3

Protection of Trademarks for Geographical Indications andGeographic Terms(*)

Since international negotiations led to the conclusion of the TRIPS Agreement, the issue of protecting
geographical indications has been a major theme over which Old World countries, mainly the EU, and New
World countries, mainly the United States and Australia, disagree in the WTO negotiations. The issue has also
been discussed in recent EPA/FTA negotiations.
In addition, some Asian countries using Chinese characters have legislation that is different from that ofJapan, the United States, and European countries, under which registration of a trademark is refused/rescinded if
the trademark consists of a “well-known foreign geographic term” even if it is not recognized as indicating theplace of origin of the goods. The Trademark System Subcommittee of the Industrial Structure Council is also
supposed to consider the requirements for registration of trademarks that include “well-known domestic or
foreign geographic terms.”
In this study, in light of this background, we conducted a questionnaire survey targeting domestic users, aninterview survey targeting domestic companies/intellectuals, etc., and questionnaire and interview surveys
targeting foreign intellectual property offices with regard to the desirable protection of geographical indications
based on the certification trademark system under the Trademark Act in Japan and the desirable protection ofwell-known domestic and foreign geographic terms under the Trademark Act, and carried out analysis andconsideration in light of the survey results at a committee consisting of intellectuals in academic society/judicial
circles/industrial circles.

Ⅰ Introduction
1

Background/purpose of this study

According to the definition of “geographicalindication”
in
the
TRIPS
Agreement,“Geographical indications are, … , indications
which identify a good as originating in the
territory of a Member, or a region or locality inthat territory, where a given quality, reputation orother characteristic of the good is essentiallyattributable to its geographical origin1”.
With regard to the protection of geographicalindications, while the EU has a protection systempeculiar to geographical indications, the UnitedStates and Australia have systems under which
geographical indications can be registered andprotected based on the certification trademark
system under trademark law. In addition, China
and South Korea have unique protection systems
for geographical indications and also have acertification trademark system2; therefore, it ispossible to protect geographical indications undereither system. In comparison, the only systemthat can be said to be an active protection system
for geographical indications in Japan is(*)

designation by the National Tax Agency ofgeographical indications based on Article 86-6 of
the Act on Securing of Liquor Tax and on Liquor
Business
Associations(LiquorBusiness
Associations Act).
It is necessary to conduct surveys onlaws/operations in major foreign countries andconsider an active protection system for
geographical indications (desirable protection
based on a certification trademark system under
the Trademark Act) in Japan, taking thesecircumstances into account.
On the other hand, with regard to therequirements for registration of trademarks that
include geographic terms, some countries havelegislation that is different from that of Japan, theUnited States, and European countries, underwhich if a trademark includes a “well-known
geographic term,” the registration of the
trademark is refused/rescinded even if it is notrecognized as indicating the place of origin of thegoods. Moreover, the Trademark System
Subcommittee of the Industrial Structure Council
is also supposed to consider the requirements forregistration of trademarks that include “well-known
domestic or foreign geographic terms.”

This is an English translation of the summary of the report published under the Research Study Project on Issues
with Industrial Property Rights System FY2010 entrusted by the Japan Patent Office. IIP is entirely responsible forany errors in expression or description of the translation. When any ambiguity is found in the English translation,
the original Japanese text shall be prevailing.
●

IIP Bulletin 2011 Vol.20

1 ●It is necessary to conduct surveys onlaws/operations in major foreign countries andconsider the desirable protection of well-known
domestic and foreign geographic terms under theJapanese
TrademarkAct,
takingthese
circumstances into account.
2

Method of conducting this study

In this study, we conducted a domestic
questionnaire survey ((1) local groups and (2)member companies of the Japan Intellectual
Property Association and the Japan Patent
Attorneys Association), a domestic interview
survey, and overseas questionnaire and interview
surveys with regard to “II Consideration of
Possibility of Protection of Geographical
Indications Based on a Certification Trademark
System” and “III Consideration of Desirable
Protection of Well-known Domestic and Foreign
Geographic Terms under the Trademark Act,” andanalyzed and assessed the results of the surveys.
Incidentally, the overseas questionnaire survey
targeted Community Trade Marks, the United
Kingdom, Germany, China, and South Korea while
the overseas interview survey targeted theUnited States and Australia.

