The Dilemma of Certification Marks in China: A Critical Analysis of Distinctiveness and Systemic Risk

Introduction: Navigating the Challenges of Current Practice

Within the intricate framework of Chinese intellectual property law, certification marks stand out as one of the most theoretically debated and practically uncertain areas. I am currently representing a leading organic certification organization in a case that highlights the significant ambiguities affecting this field. My client, a specialized body that provides organic certification for agricultural products in collaboration with third-party testing institutions, has long used a registered certification mark to demonstrate adherence to stringent organic standards. This mark has been registered in China for many years and serves as a trusted symbol of quality and compliance in the agricultural industry.

However, the security of this protection was recently undermined when a competitor filed an invalidation proceeding against the certification mark with the China National Intellectual Property Administration (CNIPA). In a decision that reveals a fundamental misunderstanding, the CNIPA ruled that the certification mark lacked distinctiveness. We have since escalated the matter to administrative litigation. While the details of the case remain confidential, the legal arguments involved underscore a broader systemic disconnect within Chinas Trademark Law. Through this litigation, it has become clear that the Chinese legal framework governing certification marks is experiencing a significant identity challenge. The law attempts to fit these unique marks into a regulatory model designed for ordinary trademarks, resulting in contradictions that threaten the rights of foreign companies and certification bodies operating in China.

This article seeks to examine these contradictions, identify the logical inconsistencies in applying the concept of distinctiveness to certification marks, and provide guidance for foreign entities navigating this complex environment.

I. Structural Challenges: Misclassification and Regulatory Gaps

To fully grasp the current risks, it is essential to consider the foundational classification of trademarks within the Chinese legal system. Classification is fundamental to legal clarity; without a consistent standard, legal application inevitably becomes chaotic. Yet, Article 3, Paragraph 1 of the China Trademark Law creates a paradox by categorizing registered trademarks into four types: trademarks for goods, service marks, collective marks, and certification marks.

From a logical perspective, this classification conflicts with the principle of a unified standard. Trademarks for goods and service marks form a comprehensive classification based on the nature of the subject matter—products or services. However, collective marks and certification marks are not separate subject categories in this sense; they inherently relate to goods or services. Grouping them alongside goods and services is comparable to classifying people as men, women, locals, and foreigners. While each category is accurate individually, combining them creates a category error—are we classifying by gender or nationality?

The only reasonable explanation for this classification is that collective and certification marks possess a special nature that fundamentally distinguishes them from ordinary trademarks. Although they are applied to goods or services, their function differs. Their inclusion alongside ordinary trademarks is therefore a policy decision rather than one based on strict formal logic. This is implicitly recognized in Article 3, Paragraph 4 of the Trademark Law, which states that special matters regarding the registration and administration of collective marks and certification marks shall be prescribed by the administrative department for industry and commerce under the State Council. The use of the term special confirms that these marks are substantively different from ordinary trademarks.

Regrettably, the Trademark Law does not fully implement this recognition. It fails to establish distinct registration criteria or infringement standards tailored to the unique nature of collective and certification marks. The Regulations on the Registration and Administration of Collective Marks and Certification Marks (promulgated by the CNIPA as Order No. 79), developed under this provision, only add procedural requirements on top of the existing rules for ordinary trademarks. They do not create separate substantive legal standards for registration or infringement.

This legislative imbalance has caused significant confusion in the registration and enforcement of these marks. The well-known Tongguan Roujimo dispute, where a collective mark was aggressively used to sue individual vendors, exemplifies these fundamental issues. As China moves forward with the fifth revision of its Trademark Law, it is crucial to analyze these systemic challenges and advocate for a restructured protection system—one that aligns with legal logic while addressing practical market realities.

II. The Core Issue: Misunderstanding the Role of Distinctiveness

At the heart of trademark law lies the principle of distinctiveness, also known as source identification. A trademark serves as a symbol that enables a business to differentiate its goods or services from those of others. Only symbols capable of distinguishing one operators offerings can qualify as legal trademarks. In a competitive market with many providers offering similar products or services, trademarks help consumers recognize whether a product originates from Company A or Company B.

Thus, the essential feature of a trademark is its ability to allow the public to identify the source of goods or services. This characteristic is referred to by various terms—such as identifiability, distinctiveness, or capability of distinguishing—which, in legal theory, all describe the function of source identification. According to Article 8 of the Trademark Law, any sign capable of distinguishing the goods of a natural person, legal person, or other organization from those of others may be registered as a trademark. Article 9 further requires that a trademark for which registration is sought shall have distinctive features and be easy to identify.

