Imported Longjing Tea infringed GI Certification Mark

Longjing Tea (龙井茶), sometimes called by its literal translated name Dragon Well Tea, is a variety of pan-roasted green tea from the area of Longjing Village in Hangzhou City, Zhejiang Province. Longjing Tea is one of the top ten most famous teas in China. 

Especially, "Longjing Tea" is a Geographical Indication Certification Mark (“GI Certification Mark”) registered in China by Zhejiang Agricultural Technology Extension Center, with the registration No.5612284 covering “tea” (Class 30), valid from Dec. 7, 2008 to Dec. 06, 2028.

On Sep. 19, 2021, Shanghai Pudong New Area Court held a public hearing on the case of TWG Tea (Shanghai) Co., Ltd. (“plaintiff”) vs Pudong New Area Intellectual Property Office / Pudong New Area Government (“defendants”) for administrative penalty, and ruled in court that the plaintiff's claim was dismissed [(2021) HU 0115 XING CHU No.399]. The infringement is confirmed and so is the penalty.

Administrative Penalty: TWG was fined RMB 545,000 for selling "Longjing Tea" without authorization. TWG Tea (Shanghai) Co., Ltd. (“TWG Shanghai”) is a subsidiary of Tea brand TWG.

In November 2019, officers from Pudong New Area Intellectual Property Office went to TWG store at Century Avenue and found 11 boxes of "Shengxi Longjing Tea" and 5 boxes of "Longjing Tea" on sales. The officers seized the above-mentioned goods on site.

Later in March 2020, the officers visited the warehouse of TWG Shanghai located at Pudong New Area and seized 1129 boxes of "Longjing tea" and 178 boxes of "Shengxi Longjing tea". 



Through further investigation, the officers also founded TWG Shanghai imported tea from Singapore three times from July 2018 to July 2019, and commissioned a certain trading company located in Shanghai to deal with the relevant import procedures. As required by TWG Shanghai, the trading company produced the Chinese labels and distinctively demonstrated Chinese characters "Longjing Tea (龙井茶)" and "Shengxi Longjing Tea (盛玺龙井茶)", as well as attached them to the tea packaging of 2496 boxes, which was then transferred to the warehouse and sold by TWG Shanghai. 



As above stated, "Longjing Tea" is a GI Certification Mark, which has its usage rules and represents a specific place of origin and quality. According to Article 4 of Implementing Regulations of Chinese Trademark Law, “Where a Geographical Indication is registered as a certification mark, the natural person, legal person or other organization whose commodities meet the conditions for use of the said geographical indicator may request authorization to use the certification mark, and the organization that controls the certification mark in question shall consent.”

According to Zhejiang Agricultural Technology Promotion Center which is the right holder of "Longjing Tea" GI Certification Mark, TWG Shanghai did not obtain the authorization from them to use "Longjing Tea" GI Certification Mark. Such trademark use behavior by TWG Shanghai has constituted trademark infringement against “Longjing Tea” GI Certification Mark.

On November 2, 2020, Pudong New Area Intellectual Property Office issued an administrative penalty against TWG Shanghai, ordering the same to immediately stop the infringement against “Longjing Tea” GI Certification Mark, confiscated a total of 1,422 boxes of its unsold tea in question and imposed a fine of RMB 545,000.

TWG Shanghai was not satisfied and applied for the administrative reconsideration, while it was not supported by the Pudong New Area Government. The company appealed and filed the administrative lawsuit before Shanghai Pudong New Area Court accordingly.

Court: TWG Shanghai constituted Trademark Infringement against GI Certification Mark

After examination, Shanghai Pudong New Area Court dismissed the request from TWG Shanghai and maintained the previous administrative penalty issued by Pudong New Area Intellectual Property Office. The key issues in the Court are summarized as below:

  1. Firstly, the Court confirmed Longjing Tea has high reputation in China and its specific quality is mainly determined by the natural factors, harvesting conditions and production process of its producing areas.
  2. The plaintiff TWG Shanghai attached the Chinese label to the imported tea box, and indicated the product name as "Shengxi Longjing Tea (盛熙龙井茶)" and "Longjing Tea (龙井茶)" on such package. This kind of using behavior constituted trademark use.
  3. The plaintiff did not obtain the authorization from the right owner of "Longjing Tea", and cannot prove that the tea involved in the case was derived from the area where Longjing Tea was grown and had corresponding specific qualities based on the existing evidence. Therefore, according to Article 57 of Trademark Law, (which states that “Using a trademark that is similar to a registered trademark on the same goods, or using a trademark that is identical with or similar to a registered trademark on similar goods, which may be easily confusing, without the licensing of the trademark registrant”), the plaintiff’s behavior constitutes an infringement of the exclusive right to use a registered trademark.
  4. The plaintiff deems the label was attached before its entry to the Free Trade Zone which enjoy special position, thus it cannot be directly governed under Chinese Trademark Law. The Court deem due to the particularity of Customs policies in the Free Trade Zone, the procedures for entering are indeed more convenient. However, trademark infringements generated in the Free Trade Zone cannot be ruled out from the application of Chinese Law. Moreover, the goods involved in the case have entered and been sold in China, which still need to be regulated under Chinese Law as well.
  5. In addition, the Court deem the plaintiff’s illegal act does not constitute a condition for lightening, mitigating or exempting administrative penalty.

According to Article 60 of Trademark Law, “Where the foresaid infringement is confirmed, the administrative department for industry and commerce shall order the infringer to cease such infringement, confiscate and destroy the infringing goods and tools used in producing such goods or forging logos of the registered trademark. In the event of illegal business revenue of over RMB 50,000, a fine up to five times of the revenue may be imposed; in the event of no illegal business revenue or illegal business revenue of less than RMB 50,000, a fine up to RMB 250,000 may be imposed”.

Pudong New Area Intellectual Property Office made a penalty decision of confiscating the infringing products and imposing twice of the illegal business amount, which is in compliance with the law.




Be careful for the possible Trademark Infringement over GI Certification Mark

Generally speaking, the judgment of trademark infringement against GI Certification Mark could obey the same standard of ordinary trademark as stipulated in Article 57 of Trademark Law. However, the judgement of “confusion” shall have a certain difference due to the different identification function. In the case of ordinary trademark infringement, the “confusion” refers to the provider of goods or services, while in the case of GI Certification Marks, the “confusion” refers to the producing area of goods and related quality characteristics.

The above-mentioned case serves as a warning to the companies. When importing the goods and making corresponding Chinese labels, it is better to make a trademark clearance to analyze the possible risks.

At the same time, for GI Certification Mark owner, it is feasible and favorable to clean up the infringement activities in the market through possible actions, such as administrative complaints, civil litigation etc.