16

Studies on the Ideal Trademark Act for theDevelopment of Regional Brands(*)
Research Fellow: Risa IDE

The design of a system for developing regional brands plays a key role not only in the implementation of anational policy of regional developments but also in international trade negotiations. In this regard, South
Korea revised its Trademark Act and Agricultural and Marine Products Quality Control Act and introduced
two systems concerning geographic indications in the course of the Free Trade Agreement (FTA) negotiations
with the United States and the European Union (EU). It would be of great significance to clarify the differences
between the geographical indication protection system introduced in South Korea and the Japanese system ofregional collective trademark in identifying issues concerning the introduction of the geographical indication
protection system. Japan is likely to face these issues in future trade negotiations and in designing a system tosuit the conditions in Japan. This research aims to determine the ideal design of the system for developing
regional brands in Japan. This will be accomplished mainly by pursuing the appropriate Trademark Act throughcomparison and examination on the current system concerning the development of regional brands in Japan
with reference to the contents of the FTAs between South Korea and the United States or the EU and therevisions made to domestic laws through negotiations for the FTAs.

Ⅰ

Introduction

1

Background to and Purpose of thisResearch

In addition, Japan is a country blessed withlocal specialties, craftworks and spas with specificquality and/or characteristics associated withnumerous geographical elements through her richnatural environment, unique culture and long
history. It is important that Japan bring about ahigh added value by protecting her uniqueproducts as mentioned above from the aspect ofintellectual property, thereby enhancing herinternational competitiveness.
Amid this situation, South Korea enteredinto an FTA with the United States and theEuropean Union at roughly the same time.3 The
FTA negotiations that South Korea conductedwith the United States and European Union,
which have different geographical indication
protection systems, as mentioned above, as wellas the revisions to the South Korean domestic
laws made as a result of such negotiations,provide good research material in examining thedesign of the relevant systems in Japan to develop
regional
brandsthat
haveinternational
competitiveness.
In this research, the main issues shall beidentified by examining the provisions concerning
geographical indications in the U.S.-Korea Free
Trade Agreement ("U.S.-Korea FTA") andEU-Korea Free Trade Agreement ("EU-Korea

Pursuant the provisions of the revised
Trademark Act, which came into effect on April 1,
2006, a system to recognize a "regional collective
trademark" was introduced to Japan. While thissystem was believed to have been introduced as
one of the policies toward achieving regional
development,1 there should be an examination onwhether or not this objective has been achieved.
Meanwhile, more than one concept for
geographical names is provided for in theinternational treaties in which Japan is taking part.
Japan, as a member state of such treaties,
provides minimum protection to such concepts
pursuant to the provisions of relevant laws,
including the Trademark Act and Unfair
Competition Prevention Act. Yet, the active
movements of free trade negotiations havegenerated the needs to deepen the discussions on
geographical indications and other relevant
matters. In particular, there should be
examinations on the European protection system
as well as the U.S. protection system for
geographical indications.2(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2012 entrusted by the Japan Patent Office. IIP is entirely responsible for any 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 2013 Vol.22

1 ●FTA") as well as the revisions made to the South
Korean domestic laws to perform the obligations
under such provisions. Then, the three
expressions used for marks consisting ofgeographical names (i.e., indications of regional
origin, appellation of origin, and geographicalindications) shall be examined with respect totheir definitions and compared with the regional
collective trademark of Japan. Finally, further
considerations shall be made on the ideal
Trademark Act befitted to the development ofregional brands in Japan, and thereby, opinions areto be provided with respect to the design of therelevant systems.
2

Geographical Indications and Designations ofOrigin for Agricultural Products and Foodstuffs.10
However, it was later abolished due tointernational disputes and is now governed by theCouncil Regulation (EC) No. 510/2006 of 20
March 2006 on the Protection of Geographical
Indications and Designations of Origin for
Agricultural Products and Foodstuffs.
(2) U.S. Geographical Indication Protection
SystemThe United States has no special system for
geographical indications. The U.S. geographicalindication protection system solely refers to theprotection provided pursuant to the systems ofcertification mark and collective mark, provided
for in the United States Trademark Law (UnitedStates Code, Title 15, Commerce and Trade,
Chapter 22) (15 U.S.C.§1054).11 However, in therelevant Article, the expression "indications ofregional origin" is used, which is different fromother expressions such as “appellation of origin”
or “geographical indications” (GI). Moreover,certification marks and collective marks areregistered by the same method and with the same
effect as trademarks.
A certification mark 12 is characterized inthat the holder of a registered certification markcannot use the relevant mark, and it certifies
certain facts. Moreover, institutional security isprovided by the United States Patent andTrademark Office (USPTO) to such mark as anintellectual
property.
Meanwhile,
the13
characteristic of a collective mark lies in thefact that any person to whom a collective mark is
attached is a member of the group that is theholder of the registered collective mark.

Major Definitions in this Research(1) European
Geographical
Indication
Protection System Modeled After the
French System
In France, the system for geographicalnames was established through three periods: theadministrative naming period (1905 – 1919),4 thejudicial naming period (1919 –1935) 5 and the
AOC period (1935 until now).6 Article A of the
Law of May 6, 1919 on the protection ofappellations of origin, which was added throughthe law revision on July 6, 1966, provided a
definition on the appellation of origin for the firsttime.7 With respect to appellations of origin, thequalities and characteristics that originate in thegeographical conditions are the interests to beprotected by law. The scope of application of AOC(Appellation d’Origine Contrôlée (controlled
designation of origin)) in France has been
expanded from wines, spirits and cheese to
generalfoodstuffs,
includingagricultural
8
products. During the 1960s and 1970s, France
entered into bilateral agreements with countries
such as Italy, Spain, Switzerland and Austria, andthese agreements later served as the basis for theestablishment of unified rules on the protection ofgeographical indications of the EU.
The EU geographical indication protection
system made its start from the establishment ofcooperative(s) in the wine market of thenEuropean Economic Community in 1962 and theintroduction of the concept of Delimited Wines ofSuperior Quality (Vins délimités de qualité
supérieure (VDQS)) to the EU legislation.9 Later,
the scope of protection of geographical indications,which was expanded from wines to further
include agricultural products and other products,
was established by the Council Regulation (EEC)
No. 2081/92 of July 14, 1992, on the Protection of(3) Definitions Concerning GeographicalNames under Treaties
With respect to the concept of geographicalnames under treaties, three expressions are used:indication of source (an English translation of theterm "Indication de provenance"), appellation oforigin (an English translation of the term"Appellations d’origine") and geographicalindications (an English translation of the term
"Indication géographique").
The term "indication of source" refers to "anyexpression or sign used to indicate that a productor service originates in a country, region or
specific place."14 Indication of source is a broadconcept that indicates the information on theplace of origin and may include a mere indicationof the country of origin, such as "made in Japan."●

2 ●IIP Bulletin 2013 Vol.22

"Appellationoforigin"means"thegeographical name of a country, region or specificplace which serves to designate a productoriginating therein, the quality or characteristicsof which are due exclusively or essentially to thegeographical environment, including natural
factors, human factors, or both natural and humanfactors; any name that is not that of a country,
region or specific place is also considered ageographical name if it relates to a specificgeographical area, when used in connection withcertain products."15 The concept of appellation oforigin constitutes stricter requirements and isnarrower than indication of source.
With respect to geographical indications,
Article 22, paragraph (1) of the Agreement on
Trade-Related Aspects of Intellectual Property
Rights ("TRIPS agreement") provides that theyare "indications which identify a good as
originating in the territory of a Member, or aregion or locality in that territory, where a given
quality, reputation or other characteristic of thegood is essentially attributable to its geographicalorigin."16
While the appellation of origin requires
exclusive or essential relevance, essential
relevance would suffice for geographical indications,and thus geographical indications are based on aconcept milder than that appellation of origin but
stricter than that of indication of source.

definition is identical to that provided for in
Article 22(1) of the TRIPS agreement. However,while additional protections are only provided towines and spirits under Article 23 of the TRIPs
agreement, such protections are further provided
to Japanese refined sake under the JapaneseLiquor Business Associations Act (Article 2 ofsaid Standard for Indication). Moreover, nodefinition has been made in domestic laws withrespect to appellations of origin.