Ⅱ Consideration of Possibility ofProtectionof
Geographical
Indications Based on a Certification
Trademark System
1

Domestic actual condition survey andanalysis(1) Understandingof
thecurrent
circumstances of industrial circles(i) Results of the domestic questionnaire
surveyThe domestic questionnaire survey, whichtargeted associations, etc. that are applicants forregional collective trademarks, included thefollowing questions: (1) Does your association
have rules for the use of the trademark?; (2) If
you answered “yes” to question 1, does yourassociation have a system to monitor whether theuse of the trademark by a member complies withthe rules for the use of the trademark?; (3) If you
answered “yes” to question 1, does yourassociation have provisions on sanctions against
anyone who violates the rules for the use of the
trademark?
With regard to (1), those who answered“Yes” accounted for 40.0%, while those who●

answered “No” accounted for 56.3%.
With regard to (2), those who answered“Yes” accounted for 66.2%, while those who
answered“No”
accounted
for33.1%.
Furthermore, those who answered that themonitoring system is “An organization within theassociation” accounted for 95.7%.
With regard to (3), those who answered“Yes” accounted for 50.0%, while those who
answered “No” accounted for 45.1%.
(ii) Results of the domestic interview survey
The domestic interview survey targetedbusiness offices, companies (relating to food andbeverages), associations, city offices, prefectural
offices, etc.
One association sets “rules for a certificate
stamp indicating the trademark right” in addition
to the provisions on the trademark right(provisions on the scope of the trademark right,
the use of the trademark, and royalty, etc.) andprovisions on quality indication (provisions requiringa certification stamp indicating the quality). This isfor securing the traceability function, and is intended
to trace/eliminate the unauthorized use of the brandby third parties through the association’s annual
market survey/monitoring, by requiring members toindicate a producer number, etc. as well as thetrademark in the prescribed certification stamp.
The aforementioned provisions include sanctions
against those who violate them. There is a problem,
however, when taking into consideration goods
produced outside Japan that are sold in Japan. The
association is aiming at differentiation byprohibiting the trademark certificate stamp frombeing attached to any goods produced outside Japan.
(2) Needs of industrial circles(i) Results of the domestic questionnaire
survey targeting local groups
The domestic questionnaire survey targeting
associations, etc. that are applicants for regional
collective trademarks included the following
questions: (1) Is the current regional collective
trademark system sufficient?; (2) What are
insufficient points in relation to question (1)?; (3)Is it necessary to introduce a certification
trademark system that protects geographicalindications (specifically, the propriety of
introducing a trademark system under which any
person can use the trademark if he/she satisfies
the quality standards while a person is notallowed to use the trademark if he/she does notsatisfy the quality standards)?
With regard to (1), those who answered
2 ●IIP Bulletin 2011 Vol.20

“Sufficient” accounted for 37.5%, those who
answered “Insufficient” accounted for 30.7%, andthose who answered “No idea” accounted for
29.6%.
With regard to (2), those who answered“Being unable to eliminate the holders of theprior user’s right” accounted for 49.6%, those
who answered “Being unable to effectively appeal
the excellence of the quality of goods andservices to consumers even after obtaining a
regional collective trademark” accounted for
37.6%, and those who answered “Having no idea
how to use a regional collective trademark evenafter obtaining one as it is not easy todifferentiate from the holders of the prior user’s
right” accounted for 35.3%.
With regard to (3), those who answered“Necessary” accounted for 36.6%, those who
answered “Unnecessary” accounted for 17.7%,
and those who answered “No idea” accounted for
40.0%.
Incidentally, as reasons for answering“Necessary,” 81.5% answered that “Brand image
concerning quality control is increased,” while
36.9% answered that “The certification
trademark system is upgraded in terms of quality
control compared to the regional collective
trademark system, and it becomes possible to use
certification trademarks and regional collective
trademarks as the situation demands.”(ii) Results of the domestic questionnaire
survey targeting companies (member
companies of the Japan Intellectual
Property Association) and the Japan
Patent Attorneys Association
The domestic questionnaire survey targetingmember companies of the Japan Intellectual
Property Association and the Japan Patent
Attorneys Association included the following
questions: (1) Do you agree with the introductionof a certification trademark system that protects
geographical indications?; (2) If you answered“Agree” to question 1, what are the reasons foragreeing with the introduction?
With regard to (1), those who answered“Agree” accounted for 29.8, those who answered“Disagree” accounted for 15.1%, and those who
answered “No opinion” accounted for 52.8%.
With regard to (2), as reasons for answering“Agree,” 81.5% answered “It is necessary fromthe perspective of international harmonization,”while 23.1% answered “There are needs thatcannot be protected under the current system(including the regional collective trademark●