Since the Trademark Law and its related regulations do not explicitly exempt collective and certification marks from the distinctiveness requirement, administrative bodies and courts generally assume that this standard applies to them as well. The CNIPAs Trademark Review and Examination Guidelines clearly state that distinctiveness is a key criterion for trademark registration, and because collective and certification marks fall under the trademark category, they must be evaluated for distinctive features. Likewise, the Supreme Peoples Court has affirmed in prior rulings that distinctiveness is the foundation for a trademark to fulfill its role in distinguishing different goods or services… as a type of registered trademark, [certification marks] must comply with general provisions. However, applying the source identification distinctiveness standard to collective and certification marks overlooks their unique nature, resulting in theoretical confusion and practical challenges.

III. Why Certification Marks Should Not Be Held to the Distinctiveness Standard

To clarify why the distinctiveness requirement is inappropriate for certification marks, we should revisit the definitions in Article 3 of the Trademark Law. A certification mark is defined as a mark controlled by an organization with supervisory authority, which is used by entities or individuals outside that organization on their goods or services to certify specific attributes such as origin, raw materials, manufacturing methods, quality, or other characteristics. This definition highlights a fundamental difference between certification marks and ordinary trademarks. While ordinary trademarks serve to distinguish the operator or source, certification marks are intended to certify particular features of goods or services. Their primary role is to provide a feature certification function, rather than a source identification function.

This distinction is recognized internationally. The World Intellectual Property Organization (WIPO), in its guide to the Paris Convention, explains that collective marks are not used to differentiate the goods or services of one enterprise from another, but rather to indicate the origin or shared attributes of goods from enterprises supervised by the mark owner. Although the Paris Convention explicitly protects collective marks, it does not mandate protection for certification marks, leaving this to national legislation. Many jurisdictions explicitly acknowledge that certification marks do not possess distinctiveness in the traditional sense.

For example, Section 69 of the Indian Trade Marks Act clearly states that provisions concerning lack of distinctive character do not apply to certification marks. The Indian Trade Marks Registry interprets this to mean that the distinctiveness standards applicable to ordinary trademarks do not extend to certification marks. Similarly, the United States Patent and Trademark Office (USPTO) Manual of Examining Procedure notes that certification marks differ from trademarks and service marks because certification marks do not indicate commercial source or distinguish the goods or services of one person from those of another, but rather signify that the goods or services have been certified in a particular respect.

In practice, certification marks do not serve the purpose of identifying the source as traditional distinctiveness requires. For example, consider the Green Food certification mark in China, overseen by the China Green Food Development Center. This mark is granted to many companies that meet the certification standards. When consumers see the Green Food logo on a rice package, they do not assume the rice was produced by the China Green Food Development Center, nor does the logo help them distinguish whether the rice came from Company A or Company B. Instead, consumers recognize that the rice complies with certain quality standards. To determine the actual producer, they look to the brand name, such as Guangming Grain or Qiaofu Dayuan.

The Green Food mark directly conveys the products qualities and lacks distinctiveness in terms of source identification. Its registration is based on its role in certifying quality rather than indicating origin. The same reasoning applies to my clients organic certification mark: its presence on a vegetable package certifies that the vegetables are organic but does not reveal which specific farm or company grew them.Therefore, a signs capacity to identify a source (distinctiveness) is not inherently linked to its suitability for registration as a certification mark. When correctly registered and used, a certification mark functions to certify features, not to identify the source. Applying the distinctiveness requirement to these marks is like trying to fit a square peg into a round hole.

IV. The Misconception of Expanding the Meaning of Distinctiveness

In addressing the tension between the distinctiveness requirement and the nature of certification marks, some legal experts and practitioners have attempted to reconcile the two by broadening the concept of distinctiveness. They suggest that although certification marks differ in form, they still possess distinctiveness because they identify a group of certified operators. However, this perspective is fundamentally flawed, especially concerning certification marks. Distinctiveness, by definition, requires identification of the source or operator. Certification marks, on the other hand, indicate the characteristics or standards of the goods rather than the producer or a collective group of producers. For instance, a geographical indication like Wuchang Rice certifies the origin of the rice but does not represent Wuchang Rice Producers as a single legal entity. Consumers recognize Wuchang as a location, not a company.

Some scholars rightly observe that certification marks do not serve to distinguish themselves or others and therefore lack exclusivity, meaning they are not trademarks in the traditional sense. The TRIPS Agreements definition of a trademark—as a sign distinguishing goods or services of one undertaking from another—is widely interpreted to exclude certification marks. Attempts to preserve the term distinctiveness for certification marks by redefining it only create confusion. For example, the American Law Institutes Restatement (Third) of Unfair Competition acknowledges that certification marks have distinctiveness in certifying facts but do not identify the source. This dual usage of distinctiveness within the same legal framework—one meaning source identification and the other meaning feature certification—undermines legal clarity and coherence. It offers little substantive benefit beyond superficially fitting certification marks into existing trademark law.