Ⅱ Systems for Development ofRegional Brands under theJapanese Trademark Act
1

Regional collective trademarks are provided
for in Article 7-2 of the Trademark Act. 19
Although the view on trademarks of geographicalnames has been considered the core to creating
brand local specialties, strict requirements had tobe met to realize the protection of suchtrademarks under the conventional Trademark
Act. In the lawsuit of Miwa Somen (Japanesevermicelli made in the Miwa area of Naraprefecture) 20 , which came prior to theintroduction of the regional collective trademark
system, slight changes to fonts or the addition of
simple figures to the indication of charactersmade to a mark consisting of geographical names
were considered to be a substantial part of the
trademark and, thereby, similarity of trademarks
was easily denied. Yet, even after such a system
was introduced, decisions similar to the above
were made in the case of Hakataori (a woven
fabric produced in Hakata),21 which signified the
problems contained in the system of regional
collective trademarks. To begin with, although
free enrollment of members is required in therelevant provision, i.e., the main clause of Article
7-2, paragraph (1) of the Trademark Act, theinterpretation of such provision has not exactly
been clarified. At the same time, as it is clear
from the fact that the defendant's use of similar
mark was denied of the infringement oftrademark rights because the similar markrepresented place of origin or manufacturing
process, the scope of protection of marks
registered as a regional collective mark would
inevitably be quite narrow. Moreover, under thecurrent regional collective trademark system,
greater emphasis is placed on the subjective
requirements; and the requirements imposed on(4) Definitions in Japan
Regarding indication of source, there areprovisions in laws, such as the Customs Act, Actagainst Unjustifiable Premiums and Misleading
Representations (hereinafter simply referred toas the "Premiums and Presentations Act"), and
the Act on Standardization and Property Quality
Labeling of Agricultural and Forestry Products("JAS Act"), which require true indication of
objective facts on the information of source. Yet,although these may be regarded as relevant
provisions that provide safety and security, they
are not stipulated on the basis that marks, whichthemselves have added value as an intellectual
property, would be indicated.17
On the other hand, there is a provision on
geographical indications in domestic law, i.e.,
Article 1, paragraph (1) of the Standard for
Indication
inRelationtoGeographical
Indications 18 based on the Act on Securing of
Liquor Tax and on Liquor Business Associations(hereinafter simply referred to as "Liquor
Business Associations Act"). Other than the factthat the indication is limited to liquors, the●

IIP Bulletin 2013 Vol.22

Development of Regional Brands by
Means of Regional Collective Trademarks

3 ●the definitions and composition of the object to beprotected cannot necessarily be deemed to bestrict. Furthermore, the decisions on suchrequirements are left to the discretion of theholder of the regional collective trademark.
Marks for regional brands are not only used
to indicate the geographical place of origin (toshow that the designated goods or services
originate in the relevant region), but are also used
as a tool to transmit to consumers information on
the quality and/or characteristics defined by thegeographical characteristics of the relevant region.
While ordinary trademarks indicate the businesssource of the designated goods or services, marks
for regional brands function to simultaneously
indicate both the geographical origin and therelevant qualities and/or characteristics.
Nevertheless, it is recognized that thecurrent regional collective trademark system is"by no means a direct guarantee by the state(JPO) that the quality of the goods (or quality ofthe services) that uses a regional brand meets
certain standards." 22 Furthermore, with respect
to the relation to geographical indications, it has
been stated that "the regional collective
trademark system derives from a transitional
form of expression of the legislation to protect
the names of origin and geographical indications,which may vary under legislations," 23 and thatthe regional collective trademark system isnothing but a stipulation of the regulations on
conducts of unfair competition related toindications under the Unfair Competition
Prevention Act in the Trademark Act. 24 These
opinions reveal that the two systems forgeographical indications and regional collective
trademarks are relevant but different systems. In
other words, the system for geographicalindications in its true sense is yet to be designed
in Japan.
2and (xiii) of said Act prescribe the acts that shallbe deemed to be acts of unfair competition withrespect to indications.
With respect to the acts provided for in item(i) of said Article, they are required to create"confusion with another person's goods orbusiness" and to use an indication "identical orsimilar to" the indication used by such person.
Whether or not any confusion has been created ismostly decided based on the quality of being
well-known. 25 At the same time, the scope ofsuch quality does not require the relevant
indication to be widely known throughout Japanbut can only be an indication of products that are
widely known in a certain region.26 Indications ofgeographical names are often deemed to belacking the capability to distinguish theirdesignated goods or services from those of others.
Even if they satisfy the requirements of suchcapability, the existence of confusion must be
proved.
On the other hand, with respect to the acts
provided for in item (ii) of said Article,
requirements of the quality of being well known
are stricter than those imposed on the acts
specified in item (i) mentioned above, and suchacts provided for in said item (ii) are regarded as"misuse of famous indications." 27 In relation tothis, marks for regional brands that include thename of the region are based on the concept ofprotecting the reputation or fame of the quality
and/or characteristics that originate in therelevant geographical characteristics rather thaneliminating confusion. Moreover, the act provided
for in item (ii) shall be deemed an act of unfair
competition if it meets the requirement that therelevant indication is famous and "the existenceof confusion is not required in this item; and thus
it is unnecessary to prove the existence ofconfusion." 28 Accordingly, this item should beapplicable for the protection of marks for regional
brands. Yet, it should be noted that the applicationof this item is associated with certain burdens on
proof and other matters.

The Role of Unfair Competition
Prevention Act in the Development ofRegional Brands

The purpose of the Unfair Competition
Prevention Act is to provide for matters such as aprevention measure for unfair competition andcompensation for damages caused by unfair
competition, in order to ensure fair competition
among business operators and accurate
implementation of international agreements
related thereto, thereby contributing to the sounddevelopment of the national economy (Article 1 ofsaid Act). Article 2, paragraph (1), items (i), (ii)3

Other Systems

The main purpose of the Act on Prohibitionof Private Monopolization and Maintenance ofFair Trade ("Anti-Monopoly Act") is to prohibit
acts that restrain free competition, such asprivate monopolization, and to secure freecompetition. In addition to the main purpose ofprohibiting any acts that may restrain freecompetition, this Act aims to maintain fair●

4 ●IIP Bulletin 2013 Vol.22

competition by prohibiting acts that impede faircompetition as unfair trade practices and thereby
secure free competition. Furthermore, thePremiums and Presentations Act was enacted as a
special law of the Anti-Monopoly Act to maintainand promote fair competition. The principalmeans to achieving the purpose of the two Acts
are "administrative regulations," such as theelimination order to be issued by the Japan Fair
Trade Commission. However, as a result of a
proposal to introduce the means of "injunctions"as one of the means to prohibit unfair tradepractices, it was allowed to seek injunctions
pursuant to Article 24 of the Anti-Monopoly Act
after the revision in 2000.29 Since many of theindications of information on place of origin, suchas indication of source, are subject to thePremiums
andPresentations
Act,
such
indications
canbeconsideredtobeadministratively controlled where the information
indicated is required to be objective rather thanbeing protected as an intellectual property. In
addition, as mentioned above, provisions
concerning the indication of the place of origin
may be regarded as concepts that lead to safety
and security but do not directly relate to thecreation of regional brands.

goods or services shall be prohibited from being
used in any case of likelihood of confusion. This
provision is similar to Article 2, paragraph (1),items (i) of the Unfair Competition Prevention
Act of Japan, as mentioned above.
Paragraph (8) of said Article33 provides for
remedies to be provided in case any act that
constitutes fraudulent labeling of a well-known
trademark or geographical indication or free-rides
has been conducted. Yet, it is clear from thisprovision that geographical indications areprotected with the same effect as trademarks
instead of being protected as a special object.
Furthermore, paragraph (15)(a) of said Article34
provides for the arrangements to be made in
relation to the vested interests of other marksthat have been in use prior to the relevant mark.
Mr. Won-oh Kim values these provisions
established through the U.S.-Korea FTA
negotiations to have the following effects: (i) togive substance to the quality-guarantee functionof trademarks; (ii) to provide to the consumers abenchmark and information for the selection ofproper goods, which is essentially required in theoperation of the system of marks; (iii) to activate
the certification mark system operated bygovernmental organizations, local governments
and private organizations; and (iv) to function aspart of the measures for promotion of small andmedium-sized enterprises through activation ofcertification marks granted to goods with acertain level of quality provided by small andmedium-sized enterprises with reliable technicalcapabilities.35
Nevertheless, as many academics, including
Mr. Won-oh Kim and Mr. Byungil, Kim haveraised concerns, the certification marks havebeen introduced without sufficient examinations
on issues such as the relationship between theexisting collective mark system, possible
conflicts and considerations to be made to avoid
possible confusion under operation.36