IIP Bulletin 2011 Vol.20

system).
(iii) Results of the domestic interview survey
The domestic interview survey targetedbusiness offices, companies (relating to food andbeverages), associations, city offices, prefectural
offices, etc.
One patent attorney said “Under the current
regional
collective
trademarksystem,associations, etc. have no other choice but todetermine the right of continued use of outsiders.
However, for example, if, under a certification
trademark system, a local government becomes
the holder of the right and imposes restrictions,such as approving use of a certification trademark
based on certain rules under the rules for the useof the certification trademark, there will be noneed to mention the right of continued use in thefirst place. Consequently, the needs of both
associations and outsiders will be met.”2

Situation in other countries(1) United States
In the United States, protection ofgeographical indications is possible with the useof a “certification mark” or “collective mark”
under trademark law.
(2) Community Trade Mark
Under the Community Trade Mark (CTM)
system, there is no provision on the certification
mark system. However, there is a provision thatsigns or indications which may serve, in trade, todesignate the geographical origin of the goods orservices may constitute Community collective
marks(Article 66(2) of the Council Regulation(EC) on the Community trademark).
(3) United Kingdom
Section 3(1)(c) of the UK Trademarks Act
provides that trademarks which consist
exclusively of signs or indications which may
serve, in trade, to designate the geographicalorigin of goods or services, shall not be registered.
However, Paragraph 3(1) of Schedule 2 of said Act
provides that “Notwithstanding section 3(1)(c), a
certification mark may be registered which
consists of signs or indications which may serve,in trade, to designate the geographical origin of
the goods or services.”(4) Germany
In Germany, geographical indications areprotected under the trademark system. Mores
3 ●specifically, protection under the collective
trademark system (Section 97, etc. of theTrademark Law), protection of indications ofgeographical origin (Section 126, etc. of theTrademark Law), and protection under the
Trademark Law based on the Council Regulation
on geographical indications3 (Section 130, etc. of
the Trademark Law) are available.
(5) Australia
In Australia, protection of geographicalindications can be achieved under thecertification trademark system. The certification
trademark system under the Trade Marks Act ischaracterized by the point that the AustralianCompetition and Consumer Commission examine
the rules governing use, separately fromexamination by the IP Australia and the point thatthe owner of a certification trademark is allowed
to use the certification trademark by itself.
(6) China
In China, geographical indications areprotected under several systems. Morespecifically, (1) protection based on the collective
trademark system and the certification trademark
system under the Trademark Law, (2) protection
based on the Provisions for the Protection of
Products of Geographical Indication, and (3)protection based on the Measure of management
for agricultural products of geographicalindication4 are available. The latter two can besaid to be protection systems peculiar togeographical indications.
(7) South Korea
In South Korea, geographical indications areprotected under several systems. Morespecifically, (1) protection based on the collective
mark system for geographical indications and (2)protection under the Agricultural Products
Quality Control Act and the Fishery Products
Quality Control Act are available. In addition, withregard to (1), a bill to revise the Trademark Act inrelation to the certification mark system for
geographical indications has been submitted to
the National Assembly. Moreover, (2) can be said
to be a protection system peculiar to geographicalindications.
3

