleading others by using the same and may request
remedies for infringement of the trademark rights pursuant to Article
61 through Article 71 of the Trademark Act. The GI for wines and spirits
shall not be used in conjunction with expressions such as "the same
kind," "the same type," the same style," or "being
manufactured in imitation or the like."
As prescribed in Article 24 of TRIPS regarding international negotiations
on GIs, a member country shall protect foreign GIs by entering into bilateral
or multilateral agreements. Currently, the ROC has entered into agreements
on protection of GIs for wines and spirits with the EU, Mexico and Panama
respectively. Prior to the registration in the ROC, a domestic or foreign
GI of the said countries may preclude another person from registering
the same pursuant to Articles 23-1(11) or (18) of the Trademark Act. However,
if the GI has any false or deceptive indication, or is misleading or may
cause the public to misidentify it, or violates the provisions of the
Tobacco and Alcohol Administration Act and the Regulations Governing the
Labeling of the Alcohol Products, the relevant competent authorities of
the ROC shall ex officio take necessary actions pursuant to the relevant
law.
5.2 Use of Certification Marks
In accordance with Article 73 of the Trademark Act, the use of a certification
mark shall connote that the right holder of a certification mark, in order
to certify the characteristics, quality, precision, origin or other matters
of another person's goods or services, agrees the said person to indicate
the said certification mark on articles or documents in connection with
the said goods or services. Also, as prescribed in Article 78 of the Trademark
Act, the rights of a certification mark shall not in principle be assigned
or licensed to another person for use, nor may it be the subject of a
pledge. In order to safeguard the quality, reputation or characteristics
of the goods or services to be certified by a registered certification
mark, quality control after the registration of the certification mark
shall be exactly performed by the right holder under the product specifications
governing the use of the certification mark so as to control the use of
the certification mark and the conditions of labeling the certification
mark.
5.3 Revocation of Registration
Where a certification mark has not yet been put into use or has been continuously
suspended from use for three years after registration, the registration
thereof may be revoked pursuant to Article 57-1(2) applicable mutatis
mutandis to Article 80 of the Trademark Act. The registration of a GI
may be revoked pursuant to Article 79 of the Trademark Act if the labeling
of the mark does not comply with the conditions or manner of using the
certification mark, or the quality control process is improper, thus incapable
of ensuring the quality, characteristics or reputation of the goods to
be identified by the GI. The term "misuse" as mentioned in Article
79 refers to any of the following circumstances:
| (1) |
Where the certification mark is used as a trademark
or indicated on articles or documents in connection with the goods
or services provided by the right holder of the said certification
mark; |
| (2) |
Where the establishment of assignment, licensing, or
creation of pledge violates the law; |
| (3) |
Where the certification mark violates the product specifications
governing the use thereof; or |
| (4) |
Where the certification mark is misused otherwise,
for example, an application for registration of a certification mark
that complies with the conditions of labeling the certification mark
is given discriminatory without any good cause. |
Where the conditions of using GIs have been satisfied, the relevant
production and manufacturing method or process under certain monitoring
and controlling procedures must have acquired certain reputation, or the
characteristics or quality of the goods concerned is familiar to and trusted
by general consumers and is the major factor that affects the choice of
the goods concerned. The use of a registered certification mark must be
monitored and controlled by the right holder of the certification mark
in order to ensure the appropriateness of such use. In order to make sure
if the labeling of a certification mark complies with the manner of using
and the conditions for labeling the certification mark submitted at the
time of filing the certification mark, a complete monitoring and controlling
mechanism shall be provided to win public recognition, thus complying
with the functions of a certification mark.
The quality of goods bearing a certification mark shall be under adequate
inspection in a fair and objective manner in order to ensure their compliance
with the requirements for GIs. The formulation of standards and regulations
governing the production and manufacturing methods and process of different
agricultural products or alcohol products requires the mutual consensus
between the peasants, or the relevant institutes or organizations, of
domestic geographical region. Any manufacturer or supplier who fails to
meet the requirements, the right holder of the certification mark concerned
shall be entitled to cancel the manufacturer's or supplier's right to
use the certification mark. Any person who is allowed to label a certification
mark by the right holder thereof but considers that his/her use may not
comply with the conditions of using the certification mark, he/she may
voluntarily request canceling the right to use the certification mark,
so as to achieve the effect of proper use of certification marks.
Schedule：Flow Chart of Applications for Registration of GIs as Certification Marks
Annex: Reference product specificartions governing goods eligible to use
GIs as certification marks (standard form)
To ensure the quality, characteristics or reputation of the goods to
be identified by the protected GI, the use of the goods must be governed
by product specifications in details. In the absence of effective monitoring
and controlling mechanism to ensure the proper use of the GI, it would
relatively reduce consumers' trust in that GI and the quality of the goods
so identified.
Product specifications for applications of registrations of certification
marks shall include the following information:
| (1) |
Goods to be certified
- Name of the goods; the species, if the goods belong to a special
species.
- Description stating the particular or excellent quality, reputation
or other major characteristics of the goods.
- Evidences or certificates proving that the goods comply with
the given nature.
|
| (2) |
Definition of geographical regions where the goods
are produced |
| (3) |
Contents to be certified
n Description stating the characteristics of the goods or raw materials
thereof; including description in terms of physical, chemical, microbiological
and sensory features, for instance, features of the goods-analysis
and evaluation of smell and taste, natural alcohol content, the
stickiness of rice.
- Raw materials of the goods and their geographical origin.
- Description stating the manufacturing method and process of
the goods, for example, description as to the locally/regionally
valid, credible, unchangeable, and recognizable production methods
or special manufacturing methods.
- Production, manufacture process, or the method of cultivation
of the goods.
- Yield per hectare.
- Description of special facts or factors related to the geographical
environment: The description shall state that the goods in fact
originate from the geographical region and that there is a significant
relevance between the quality, reputation or characteristics of
the goods and that geographical origin. For example, any details
bearing out the link with the characteristics or quality of the
goods are/is relevant to the special nature factors of the geographical
origin such as soil, climate, wind, water quality, altitude and
humidity, and evidence related thereto.
- Other relevances (historical tradition, production conditions)
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| (4) |
Conditions for labeling the certification mark
- Circumstances under which the goods may be labeled with the
GI, for example, the manner of how another person acquires consent
to the labeling and the required conditions of the goods to be
labeled.
- Description as to the form and manner of labeling, for example,
the form of the mark that is permitted to be used in connection
with the articles or documents related to another person's goods,
and the form of the label showing the certification mark and a
detailed description stating the manner and position of the labeling.
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| (5) |
Manner governing the use of a certification mark
- Inspection (individual) institute.
- Detailed information as to monitoring and controlling process,
for example, the name of monitoring and controlling institute,
labeling standards, inspection methods and controlling methods.
- Monitoring and controlling measures and relevant regulations,
for example, how to conduct regular or irregular supervision and
the inspection procedures, inspection standards and the time limit
for making corrections related thereto, and the consequences of
failure to make corrections within the said time limit.
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