Ⅲ Issues Found in South Korea's
FTA Negotiations and Revisions
to Relevant Laws
1

Examinations on the Introduction of
Geographical Indication-Related Systemin the Course of U.S.-Korea FTA
Negotiation

In the course of the U.S.-Korea FTA
negotiation, the following were provided withrespect to geographical indications.
Article 18.2(2) of U.S.-Korea FTA provides
for trademarks that include geographicalindications, and obligates the parties to realize
protection of geographical indications byintroducing certification marks into thetrademark system. 30 In the footnote of said
Article,thedefinitionof“geographicalindications” is provided,31 and it corresponds tothat provided for in Article 22 of the TRIPS
agreement. At the same time, geographicalindications are distinguished from signs
consisting of the term "originating," which simply
indicates information on the place of origin.
Paragraph (4) of said Article 32 provides thatsigns that include geographical indications for2

In the EU-Korea FTA, paragraph (2) ofArticle 10.2, which provides the nature and scopeof obligations under said FTA, stipulates
trademarks
andgeographicalindications
separately as an independent intellectual property
right. At the same time, paragraph (3) of said
Article clearly stipulates that the protection of
intellectual property includes protection against●

IIP Bulletin 2013 Vol.22

Examination on the Introduction of a
Geographical Indication-Related Systemin the EU-Korea FTA Negotiations

5 ●unfair competition, as referred to in article 10bisof the Paris Convention. Geographical indications
are defined as complying with the provisions of
the relevant Council Regulations; and that samedefinition is to be provided in the Agricultural andMarine Products Quality Control Act (Act No.
9759 of June 9, 2009) and Liquor Tax Act (Act No.
8852 of February 29, 2008) of South Korea.
For example, geographical indications aredefined in the Agricultural and Marine Products
Quality Control Act of South Korea in line withthe definitions of geographical indications
provided for in Article 2, paragraph (1), item (b) of
the Council Regulation EC No. 510/2006,37 which
is one of the Council Regulations listed in the
FTA. According to Article 2, paragraph (1), item(vii) of said Act, the term "geographicalindication"means"indications
displaying
agricultural products or the processed product(excluding processed agricultural products inwhich marine products are used as a principal
material or main ingredient; the same shall apply
hereinafter), the reputation, quality and otherattributes of which are essentially originated fromthe geographical characteristics of a specificregion, are produced and processed in the specificregion." Under the South Korean system for theprotection of geographical indications based on
the quality control of agricultural and marine
products, it is required that the specific quality or
characteristic is essentially attributable to therelevant geographical factors, and such protection
is afforded to agricultural products and processed
agricultural products.
Article 10.18 of said FTA provides forrecognition of geographical indications for
agricultural products as well as foodstuffs andwines.38 This provision, which requires relevant
procedures to be conducted to take into accountthe interests of a geographical indication that has
been in use prior to a registered trademark, canbe considered as one of the provisions that show
the superiority of geographical indications. At thesame time, Article 10.19 of said FTA provides forthe recognition of specific geographicalindications for wines, aromatized wines andspirits, while the provisions of Article 10.20,
Article 10.21, and Article 10.22 of said FTA
provide for the right of use, scope of protection,and enforcement of protection, respectively.
The relationship with trademarks is provided
for in Article 10.23, paragraphs (1)39 and (2)40 of
said FTA. These provisions provide for theregistration of a trademark that corresponds toany of the following situations in relation to a like

good: (i) the use of any means in the designationor presentation of a good that indicates orsuggests that the good in question originates in ageographical area other than the true place oforigin in a manner which misleads the public as to
the geographical origin of the good (Article 10.21,
paragraph (1), item (a) of said FTA); or (ii) theuse of a geographical indication identifying a goodfor a like good not originating in the place
indicated by the geographical indication inquestion, even where the true origin of the goodis indicated or the geographical indication is usedin translation or transcription or accompanies byexpressions such as 'kind,' 'type,' 'style,''imitation,' or the like (item (b) of said paragraph);or (iii) any other use which constitutes an act of
unfair competition within the meaning of Article
10bis of the Paris Convention (item (c) of said
paragraph). In addition, it is provided for that incases where the relevant trademark application is
filed after the grant of protection or recognition of
the relevant geographical indication, both theapplication for trademark registration and application
for recognition of the relevant geographical indication
may be refused or invalidated.
3

Analysis on the Design of Systems forthe Development of Regional Brands inSouth Korea and the Issues Thereof

In response to the FTA negotiations with theUnited States, South Korea amended theTrademark Act41 to newly introduce a geographicalindication
certification
mark systembyestablishing a geographical collective marksystem that was based on the former collective
mark system. Moreover, South Korea not only
provided for the definition on geographicalindication in Article 2, paragraph (1), item (3-2) of
the Trademark Act, 42 but also definedhomonymous
geographicalindicationinconsideration of the fact that Hangul is a languagethat records sounds and Kanji characters are lesslikely to be used in marks.43
Furthermore, South Korea provided separate
definitions on geographical collective marks basedon the former collective marks system (Article 2,paragraph (1), item (3-4) of said Act)44 and thoseon geographical certification marks based on the
newly introduced certification mark system (item(4-2) of said paragraph)45. However, the point ofproviding such definitions remains unclear.
Meanwhile, South Korea also provided thedefinition of geographical indications46 in Article
2, paragraph (1), item (viii) of the Agricultural and●

6 ●IIP Bulletin 2013 Vol.22

Marine Products Quality Control Act, 47 inresponse to the FTA negotiations conducted with
the EU. The definition provides the same asabove, except that it covers only agricultural andmarine products and the processed products
thereof while the definition provided in theTrademark Act covers goods in general. Moreover,the definition of homonymous geographicalindication is also defined in the Agricultural andMarine Products Quality Control Act, as is thecase with the Trademark Act (Article 2, paragraph(1), item (ix) of the Agricultural and Marine
Products Quality Control Act). Furthermore, theAgricultural and Marine Products Quality Control
Act defines the right to geographical indication48
and clearly stipulates that the registration ofgeographical indication under the Act means the
grant of a right.
While remedies against infringement oftrademark rights, including the right to seek
injunction (Article 65 of the Trademark Act) andthe right to claim damages (Article 67 of said Act)
have naturally been provided for in the Trademark
Act of South Korea, similar provisions were
stipulated in the Agricultural and Marine
Products Quality Control Act as a result of therevision in 2011. Accordingly, this Act changed its
status as a mere law for administrative control toa law equipped with means to seek remedy, suchas the right to seek injunction (Article 36 of saidAct) and the right to claim damages (Article 37 of
said Act). Furthermore, provisions for thearrangement of these measures under the two
Acts49 50 were established, respectively.
However, the dual registration system for
geographical indications has raised difficulty insetting guidelines for creation of regional brands
and has led to multiple campaigns in various
competent ministries and agencies for promotionof registration of geographical indications.
Moreover, various problems have occurred suchas the increase in the burden of producers orservice providers in relation to geographicalindications and consumer confusion over theselection of goods.

discussing the U.S. geographical indication
protection system. Needless to say, the dilution
theory was first alleged by Mr. Frank I.
Schechter. 51 Following the Trademark Dilution
Revision Act passed in October 2006, the current
U.S. Trademark Law classifies the dilution
concept into two categories: "dilution by
blurring" 52 and "dilution by tarnishment." 53 At
the same time, to achieve a balance with thefreedom of expression, exclusions are provided
for the following acts: (A) any fair use including
advertising for comparison, parodying, criticizing,or commenting; (B) all forms of news reportingandnewscommentary;
and
(C)
any
noncommercial use of a mark (Article 43,
paragraph (c)(3) of said Law (15 U.S.C. §1125)).54
In the past, trademarks were required to haveinherent distinctiveness for the application of theformer dilution theory, and such application was
not allowed no matter how famous the mark forthe regional brand (including geographicalindication) was.55 Yet, as it was clearly definedthat famous marks should be "distinctive,
inherently or through acquired distinctiveness"through this law revision, it is possible that thedilution theory could be applied to marks forregional brands.
Therefore, under a U.S. type of geographicalindication protection system, a mark can first be
registered as a collective mark or certification
mark and further, where there are any regional
brands that may be equivalent to the appellationof origin as mentioned above, the dilution theory
may be applicable to provide additional protection
to such marks.
Although the provision of Article 2,paragraph (1), item (ii) of the Japanese Unfair
Competition Prevention Act is recognized asproviding protection against dilution, suchdilution is at least not explicitly provided andrequired in the legal text of said Act. Therefore,
some people hold the opinion that, to some extent,
there is a discrepancy in legislative intent
between the legal text of said Act and said item.56
In particular, in protecting marks that include
geographical names under the Unfair Competition
Prevention Act, there must be an examination on
the lack of provisions corresponding to the fairuse provided for in the abovementioned U.S.
protection system, which is represented by an
insufficient adjustment between the Unfair
Competition Prevention Act and the provisions ofArticle 26, paragraph (1), items (ii) and (iii) of theTrademark Act and the issue of indication forcommon names.