Possibility of protection of geographicalindications based on a certification
trademark system
We considered the possibility of protection of●geographical indications based on a certification
trademark system from the perspective ofcomparison with the regional collective
trademark system.
The regional collective trademark systemdoes not provide sufficient protection ofgeographical indications (1) because regional
collective trademarks are limited to trademarks
consisting of the combination of the name of aregion and the name of goods/services, (2)because it is required to be consideredwell-known within Japan, and (3) because entities
that can be the holders of trademark rights arelimited to associations, such as cooperative
business associations, for which freedom ofaccession is ensured under the law supporting theestablishment thereof. With regard to thesepoints, protection through introduction of acertification trademark system, in particular, is
expected.
In the case of introducing a certification
trademark system, institutional design as follows
is conceivable.
(1) Entities that can be the holders of trademark
rights are to be juridical persons in generalthat have juridical characteristics, irrespectiveof their types. Further consideration isrequired as to whether to include individuals.
(2) The fact that an applicant is an organizationthat gives “certification” is to be arequirement for an applicant or an importantelement to be considered when recognizing a
trademark as a “certification trademark.”(3) Applicants are to be required to submit therules for the use of the trademark, etc. whenfiling an application, and are to be examinedin terms of violation of public policy, etc.
(4) The holder of a trademark right is not to beallowed to use the trademark by itself.
(5) Though the composition of a trademark is
not restricted, a trademark is to be required
to be a “certification trademark.”(6) Provisions that replace Article 3(2) of theTrademark Act are to be set for therequirements for registration. Thereby,
registration is granted, notwithstanding Article
3(1)(iii) where a certification trademark can
distinguish certified goods/services fromother goods/services. Article 4 is to be
applied in the same manner as ordinary
trademarks.
(7) The effect of rights and the application of
Article 26 are to be done in the same manner
as for ordinary trademarks.
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(8) With regard to the prior user’s right, therequirement to be well-known is to berelaxed. Although the establishment of theright of non-exclusive use is to be permitted,
restrictions are to be imposed on theestablishment of the right of exclusive use
and assignment to a third party.
(9) In order to make ex-post checking by third
parties function, the following are to be set
as ex-post reasons for invalidation:
discriminative
treatment
ingivingcertification, negligence in management inviolation of the rules for the use, the rules
for the use violating public policy, etc., andceasing to satisfy the requirements for an
owner of a certification trademark. The
statute of limitation cannot be applied.
4

Consideration of institutional/operationalarrangements to secure the quality guarantee
function of certification trademarks

For certification trademarks, “quality
guarantee function” in the sense of the “capability
to convey that goods/services to which a
certification trademark is attached have a qualitythat passes certain standards” should beprotected.
Therefore,
in
introducingacertification trademark system, it is important todesign a system so that the function is sufficiently
secured. Specifically, the requirements for an
owner of a certification trademark and the rules
for the use are considered here. For the former, it
seems to be desirable to adopt a US-style
institutional design, specifically, setting highly
abstract requirements for registration and making
flexible responses at the operational level, in
addition to stipulating the situation where theright holder has failed to appropriately manage
the trademark as a reason for rescission. In
addition, with regard to the use of a certification
trademark by the owner of the certification
trademark, restrictions should be set so as toprevent confusion with the use of ordinary
trademarks. The change of the owner throughassignment should also be restricted in the samemanner as in many other countries. The lattershould be, in principle, left to ex-post checking by
third parties (opposition/rescission). However, it
is also possible to adopt a measure to examine thelikelihood of misleading as to the quality at thefiling stage. In addition, it is necessary to require
disclosure of the rules for the use.

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IIP Bulletin 2011 Vol.20

Ⅲ Consideration of Desirable Protectionof Well-Known Domestic andForeign Geographic Terms under
the Trademark Act
1

