Two marks that are shared by design, and the rules that keep them honest

A collective mark and a certification mark are unusual on the Chinese register. The person who owns the mark is not the person who uses it, and there are usually many users. A collective mark is registered by an association, a guild or another organisation and used by its members; a certification mark is registered by a body that certifies and used by traders whose goods or services meet the standards the registrant controls.

That distance between owner and user is the whole design, and it is also where the problems come from. In December 2023 the China National Intellectual Property Administration (CNIPA) published the Provisions on the Registration and Administration of Collective Marks and Certification Marks, issued as Office Order No. 79, with effect from 1 February 2024. The same office published an accompanying explanation of the Provisions. The Provisions run to 28 articles and deal with registration, day-to-day administration, proper use and public services. This article sets out what the explanation and the regulation text say, written for the foreign associations, cooperatives, trade bodies and certification organisations that hold marks of this kind.

The gap the Provisions were written to close was practical rather than doctrinal. Marks of this kind had become important in regional economic development and in rural revitalisation. At the same time, catering marks that incorporate a place name drew public criticism when their use went wrong, and the explanation records the need to state the registration requirements and the boundary of the rights more clearly, and to strengthen the registrant's own management duties. The explanation also records a second pressure, that the existing rules did not meet the practical needs of cluster development in goods and services.

Why the registrant carries management duties

Because registrant and user are different people, and generally several users rather than one, the Provisions place the burden of order on the registrant. The registrant administers the mark day to day under its own rules of use: granting members and other parties the right to use the mark; publishing the list of members and users, together with the rules of use, in good time; checking whether use conforms to those rules and whether goods meet the quality requirements; and removing from the scheme, without delay, any user whose use does not conform.

Two limits are absolute in their terms. A collective mark may not be licensed to a party outside the collective. A certification mark may not be used by its own registrant on goods or services that the registrant itself provides. Both follow from the mark's meaning: a collective mark tells the market that the user belongs to the group, and a certification mark tells the market that a third party has verified the goods.

Charging is permitted. A registrant may collect reasonable fees for administering and working the mark, on fair and reasonable principles, with the amount, the method of payment and the payment period settled between the parties.

The user has obligations too. Having completed the formalities set by the rules of use, a user may use the mark, and must ensure that goods bearing it meet the quality requirements in those rules. A user may use the collective or certification mark alongside its own registered mark. One restriction is territorial: goods produced outside the geographical area may not carry a geographical indication that has been registered as a certification mark or a collective mark.

Place names: public resource, narrow permission

Place names are where the Provisions are most specific, and the reason is that a place name belongs to everyone in the place. A collective or certification mark that contains a place name must be distinctive and easy to recognise, and it must not damage the public interest.

The explanation then draws the line that matters most to traders outside the collective. Where a mark contains a place name, other parties may still use that name honestly. The explanation lists the situations: a place name used within a business name or trade name, and a place name used on an ingredient list or a package to state where the product and its raw materials come from. Such use must serve factual description, must fit ordinary commercial practice, and must not breach other legal requirements.

Two further situations are treated in the same way. Where a party uses a place name or a product name contained in a collective or certification mark in the course of factual description — on a local snack or dish, or in an online product listing — and the public is not misled, that use is honest as well. The explanation also addresses how a party may honestly use a place name, a product name or a generic name of goods where it forms part of a registered geographical indication.

Honest use is not a free pass. A party exercising it may not act in bad faith or disparage the reputation of the mark, disturb the order of market competition, or harm the legitimate interests of the registrant.

Working the mark, and what the state provides

The final group of provisions is about making the mark earn its keep. A registrant is expected to strengthen brand building, to promote and standardise use of the mark, to raise its value and to uphold commercial reputation, so that the local speciality industry develops.

Public bodies have a part to play. A local government or an industry authority may allocate public resources according to local economic needs and strengthen regional brand building. An intellectual property administration is to support regional brands in obtaining legal protection, and to guide registration, administration and protection work with a view to high-quality economic development. CNIPA is to improve the publication of information on collective and certification marks and to provide a public search service, while local intellectual property administrations are to spread and share that information so that parties can find it easily.

The Provisions are administered alongside an earlier measure of the former State Administration for Industry and Commerce, issued as Order No. 6, whose subject matter overlaps in part. Where the two measures differ on the registration, administration or working of collective and certification marks, the later Provisions apply; enforcement matters continue to follow the earlier measure. The new name was chosen deliberately, so that the public can tell the two apart.

Frequently asked questions

Who may own a collective mark or a certification mark in China?

A collective mark is registered by an organisation — an association, guild or similar body — and used by its members. A certification mark is registered by a body that certifies goods or services against standards it controls, and is used by traders whose goods or services meet those standards. The registrant and the user are different parties, and there are usually several users.

Can a registrant use its own certification mark?

No. A certification mark may not be used by its registrant on goods or services that the registrant itself provides. A collective mark is subject to a parallel limit: it may not be licensed to a party outside the collective. Both restrictions follow from what the mark tells the market — membership in one case, third-party verification in the other.

May a registrant charge a fee for use of the mark?

Yes. A registrant may collect reasonable fees for administering and working the mark, on fair and reasonable principles. The amount, the method of payment and the payment period are settled between the parties rather than fixed by the regulation.

When can another trader still use a place name contained in the mark?

Where a mark contains a place name, other parties may use that name honestly — in a business name or trade name, or on an ingredient list or package to state the origin of the product and its raw materials. Such use must be for factual description, must follow ordinary commercial practice, and must not breach other legal requirements.

Can goods made outside the area carry the mark?

Where a geographical indication has been registered as a certification mark or a collective mark, goods produced outside the geographical area may not carry it. Users must also ensure that goods bearing the mark meet the quality requirements set out in the registrant's rules of use.

Official sources

Related reading

Holding or applying for a collective or certification mark in China? Ask us about the requirements and we will set out what the filing involves.