Ⅳ U.S. Type System and EU Type
System for Development ofRegional Brands
1

Development of Regional Brands undera U.S. Type of Geographical Indication
Protection System
The dilution theory is indispensable in●

IIP Bulletin 2013 Vol.22

7 ●In the United States, the Trademark Law
uniformly provides protection of geographicalindications, thus displaying the significance of theLaw. In this regard, Ms. Eleanor Meltzer raises
four benefits. 57 Yet, although the first benefit
raised may be regarded as the most important
advantage in protecting geographical indications
using a trademark system, protection inaccordance with international rules has a bilateral
aspect. Moreover, as there are only two cases
where foreign applicants have registered theirmarks under the current Japanese regional
collective trademark system, the international
protection system is insufficient. Regarding thesecond benefit, geographical indications do fallunder the scope of intellectual property rights. 58
However, they are neither a private property nor
a public property, but a shared property, and thus
should strictly be separated from otherintellectual property rights. With respect to thethird benefit, there is certainly a huge advantage
in using the application procedures under theformer trademark system or other judicial
systems without modification, as alleged by Ms.
Meltzer. Yet, as mentioned above, there is a huge
difference between geographical indications andordinary trademarks in terms of the legal nature,and thus protection by the same method with thesame effect has limits. The fourth and final
benefit, which sets out the advantage inborder-enforcements achieved by granting theright to geographical indication within theframework of the trademark system, is true.
In Japan, there exist a number of regional
brands with a geographical quality and/or
characteristic specific to each region, and apractical benefit in protecting them throughgeographical indications. Moreover, because
these regional brands defined by geographicalcharacteristics are shared properties, they
involve problems such as the unavailability ofsustainable protection and development unless an
institutional
security(i.e.,
substantial
management and supervision) is provided. 59
2stronger regulation by the administrative organs
and to give superiority to geographical indications
over trademarks.
In order to realize such a system where
regulation by administrative organs is stronger orgeographical indications have superiority overtrademarks that are private rights, a theoreticalbasis would be required. This basis is served by
the concept of le terroir, which is closely related
to geographical characteristics.60 Japan, which isa country with a territory stretching from northto south and blessed with a rich geographicalenvironment and fine climate, has raised many
regional brands through its long history. 61 The
elements underlying these regional brands areexactly the concept of le terroir. Meanwhile,appellation of origin is defined in Article 2,paragraph (1)(a) of the Council Regulation No.
510/2006. 62 One of the characteristics in thedesign of the system of marks for regional brands
in Europe is that phased protection is provided byusing two concepts, i.e., appellation of origin andgeographical indication, according to theconstituent features of the geographicalcharacteristics.
In Japan, not only are there goods (orservices) that are eligible for protection under thesystem of appellation of origin but there are also
needs for such protection. Actually, Nagano
prefecture has its own system to control theappellation of origin, i.e., Nagano Appellation
Control, 63 and Koshu city of Yamanashi
prefecture is operating a Koshu City AOC.
No arguments have been made over the factthat the protection of geographical indications
under the Agricultural and Marine Products
Quality Control Act of South Korea is based on an
EU type of geographical indication protection
system. Yet, Mr. Byungil Kim points out that theSouth Korean registration system of geographicalindication (based on the Agricultural and Marine
Products Quality Control Act), which emphasizes
the aspect of quality certification, is caused by aninaccurate understanding of the fundamental
purpose of the geographical indication protection
system. 64 At the same time, he alleges that
"Geographicalindicationsareintellectual
property rights that are largely based on theregional characteristics and reputation of thegoods, rather than on the quality certification
system, where focus is placed on quality control
as food sanitation in its core," 65 with which thisauthor strongly agrees. Similar problems can befound in the control system for appellation oforigin managed by the two prefectures, Nagano

Development of Regional Brands underan EU type of Geographical Indication
Protection System Originating from the
French System of Appellation of Origin

While the protection of geographicalindications is left to the trademark system under
the principle of private autonomy in the UnitedStates, the system for such protection in the EU
is characterized in that it is designed to have●

8 ●IIP Bulletin 2013 Vol.22

and Yamanashi, as mentioned above.

Vmass production under certain standards
accelerates the commoditization of markets.
With respect to the development of regional
brands, if anyone who belongs to the relevant
region could indicate a mark representing thename of the relevant region, such mark is merely
an indication of the place of origin and cannot be
deemed to be protected as one of the intellectual
property rights, a geographical indication ordesignation of origin. This is because regional
brands are created and developed by the relevant
region's natural, cultural and historical factors
adding story lines to the relevant mark. 69 The
protection of geographical indications, which isone of the effective means for developing regional
brands and is suitable to the commoditizedmarket, could also function as a means to provide
an institutional guarantee to geographicalindications, in this information-explosion era.70
From the legal aspect, allegations were madein regard to the protection of geographicalindication that any consumers' misunderstandingor confusion should be prevented and fair
distribution of interests arising from the
proprietary value of the relevant geographicalindication should be made to the right holders bymaintaining the quality and characteristics of thegoods with the relevant geographical indication.71
Moreover, opinions were heard that suchprotection may lead to the protection of small
farmers and function as a quality guarantee ofgoods.72. Although the appropriateness of these
opinions may vary depending on the definition ofgeographical indications as well as the system tobe designed in Japan, they have mentioned an
important aspect for the necessity of protection ofgeographical indications.

Appropriate Design of the
System for Development ofRegional Brands and the Ideal
Trademark Act in Japan

A geographical indication that associates theplace of origin with quality and/or characteristic
requires an accumulation of efforts and traditionsof the regional producers from generation to
generation. Moreover, taking into account theconsumers that evaluate and support such
geographical indication, it is said that "while
human and social factors play a big role withrespect to geographical indications, time also
plays an important role therein."66 As Mr. Shigeo
Takakura has mentioned, "New research is
expected to be made on geographical indications
not only as a response to international exchange
but also as one of the national policies to find out
the appropriate protection of indications for local
specialties as an intellectual property, which issuited for the ‘locality era’ and ‘consumer-led
era.’" 67 Therefore, examination should be madeon the Japanese system for the protection ofgeographical indications as intellectual property
rights.
1

SignificanceofProtection
Geographical Indications in Japanof

Changes in policies of intellectual property
laws are often due to the historical backgroundand changes in the environment surrounding themarkets. The same can be said for the design of asystem for marks of regional brands. Such marks
were previously protected by measures such as
the exclusion of descriptive indication fromtrademark registration or restriction on
fraudulent indication on the place of origin (i.e.,
passive protection). However, they are now
defined in legal terms (i.e., geographicalindication or appellation of origin) and require
active protection. One of the reasons for thissituation is the commoditization of the market.68
Especially in countries like Japan where relevantlaws are established—i.e., Act for Standardization
and Proper Labeling of Agricultural and Forestry
Products ("JAS Act" for agricultural and forestry
products), Industrial Standardization Act ("JISAct" for industrial products), and Premiums andPresentations Act—the basic quality standard isfixed, and quality guarantee at the level of safety
and security is sought under a system. However,2

Under the current Trademark Act of Japan,
basically, the place of origin, place of sale, quality
and the like cannot be registered as trademarks(Article 3, paragraph (1), item (iii) of theTrademark Act). However, notwithstanding said
paragraph, they can be registered as trademarks if,
as a result of the use of the mark, consumers areable to recognize the goods or services as thosepertaining to a business of a particular person(paragraph (2) of said Article). This means that amark indicating a geographical name can beregistered as a trademark if such mark is famousenough for consumers to distinguish the business●

