Regional Brand Protection and the Geographical Indication System

By Takafumi Mise

Introduction

“Tajima Beef”, “Kobe Beef”, “Yubari King Melon”, “Shimonoseki Fuku”, “Iyo Silk”… these are regional products that Japan can be proud of. Also, each of these products are currently registered under the Geographical Indication (GI) system. In this column I will discuss Japan’s GI system and its legal merits within Japan.  

What is the GI system?

The GI system is a system to protect agricultural, forestry and fishery brands that was introduced under the Act on Protection of the Names of Specific Agricultural, Forestry and Fishery Products and Foodstuffs (the “GI Act”) which came into effect in 2015. Currently there are 30 products that are registered including those mentioned in the introduction. The effect of registration has seen an increase in the volume of the goods sold as well as an increase in their price. The details of the system and the registration process is explained in an easy to understand manner on the Ministry of Agriculture, Forestry and Fisheries’ website (link).   There is also a system of regionally based collective trademarks under the Trademark Act as a method of protecting regional brands, but the new GI system is completely different. The main characteristics of the GI system are (1) only products that have been continually produced for a certain period (generally 25 years) are eligible; (2) the quality of registered products is institutionally guaranteed through the registration of quality standards (a merit for consumers); and (3) it is possible for registered producers to protect their brand without having to bear the costs of litigation (a merit for producers).

Below I will examine these three points in detail.

Methods of brand protection

(1) Existing legal means of protecting regional brands If, for example, a product that does not meet the standards of a regional brand is being sold under the regional brand’s name, the existing legal means available to the other producers are a claim for damages based in tort under the Civil Code or an injunction under the Unfair Competition Prevention Act. Or, if the regional brand is a registered trademark under the regionally based collective trademarks system mentioned above, it is also possible to seek an injunction and damages under the Trademark Act.   But, in this case, no matter which option is chosen, it is necessary for the affected producers to submit a demand to the offender (or commence litigation) on their initiative, which will incur a not insignificant amount of costs (expenses in collecting information, lawyers’ fees, etc.). (2) The new method of protection To improve this situation, the GI Act contains the following provisions for government control.

  1. Anybody can report the unauthorized use of a label and when a Regional Agricultural Administration Office receives a report, it must perform the required investigation and if a violation is identified, issue an order to the offender for the removal of the label (Articles 35 and 5 of the GI Act).
  2. If an order is not obeyed, the offender may be penalized with a fine (Articles 39, 40 and 43 of the GI Act).

Therefore, it is not necessary for registered producers to take any of the existing legal steps mentioned in (1) above. When you consider that the fee for registration under the GI system is only 90,000 yen (registration and license tax) and subsequent renewal procedures are not required, registered producers are able to protect their brand value for a very small cost, which I think makes the GI system a revolutionary system.

Future expectations

The GI system was established on the back of promoting exports to foreign markets and the development of international norms, and although certain allowances were provided to address problems with GI protection overseas in a December 2016 revision of the GI Act, the revision was limited to providing mutual protection of GI between countries through international agreements (Article 23 onwards), so effective means of relief have yet to be developed. Development of a system that will protect Japan’s regional brands throughout the world is expected in the future.

(Translated from the original Japanese)