V. The Pitfalls of Acquired Distinctiveness and Sign Inherent Distinctiveness

Another common argument to defend certification marks is the doctrine of acquired distinctiveness or secondary meaning, suggesting that marks lacking inherent distinctiveness can gain it through prolonged use. This reasoning is also flawed.

In trademark law, distinctiveness—whether inherent or acquired—is always tied to identifying a source. If a mark does not function to identify a source, time alone cannot change that. What is often described as acquired distinctiveness in certification mark cases is actually reputation. For example, in the Longjing Tea case, the court noted that Longjing Tea had gained high distinctiveness through long-term use. In reality, it had gained fame and a reputation for quality, but consumers do not associate the term with a specific company; rather, they recognize it as tea from a particular region with certain qualities. Confusing reputation with distinctiveness poses risks for rights holders.

Similarly, the idea that a sign can be inherently distinctive if its design is unique is misguided. Distinctiveness is not an abstract property of a logo or text but depends on the relationship between the sign and the goods. As scholars have emphasized, distinctiveness is a relative concept and cannot be assessed in isolation. Even a highly creative logo used as a certification mark certifies quality rather than identifying a source. Therefore, a unique design does not confer the source-identifying function required for trademark distinctiveness. The USPTOs position is clear: for collective membership marks, which are functionally similar to certification marks, distinctiveness is determined by the marks use in indicating membership, not by the signs content.

VI. The Implications of Systemic Confusion: A Caution for Foreign Enterprises

Chinas legal systems insistence on linking certification marks to the distinctiveness requirement creates challenges for foreign certification bodies and brand owners.

• Risk of Arbitrary Invalidation: As demonstrated in my clients case, competitors can easily challenge certification marks for lack of distinctiveness. Since certification marks are not designed to identify a source, registrants often cannot meet this standard, leaving their intellectual property vulnerable.

• Inconsistent Enforcement: The blurred line between source identification and feature certification results in unpredictable court rulings. Some courts may acknowledge the unique nature of certification marks and focus on whether they mislead consumers, while others rigidly apply the distinctiveness standard, leading to invalidations.

• Market Disruption: The Tongguan Roujimo incident exemplifies the consequences of this imbalance. Treating collective and certification marks as ordinary trademarks can lead owners to assert exclusivity in ways that hinder fair competition, such as suing small vendors over geographical names. Conversely, stripping these marks of protection due to lack of distinctiveness floods the market with unverified products, damaging the reputation of legitimate certification bodies.

• Uncertainty for Foreign Entrants: Foreign certification bodies aiming to enter the Chinese market face a dilemma. To protect their marks, they must register them, which requires demonstrating distinctiveness contrary to the marks actual function. This legal uncertainty acts as a non-tariff barrier to market entry.

VII. Conclusion: The Need for Strategic Navigation and Legal Reform

Chinas current legal framework forces certification marks into an ill-fitting definition of distinctiveness, undermining their intended function. The confusion between feature certification and source identification threatens the intellectual property rights of certification bodies. An ideal solution would involve legislative reform explicitly exempting certification marks from the distinctiveness requirement under Article 11 of the Trademark Law, replacing it with criteria ensuring the mark is not misleadingly descriptive and serves a genuine certification purpose. Until such reforms are enacted, enterprises must carefully navigate the existing system.

For foreign entities holding or seeking certification marks in China, the following strategies are essential:

• Document the Marks Function: Emphasize the marks role in certifying quality or origin rather than attempting to frame it as source-identifying.

• Provide Evidence of Control and Supervision: Demonstrate strict oversight of mark usage and maintenance of standards to defend against challenges.

• Manage Portfolios Strategically: Consider separating certification marks from ordinary trademarks to avoid confusion during examination or litigation.

The invalidation proceedings faced by my client reflect a broader jurisprudential challenge. As Chinese courts and the CNIPA continue to address these issues, the legal environment will remain uncertain. It is crucial for foreign enterprises to stay informed and seek expert legal advice to navigate these complexities effectively. Protecting certification marks in China requires more than procedural compliance; it demands a nuanced legal approach that acknowledges current inconsistencies while advocating for the rightful recognition of certification marks in the marketplace. For those encountering similar challenges or aiming to secure certification rights in China, a proactive and well-informed strategy is the best defense against ongoing legal uncertainties.