IIP Bulletin 2013 Vol.22

State of Protection and Nature of
Geographical Indications under the
Trademark Act of Japan9 ●source of the relevant goods or services.
Moreover, notwithstanding the provision of
Article 3 of said Act, a trademark that is likely tocause confusion in connection with the goods orservices pertaining to a business of anotherperson (Article 4, paragraph (1), item (xv) of saidAct) and a trademark that is likely to mislead as tothe quality of the goods or services (item (xvi) of
said paragraph) cannot be registered as
trademarks (main clause of said paragraph).
Furthermore, to perform the obligation imposed
under Article 23 of the TRIPS agreement,
additional protection has been provided to theindication of the place of origin for wines andspirits in item (xvii) of said paragraph.
Meanwhile, exclusions can be found in theregional collective mark system. Under thesystem, in order to overcome the inconveniencesuffered in registering the abovementioned marks
indicating geographical names as trademarks, theparty applying for such registration was required
to be an association established by a special Act
that includes a business cooperative, and such
association was further prohibited from imposing
on any of its prospective members any condition
heavier than those imposed on its existing
members (Article 7-2, paragraph (1) of said Act).
Registration as a collective trademark of theassociation in the relevant region could be one ofthe options for the protection of marks indicating
geographical names, as the case may be (Article 7
of said Act). However, the current collective marksystem has no provision regarding a case where
the member of an association has used its
collective mark on false regional goods orservices. 73 Moreover, in the case of regional
collective marks, the JPO does not have theauthority to order the suspension of improper useof a mark for which a proper application has been
filed. This is obviously because the JPO is anorganization that registers trademarks but not
one that administratively controls them.
Furthermore, it has been pointed out by Mr. Dev
Gangjee that, at present, although the JPO
registers regional collective marks, it is not
responsible for mediating disputes on issues suchas setting standards for products, defining thegeographical boundaries or objectively applying
collective marks without discrimination.74
Trademarks are marks that indicate thebusiness source and fall under the scope ofprivate properties. Therefore, needless to say, if aholder of a trademark registers his/her trademark
and obtains a trademark right, such holder of a
trademark can freely decide on the place of origin

or place of provision and quality of the designatedgoods or services. On the other hand,geographical indications are marks that indicate
the geographical origin and fall under the scope ofshared properties. Thus, it is reasonable toconsider that, even if the relevant mark has beenregistered, the holder of such mark cannot freely
decide on the place of origin or place of provisionand the quality defined by the relevant
geographical factor of the designated goods orservice. Accordingly, it is necessary to design asystem where the use of the registeredtrademark to the designated goods by the holder
of a trademark may constitute grounds for the
rescission of registration.
3

Examination on the Ideal Trademark Act
for the Protection of Geographical
Indications

Goods marks are essentially signs thatconsist of two aspects, namely the mark itself andinformation transmitted to the consumers by themark. While it is important to decide on thesimilarity of marks themselves, the substance ofthe protection of trademarks lies in the decision
on information transmitted to the consumers by
the marks. A mark indicating a regional brand is a
representation of a specific quality and/or
characteristic that originates in geographicalfactors. Thus, an effective system for thedevelopment of regional brands should bedesignedbyguaranteeingasubstantial
connection between the relevant mark and theinformation transmitted by such mark. Based on
this understanding, in order to protect marks forthe development of regional brands, it would benecessary to establish a requirement that theregistration applicant be capable of guaranteeing asubstantial connection between the mark of theregional brand and the specific quality and/or
characteristics originating in the geographicalfactors of the relevant region. In this sense, therequirement imposed on such applicant under thecurrent regional collective mark is too limited.75
Next, discussions shall be held on thedefinition of the object to be protected. Concepts
that deserve protection as an intellectual
property right are geographical indications andappellation of origin, as mentioned above. These
concepts should be defined in domestic laws. 76
Moreover, it is indispensable to understand theconcept le terroir, which serves as the basis forthe protection of appellation of origin.
Nevertheless, even if separate definitions are●

10 ●IIP Bulletin 2013 Vol.22

made for marks representing regional brands, it ismore than clear that, within the framework of thecurrent Trademark Act,77 difficulties would arisein the enforcement of rights for such marks thathave once been registered as trademarks. Thus, itis necessary to design a new system of marks
indicating geographical origins. Therefore, there
shall be an examination on two theories.
The first theory maintained by Mr. Tatsuki
Shibuya is based on a dual legislation of theTrademark Act. 78 Under this theory, "marks ofgeographical origin" shall be given a new concept
different from that of trademarks, 79 and while
making the best use of the existing mechanism
for registration under the Trademark Act, a
special rule shall be established for marks ofgeographical origin. This theory would require
the generic concept necessary for registration to
be the "distinctiveness of geographical origin"
instead of the "distinctiveness of the businesssource," and the decision on similarity to be madeon the basis of any confusion of the geographicalorigin in association with the requirements
imposed in the course of examination forregistration, and further, the establishment of asystem of review at the time of renewal.
The other theory is based on theestablishment of a double track system for
geographical indications. Under this theory, thesystem of marks for geographical origin shallconsist of two aspects: (i) substantial
management and supervision of specific quality
and/or characteristics by the competent
ministries and agencies or public institutions; and(ii) protection of marks under the Trademark
Act.80
Dual legislation of the Trademark Act ishighly feasible in that trademarks andgeographical origin marks can clearly be
distinguished and that the existing mechanism oftrademark registration can be utilized. However,there are differences between trademarks andappellations of origin or geographical indicationsin their legal nature, such as while the former is a
private property, the latter is a shared property.
Moreover, the information transmitted to theconsumers by geographical origin marks isdifferent from that transmitted by trademarks.
Therefore, there should be further discussions on
matters such as the review of the standard for
deciding similarity in the case of geographicalorigin marks and the possibility of providing
additional protection to appellation of origins
without
imposingtherequirementof
non-confusion. 81 The concept underlying thecurrent Trademark Act is insufficient to be fully
adapted to the nature of geographical indications.
On the other hand, under the theory of
establishing a double track system, substantial
management and supervision by the ministries
and agencies or relevant public institutions of thespecific quality and/or characteristic originating in
the geographical factors would be an
indispensable factor in developing regional brands.
This is based on the fact that the informationtransmitted to consumers by marks representing
regional brands is information on the geographicalorigin of the relevant goods or services. In otherwords, it is information on the quality and/or
characteristics of the designated goods orservices originating in the geographical factors.82
However, in designing a system containing
the function of substantial management andsupervision, the South Korean practice ofallowing multiple marks for the same regional
brand should be avoided, from the viewpoint oftransmitting accurate information to consumers.
Thus, cooperation between ministries andagencies would be essential for the protection ofmarks representing regional brands. Accordingly,
it would be reasonable to establish a double track
system where the substantial management andsupervision of the quality and/or characteristic
originating in the geographical factors shall be
entrusted to the competent agencies andministries or relevant public institutions based on
the abovementioned cooperation, while theconnection between the information and the marktransmitting such information shall be protectedby registration as collective trademarks orcertification trademarks under the Trademark
Act.

Ⅵ Conclusion
Regional brands are created through asustainable guarantee of geographical quality
and/or characteristic by appropriate protection
and shall be developed through an accuratetransmission of information to the consumers.
Thus, phased protection should be provided
according to the characteristic of informationtransmitted by the regional brand. In the future,
further comparative studies should be made on
the design of an EU type of system that gives
superiority to the appellation of origin overtrademarks as well as on the application of thedilution theory to marks indicating the name ofregion under a U.S. type of system. By reference
to such comparative studies, deeper examinations●

IIP Bulletin 2013 Vol.22

11 ●should be made to design a system for theprotection of influential region brands without
imposing the requirement of confusion in Japan.
Furthermore, not only the cooperation and clear
allocation of roles between the ministries andagencies should be made, but there should also bemeasures taken for the selection of marks to becalled regional brands, defining of thegeographical boundaries, and distinction between
the guarantee of quality and/or characteristics
originating in geographical factors and theprotection of marks as intellectual property.