Domestic actual condition survey andanalysis

We gained understanding of the current
circumstances of industrial circles in terms of thecurrent system/operations and conducted surveys
on and analyzed needs, to be used as basic datafor consideration.
(1) Results of the domestic questionnaire
surveyThe domestic questionnaire survey targetingthe member companies of the Japan Intellectual
Property Association and the Japan Patent
Attorneys Association included the following
questions: (1)Do you have experience inincurring negative effects on business activities
that can be attributed to the impossibility ofregistering a trademark consisting of (domestic
and foreign) geographic terms?; (2) Do you want
to register any geographic term as a trademark?;(3) What do you think of the application of Article
3(1)(iii) of the current Trademark Act?
With regard to (1), those who answered“Yes” accounted for 2.3%, while those who
answered “No” accounted for 95.4%.
With regard to (2), those who answered“Yes” accounted for 6.0%, while those who
answered “No” accounted for 88.1%.
With regard to (3), those who answered“Registration of well-known domestic and foreign
geographic terms should be refused more broadly
than at present” accounted for 24.3%, those who
answered “The current scope is appropriate”
accounted for 43.6%, those who answered “Thescope of refusal of registration should benarrowed down” accounted for 4.6%, and those
who answered “No idea” accounted for 27.1%.
(2) Results of the domestic interview survey
One food-related company expressed thefollowing opinion: “There was a request for stricter
examination in relation to Article 3(1)(iii) of thecurrent Trademark Act. Behind this is the risk that
our own goods will be deemed to be infringing thetrademark right of a third party if a geographic term
has been registered by the third party. Therefore,
we sometimes risk filing a trademark application fora geographic term in hopes that the trademark
consisting of the geographic term is refused by the
5 ●JPO as a trademark lacking distinctiveness. If adecision to the effect that the trademark is to beregistered is rendered for such a trademark
application, we will not abandon the application andwill maintain the registration.”(3) Opinions of the Japan Intellectual
Property Association
In South Korea and China, there are
independent provisions on the refusal ofregistration of “prominent (publicly known)
geographic terms.” The Japan Intellectual
Property Association expressed the following
opinions with regard to the necessity of setting
provisions on “well-known domestic and foreign
geographic terms” in relation to reasons forrefusal concerning geographic terms, in addition
to Article 3(1)(iii) of the current Trademark Act.
The purpose of the trademark system is toestablish and maintain sound commercial
transactions through prevention of confusion as tothe source by protecting the exclusive use ofbusiness confidence formed through the use of
trademarks that are capable of distinguishing
their own goods/services from others. A legal
revision that sets provisions on unregistrable
trademarks, like “a geographic term isunregistrable” and “a well-known geographic
term is unregistrable,” may change the system
into one that does not protect even trademarksthat are capable of distinguishing their own
goods/services from others, and it is expected tocause confusion in terms of the establishment andmaintenance of sound commercial transactions.
Therefore, based on the aforementioned
matters, we hope, as a user, that registration willbe left for trademarks that are not understood as
indicating the place of origin/place of sale of thegoods or the location of provision of the services inrelation to designated goods/designated services
and trademarks that have acquired distinctivenessarising from use, same as at present.
2 Desirable protection of well-known
domestic and foreign geographic terms
under the Trademark Act
According to the overseas survey report, theapplication of the Japanese Trademark Act(Article 3) in relation to well-known domestic andforeign geographic terms in the examination does
not differ much from that in other countries.
Moreover, in practice, there are many trademarks
consisting of geographic terms that function assigns to distinguish their own goods from others,●

irrespective of whether the geographic term iswell-known. Therefore, there is no need to thinkof a legal revision that establishes new provisions
on unregistrable trademarks that are based on thepremise of not recognizing distinctiveness arisingfrom use. This also matches users’ intention.
However, it is meaningful to consider thenecessity of developing the Examination
Guidelines (for example, handling of trademarks
consisting of geographic terms that allow people
to recognize the place of handling ofgoods/services other than “place of origin/placeof sale of the goods and the location of provisionof the services” (for example, place of destination
overseas and location/place of establishment of acompany’s business office)) within the scope of
Article 3(1)(iii) and (vi).

Ⅳ Conclusion and Consideration
In this study, we considered legal points ofargument
andinstitutional/operationalarrangements for promoting the protection ofgeographical indications based on a certification
trademark system in Japan as well as the directionof desirable protection of well-known domestic andforeign geographic terms under the JapaneseTrademark Act, in light of surveys and research on
the actual conditions in Japan and systems/operations in major foreign countries. Thereby,
we were able to compile the results as a report.
The protection of trademarks pertaining togeographical indications, geographic terms is acomplicated issue that should also be considered in
the context of international negotiations, inaddition to the issue of coordination between
interests of entities that seek to obtain rights andthose of third parties of good will. We hope that
this report will contribute to international
negotiations and considerations of desirable
systems/operations within the government.
(Researcher: Masahiro Shimizu)
Article 22(1) of the TRIPS Agreement.
In Sough Korea, a revision bill to introduce a“certification mark system for geographical indications”
has been submitted to the National Assembly.
3
Council Regulation on geographical indications means“ Council Regulation (EEC) No. 479/2008 on theProtection of Geographical Indications and Designationsof Origin for Agricultural Products and Foodstuffs.”
4(Fiscal 2009 Project Commissioned by the JPO)
Chugoku ni okeru dantaishohyo/shomeishohyo(Collective Trademarks/Certification Trademarks in
China) (Intellectual Property Rights Department of
JETRO Beijing, September 2009), 18-20 and 113-120.
1
2

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