contrôlées, Décret-loi du 30 juillet 1935) in 1935. AOC
is an abbreviation of Appellation d’Origine Contrôlée(Controlled Appellations of Origin).
7
An appellation of origin shall consist of the geographicalname of a country, region or locality that serves todesignate a product originating therein, the quality or
characteristics of which are due to the geographicalenvironment, including both natural and human factors.
8
This measure was taken pursuant to the Law of July 2,
1990, Concerning Appellations of Origin of Agricultural
Products and Foodstuffs, Both Processed andUnprocessed (Loi du 2 juillet 1990 relative aux
appellations d’origine contrôlées des produits agricoles
ou alimentaires, bruts ou transformés).
9
TiánFúRóng, "Research on the Legal Protection of
Geographical Indications," p. 159 (Intellectual Property
Publishing House, 2009); the original text is in Chinese.
10
Council Regulation (EEC) No. 2081/92 of July 14, 1992,
on the Protection of Geographical Indications andDesignations of Origin for Agricultural Products andFoodstuffs (Règlement (CE) N°2081/92 du Conseil du
14 Juillet 1992 relatif à la protection des indications
géographiques et des appellations d’origine desproduits agricoles et des denrées alimentaires).
11
15 U.S.C.§1054 - Collective marks and certification
marks registrable: Subject to the provisions relating to
the registration of trademarks, so far as they areapplicable, collective and certification marks, including
indications of regional origin, shall be registrable
under this chapter, in the same manner and with thesame effect as are trademarks, by persons, and nations,
States, municipalities, and the like, exercisinglegitimate control over the use of the marks sought tobe registered, even though not possessing an
industrial or commercial establishment, and whenregistered they shall be entitled to the protection
provided in this chapter in the case of trademarks,
except in the case of certification marks when used so
as to represent falsely that the owner or a user thereof
makes or sells the goods or performs the services onor in connection with which such mark is used.
Applications and procedure under this section shallconform as nearly as practicable to those prescribed
for the registration of trademarks.
12
The term “certification mark” means any word, name,symbol, or device, or any combination thereof—(1) used by a person other than its owner, or(2) which its owner has a bona fide intention to permit
a person other than the owner to use in commerce andfiles an application to register on the principal registerestablished by this chapter,
to certify regional or other origin, material, mode ofmanufacture, quality, accuracy, or other characteristics
of such person’s goods or services or that the work orlabor on the goods or services was performed bymembers of a union or other organization.
13
The term “collective mark” means a trademark orservice mark—(1) used by the members of a cooperative, anassociation, or other collective group or organization, or(2) which such cooperative, association, or othercollective group or organization has a bona fide intention
to use in commerce and applies to register on theprincipal register established by this chapter,

1

Japan Patent Office ed., Kogyoshoyukenho chikujokaisetsu(Clause-by-Clause Explanation of Industrial Property
Law), (19th ed.) p. 1310 (Japan Institution for Promoting
Invention and Innovation, 2012).
2
While systems related to intellectual properties asrepresented by patents are considered as a North-South
Issue, the system for geographical indications hasbrought conflict between the Old World (as represented
by the European Countries) and the New World (asrepresented by the United States and Australia).
Therefore, there is a huge difference between theEuropean geographical indication protection systemand the U.S. geographical indication protection system,and each system needs to be taken into consideration in
conducting trade negotiations with these regions andcountries.
3
The U.S.-Korea Free Trade Agreement was signed onJune 30, 2007 and entered into force on March 15, 2012,
while the EU-Korea Free Trade Agreement wasformally signed on October 6, 2010, and entered into
force on July 1, 2011.
4
Extraits choisis par François des Lingeris du texte de<<L’ Evolution de la Législation sur les Appellations d’
Origine – Genèse des Appellations Contrôlées –>> par
Joseph Capus en 1947, "The Evolution of the Law on
Appellations of Origin – Genesis of Controlled
Appellations" as translated by Teiji Takahashi in
Nobiyuku Nogyo (Developing Agriculture) No. 983, p. 1,(2009): In 1870, nearly one third of the Frenchvineyards suffered catastrophic damage from pests,
such as phylloxeras, and the issues of fraud anddisputes over the indications of regional origin of wines
became increasingly serious. To regulate such fraud,
the Law of August 1, 1905 on Suppression of Fraud in
Respect of Wines (La loi du 1er août 1905) was enacted
in 1905. Under this system, the naming system for theappellation of origin was established and the namingright of the appellation of origin was uniformly vested
in governmental organizations and executed by the
representatives of each region of the central
government. The period from 1905 to 1919 is called theadministrative naming period.
5
Pursuant to the enactment of the Law of May 6, 1919
on the Protection of Appellations of Origin in 1919 (Loidu 6 mai 1919 relative à la protection des appellations
d’origine), the judicial naming period started andcontinued until 1935.
6
The AOC period started from the enactment of theDecree-Law of July 30, 1935 on Controlled Appellationsof Origin (Reconnaissance des appellations d’origine●

12 ●IIP Bulletin 2013 Vol.22

and includes marks indicating membership in a union,
an association, or other organization.
14
According to WIPO/GEO/MVD/01/1 on page 2, theterm "indication of source" is used in Article 1(2) and
10 of the Paris Convention for the Protection ofIndustrial Property of 1883 (hereinafter simply
referred to as the "Paris Convention") and in Article
1(1) of the Madrid Agreement for the Repression ofFalse or Deceptive Indications of Source on Goods on
1891, but no definition is provided.
It was defined in Section 1(1)(e) of the Model Law for
Developing Countries on Marks, Trade Names andActs of Unfair Competition by the United International
Bureau for the Protection of International Property(BIRPI: WIPO's predecessor organization) that,"'indication of source' means any expression or signused to indicate that a product or service originates in agiven country or group of countries, region or locality."
The term was further amended in Section 1(b) of WIPO
Model Law for Developing Countries on Appellations ofOrigin and Indications of Source (1975).
15
Article 2(1) of the Lisbon Agreement for theProtection of Appellations of Origin and theirInternational Registration of 1958: "appellation oforigin" means the geographical denomination of acountry, region, or locality, which serves to designate a
product originating therein, the quality or
characteristics of which are due exclusively or
essentially to the geographical environment, including
natural and human factors.
The definition mentioned in the main text came into use
in Section 1(a) of WIPO Model Law for Developing
Countries on Appellations of Origin and Indications ofSource, which was provided after Article 1(1)(f) of theModel Law for Developing Countries on Marks, Trade
Names, and Acts of Unfair Competition enacted in 1967.
16
The commentary to Article 51 of the abovementioned
Model Law of 1967 was one of the first references
made on geographical indications: BIRPI Publication
No.805 (E), p. 82.
Indications of source and appellations of origin are both
geographical indications. Yet, geographical indications
were not deemed to be legal concepts at this stage.
It was later defined in the Draft Treaty on theProtection of Geographical Indications (WIPO) in 1975,
and has now been provided for in the Agreement on
Trade-Related Aspects of Intellectual Property Rights of1994.
17
There are, of course, issues of overlapping indications
on the same information. In this regard, please refer tothe authors report, "Trademark Act and Consumer
Protection with a Focus on a Comparative Study of the
Sign Systems in Japan, China, and South Korea"
published under the Industrial Property Research
Promotion Project FY2011 entrusted by the Japan
Patent Office (Institute of Intellectual Property, 2012).
18"Geographical indications" means indications which
identify a liquor listed in the following items 2 through4 as originating in the territory of a Member of theWorld Trade Organization, or the region or locality inthat territory, where a given quality, reputation orother characteristic of the liquor is essentiallyattributable to its geographical origin.
19
Requirements for regional collective trademarks areprovided for in the Trademark Act as follows: (i) Any
association established by a special Act, including abusiness cooperative, which are established byproviding, without a just cause, that the association
shall not refuse the enrollment of any person who iseligible to become a member or that the association
shall not impose on any of its prospective members
any condition that is heavier than those imposed on its
existing members (the main clause of Article 7-2,
paragraph (1) of the Trademark Act); (ii) such
association is well known to a certain extent (the latter
half of the main clause of Article 7-2, paragraph (1) of
said Act); (iii) a mark consisting of the characters
indicating the name of the region and other relevant
common names (Article 7-2, paragraph (1), item (i) of
said Act); (iv) the relevant name of the region should
be considered to have a close relationship with therelevant goods or services (Article 7-2, paragraph (2)of said Act); (v) the relevant mark is assumed to be
used by the members (Article 7-2, paragraph (3) of
said Act); and (vi) a document certifying that theapplicant for trademark registration meets the
subjective requirement, i.e., the applicant is anassociation, etc. and documents necessary to provethat the trademark for which the registration is sought
contains the name of a region as provided in paragraph(2) shall be submitted to the Commissioner of theJapan Patent Office (Article 7-2, paragraph (4) of said
Act).
20
Judgment of the Nara District Court, July 30, 2003,
1999 (Wa) No. 460.
21
Judgment of the Fukuoka District Court, December 10,
2012.
22
Ogawa, Soichi. "Chiikidantaishohyo to Shohyoho no
Kihonteki Rinen – Chiikiburando no hogo ni kansuru
shohyoho no nisengonen ichibu kaisei" (Basic Conceptsof Regional Collective Trademarks and Trademark Act(1) – Partial Revision to the Trademark Act in relation
to the Protection of Regional Brands in 2005) Nihon
Hogaku (Journal of Law), vol. 71, No. 3, p. 204, 2006.
23
Imamura, Tetsuya. "Chiikidantaishohyo to
Chiritekishohyo no Hogo – Sono yokisenu hogo no
kousaku –" (Special Collective Trademarks for
Geographical Names and Protection of Geographical
Indications – The Unexpected Overlap of Protection -),Annual Report of the Japan Association of Industrial
Property Law No. 30, p. 276, 2006.
24
Tamura, Yoshiyuki. Chitekizaisanho Daigohan (Fifth
Edition of Intellectual Property Laws) p. 130 (Yuhikaku
Publishing Co., Ltd, 2010).
25
Ono, Shoen and Matsumura, Nobuo. Shin
Fuseikyosoboshiho Gaisetsu (New Commentary on
Unfair Competition Prevention Act), p. 160 (Seirin
Shoin, 2011): Indications are only required to be widely
known to the extent that the confusion generates asituation in violation of the business principle of goodfaith.
26
Judgment of the Supreme Court, May 20, 1959, Keishu
Vol. 13, No. 5, p. 755 (Amamoto Final Appeal Case)
27
With respect to the protection of famous indication,refer to Doi, Kazufumi. "Tanin no Shinyo, Meisei no
Riyo to Fuseikyosoboshiho" (Use of Reputation andFame of Others and the Unfair Competition PreventionAct) Tokkyo Kenkyu (Patent Studies) No. 4, p. 15●

IIP Bulletin 2013 Vol.22

13 ●(1987).
Supra note 25, p. 211.
29
Ono,Shoen. Shin Chushaku Fuseikyosoboshiho (Newannotation Unfair Competition Prevention Act), (3th ed.
First volume) p. 91 (Seirin Shoin, 2012).
30
Each party shall provide that trademarks shall include
certification marks. Each Party shall also provide thatgeographical indications are eligible for protection as
trademarks.
31
Geographical indications means indications that
identify a good as originating in the territory of a Party,
or a region or locality in that territory, where a given
quality, reputation or other characteristic of the good isessentially attributable to its geographical origin. Anysign (such as words, including geographical andpersonal names, as well as letters, numerals, figurative
elements, and colors, including single colors) or
combination of signs, in any form whatsoever, shall be
eligible to be a geographical indication. "Originating" inthis Chapter does not have the meaning ascribed tothat term in Article 1.4 (Definitions).
32
Each Party shall provide that the owner of a registeredtrademark shall have the exclusive right to prevent all
third parties not having the owner's consent fromusing in the course of trade identical or similar signs,
including geographical indications, at least for goods orservices that are identical or similar to those goods orservices in respect of which the owner's trademark is
registered, where such use would result in a likelihoodof confusion. In the case of the use of an identical sign,
including a geographical indication, for identical goods
or services, a likelihood of confusion shall be
presumed.
33
Each Party shall provide for appropriate measures torefuse or cancel the registration and prohibit the use ofa trademark or geographical indication that is identicalor similar to a well-known trademark, for related goods
or services, if the use of that trademark or
geographical indication is likely to cause confusion, orto cause mistake, or to deceive or risk associating thetrademark or geographical indication with the owner ofthe well-known trademark, or constitutes unfair
exploitation of the reputation of the well-known
trademark.
34
Article 18.2(15). (a) Each Party shall provide that eachof the following shall be grounds for refusing
protection or recognition of, and for opposition andcancellation of, a geographical indication:(i) the geographical indication is likely to cause
confusion with a trademark that is the subject of agood faith pending application or registration in the
Party's territory and that has a priority date that
predates the protection or recognition of thegeographical indication in that territory(ii) the geographical indication is likely to cause
confusion with a trademark, the rights to whichhave been acquired in the Party's territory throughuse in good faith, that has a priority date that
predates the protection or recognition of thegeographical indication in that territory;(iii) the geographical indication is likely to cause
confusion with a trademark that has become wellknown in the Party's territory and that has apriority date that predates the protection orrecognition of the geographical indication in that
territory.
35
Kim, Won-oh. "Examination of the Certification Mark
System of the United States to Proceed to the Stage of
U.S.-Korea FTA" Collection of Creation and Rights, No.
48, p. 36 (2007).
36
Kim, Won-oh and Kim Byungil. "Legal Considerationon the Protection of Geographical Indications," Korean
Law Review No. 14, p. 56 (2003).
37"Geographical indication" means the name of a region,a specific place or, in exceptional cases, a country, used
to describe an agricultural product or a foodstuff:- originating in that region, specific place or country,
and- which possesses a specific quality, reputation or othercharacteristics attributable to that geographicalorigin; and- the production and/or processing and/or preparationof which take place in the defined geographical area.
38
Article 10.18.6(f): an objection procedure that allows
the legitimate interests of prior users of names,
whether those names are protected as a form ofintellectual property or not, to be taken into account.
39
Article 10.23.1: The registration of a trademark that
corresponds to any of the situations referred to in
Article 10.21.1 in relation to a protected geographicalindications for like goods, shall be refused orinvalidated by the Parties, provided an application forregistration of the trademark is submitted after thedate of application for protection or recognition of thegeographical indication in the territory concerned.
40
Article 10.23.2: For the purpose of paragraph 1: (a) for
geographical indications referred to in Articles 10.18
and 10.19, the date of application for protection orrecognition shall be the date when this Agreement
enters into force; and (b) for geographical indications
referred to in Article 10.24, the date of application forprotection or recognition shall be the date of a Party's
receipt of a request by the other Party to protect orrecognize a geographical indication.
41
Amended by Act No. 1885 on July 21, 2011 andenforced on July 22, 2012.
42
The term "geographical indication" means an indication
which
identifies
goods
as
being
produced,manufactured, or processed in a region or locality
where a given quality, reputation or any othercharacteristic of the goods is essentially attributable totheir geographical origin.
43
The term "homonymous geographical indication"means a geographical indication which has the same
sound as another person's geographical indication forthe same goods, but is different in region or locality.
(Article 2, paragraph (1), 3-3 of the South Korean
Trademark Act)
44
The term "geographical collective mark" means acollective mark which is intended to be used directly
by a corporation composed solely of the persons who
produce, manufacture, or process goods eligible for
geographical indication as a business or which isintended to be used with respect to the goods ofmembers of the corporation who are controlled by it.
45
The term "geographical certification mark" means acertification mark with geographical indication used bya person who carries on the business of certifying the

28

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quality, origin, mode of production, or other charactersof goods in order to certify whether the foods of aperson who carries on the business of producing,
manufacturing or processing goods satisfy specified
geographical characters.
46
The term "geographical indication" means an indication
displaying that agricultural or marine products or theprocessed products as provided for in item (xiii), thereputation, quality and other attributes of which areessentiallyoriginatedfrom
thegeographicalcharacteristics of a specific region, are produced andprocessed in the specific region.
47
Wholly amended by Act No. 10885 of July 21, 2011, andenforced on July 22, 201248
The term "right to geographical indication" means an
intellectual property right to exclusively use
geographical indications registered pursuant to thisAct (including homonymic geographical indications:the same shall apply hereinafter).
49
Article 22-2 of the Trademark Act (Request, etc. for
Search of Trademark by Specialized Search Agency):(3) Where an application for registration of ageographical collective mark is filed with respect toitems entitled for registration of geographicalindication under the Agricultural and Marine Products
Quality Control Act, the Commissioner of the KoreanIntellectual Property Office shall hear opinions from
the Minister of Food, Agriculture, Forestry and
Fisheries about whether it falls under geographicalindication (Newly Inserted by Act No. 7290, December
31, 2004; Act No. 8190, January 3, 2007; Act No. 8852,
February 29, 2008; Act No. 10885, July 21, 2011).
50
Article 32 of the Agricultural and Marine Products
Quality Control Act (Registration of Geographical
Indications): (4) […], the Minister of Food, Agriculture,
Forestry and Fisheries shall hear opinions from theCommissioner of the Korean Intellectual Property
Office about whether the applied geographicalindication infringes another person's trademark(including geographical collective mark; the same shallapply hereinafter) pursuant to the Trademark Act.
51
See Schechter, Frank I.. The Rational Basis ofTrademark Protection, 40 Harv. L. Rev. 813 (1927).
52
Article 43, paragraph (c) of the U.S. Trademark Law(15 U.S.C. §1125): "dilution by blurring" is association
arising from the similarity between a mark or tradename and a famous mark that impairs thedistinctiveness of the famous mark.
In determining whether a mark or trade name is likely
to cause dilution by blurring, the court may consider
all relevant factors, including the following:(i) the degree of similarity between the mark or tradename and the famous mark;(ii) the degree of inherent or acquired distinctivenessof the famous mark;(iii) the extent to which the owner of the famous markis engaging in substantially exclusive use of themark;(iv) the degree of recognition of the famous mark;(v) whether the use of the mark or trade name intended
to create an association with the famous mark; or(vi) any actual association between the mark or tradename and the famous mark.
53
Article 43, paragraph (c) of the U.S. Trademark Law(15 U.S.C. §1125): "dilution by tarnishment" is associationfrom the similarity between a mark or trade name anda famous mark that harms the reputation of the famous
mark.
54(3) Exclusions.--The following shall not be actionable
as dilution by blurring or dilution by tarnishment under
this subsection:(A) any fair use, including a nominative or descriptive
fair use, or facilitation of such fair use, of a famous
mark by another person other than as a designation ofsource for the person's own goods or services,
including use in connection with-(i) advertising or promotion that permits consumers tocompare goods or services; or(ii) identifying and parodying, criticizing, orcommenting upon the famous mark owner or the
goods or services of the famous mark owner.
(B) All forms of news reporting and news
commentary.
(C) Any noncommercial use of a mark.
55
Nakayama, Kenichi. "Beikoku ni Okeru Dairyujon
niTtaisuru Hyosho no Hogo – Ranhamuho niyoru hogo
wo chushin toshite – (Protection of Marks From
Dilution in the United States – With a Focus on theProtection under the Lanham Act –) Patent Vol. 56, No.
3, p. 24 (2003).
56
Supra note 25, p. 219.
57
Meltzer, Eleanor. Geographical Indications: Point ofview of governments, WIPO/GEO/SFO/03/3, July 9 to
11, 2003, p. 10.
First, almost all countries – whether Members of the
WTO or not – have functioning trademark systems.
There exist many regional systems for the protectionof trademarks (e.g., the Community Trademark), in
addition to international systems (i.e., Madrid
Agreement and the Protocol to the Madrid
Agreement).
Second, trademarks systems acknowledge that
intellectual property rights are private rights.
Individuals – whether natural or juristic – have fullaccess to trademark systems.
Third, trademark systems provide for the fairtreatment of trademarks and geographical indications
with respect to one another. The same application
procedures as ordinary trademarks are applied and an
opportunity for judicial review of the refusal isprovided to geographical indications.
Finally, trademark systems incorporate establishedenforcement
mechanisms.
These
includeborder-enforcement (the ability to stop infringing
goods from entering a country), and established civil
and criminal penalties for willful infringement,
counterfeiting, and piracy.
58
See Article 1(2) of the TRIPS agreement.
59
See Hardin, Garrett. The Tragedy of the Commons,
Science, 1968: As a rational being, each herdsman
seeks to maximize his gain. This would be madeexplicitly or implicitly, more or less consciously.
Adding one more animal to the herd, the positive andpersonal utility of the herdsman is nearly +1.
Meanwhile, since the burden associated with such
addition would be shared by all the herdsmen, thenegative utility would always be less than -1. Because
geographical indications are shared properties, where●

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68

Onzo, Naoto. Comoditikashijo no Maaketinguriron(Marketing Theory in Commoditized Market) p. 2
(Yuhikaku
Publishing
Co.,
Ltd.,
2007):
Commoditization refers to "a situation where thetechnical level of companies gradually becomes thesame and it becomes difficult to differentiate one's
products or services from those of others in terms of
their substantial parts, and thus the consumers canhardly find any difference between any brands."
69
See supra note 68, p.43: Even if there are no majordifferences in the performance of the product, not tomention subcategories, uniqueness could possibly beestablished on the basis of experience value. Whileconventional customers were in pursuit of rational
values, today's customers place greater value on
emotional values, which means that they value
products that offer more excitement, enjoyment,
education or challenges. Thus, there is a sufficientenvironment for experience value to be accepted.
Implementation of the strategy of experience value
does not mean any changes to the field wherecompetitions take place. It refers to the attitude tocompete by using new skills without being wholly
dependent on conventional skills.
70
See supra note 68, p. 60: With the increase in thenumber of brands offered by companies for various
categories of products, the options available for
consumers have dramatically increased. Moreover, theinvolvement of new media, such as the Internet, has
increased the amount of information on each brand at
an accelerated pace. Meanwhile, the advanced
commoditization has led to little difference in the basic
quality of each brand. On the surface, it may seem thatbuying behavior has improved and consumer
satisfaction has reached a high level. However, in
reality, consumers are using more time and energy inthe buying process, and the quality of the buying
process is deteriorating.
71
Aoki, Hirofumi. "Chiritekihyoji no Hogo to Shohyo
Seido" (The Protection of Geographical Indications andthe Trademark System), Journal of Law No. 49 (1), p.
52 (2008).
72
Araki, Masaya. "Chiritekihyojihogoseido no Igi" (TheSignificance of Geographical Indication Protection
Systems), Chizai Kanri (Intellectual Property
Management) No. 55(5), p. 577 (2008).
73
The collective trademark system only provides for therequirement on the entity with respect to theregistration of trademarks used by a specificassociation instead of an individual. Thus, theTrademark Act lacks provisions to be applied in cases
where a mark representing a geographical name has
been attached to goods or services produced in aregion other than the relevant region.
74
Gangjee, Dev. "Protecting Geographical Indications as
Collective Trademarks: The Prospects and Pitfalls" IIP
Bulletin 2006, p. 81 (2006).
75
Recently, there have been movements to expand thescope of applicants to include the chambers ofcommerce, commerce and industry associations, andspecified non-profit organizations (NPOs) (see thereport titled "An Ideal Trademark System to Protect
New Types of Trademarks and for Other Measures"compiled at the 31st meeting of the Trademark System

there is no substantial management, if any negligenceis made in the steps related to the quality or
characteristics of the relevant product or service andthereby the relevant regional brand suffers any damage,the burden will be incurred by all the members, andthus the loss to an individual member would be small.
Therefore, there may be cases where it becomes
impossible to restrain these kinds of negative acts.
60
Olszak, Norbert. Des Appellations D’Origine et
Indications
deProvenance,
Technique&
Documentation, p. 4 (Tec & Doc, 2001).
In contrast, it is not the same for agricultural products,
and especially wine products. Of course, we cantransport the type of grapes, vintners, hydraulicpresses, barrels and stills, and there is indeed a global
market for these items, but you cannot change the soil
or climate. It is true that some regions are similar toother regions. Yet, there still remain subtle differences,which are strengthened by cultural and historicalcharacteristics. And this is precisely le terroir, which isa unique combination of human and natural factors.
61
As of November 2012, 519 regional collective marks
have been registered under the current system. While
the registration requirements for regional collective
marks should be analyzed, this number is—without adoubt—an important reference.
62
The term "designation of origin" means the name of aregion, a specific place or, in exceptional cases, acountry, and is used to describe an agricultural productor a foodstuff:– originating in that region, specific place or country– the quality or characteristics of which are essentiallyor exclusively due to a particular geographicalenvironment with its inherent natural and humanfactors, and;– the production, processing and preparation of whichtake place in the defined geographical area.
63
According to the Nagano Appellation Control
Committee, the Nagano Appellation Control System
was introduced with the purpose of disclosing
production information to the consumers and gaining
consumers’ confidence through the provision ofhigh-quality agricultural products or agriculturalprocessed products and thereby developing the region.
The system started its operation in 2002 with theJapanese sake and wines brewed that year, and up tonow, 710 types of wines and 2,245 types of Japanesesake have been recognized. The system has beenfurther applied to other items; for example, Shochu(distilled spirits) has been covered since February2005 and 196 types have now been recognized; from
June 2007 to now, cider has been recognized with 41
types; and rice has also been covered by this systemsince its 2004 crop and, by now, 299 types have beenrecognized. (The numbers recognized are all those as
of February 5, 2013.)
64
Kim, Byungil. "Research on the Legal Protection of
Geographical Indications," Trade Relief 2004 Autumn
Edition, p. 227 (2004).
65
Ibid.
66
Takakura, Shigeo. "Chiritekihyoji no Kokusaitekihogo"(International Protection of Geographical Indications),
Chizaiken (IIP) Forum No. 40, p. 32 (2002).
67
Ibid.
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Subcommittee under the Intellectual Property Policy
Committee of the Industrial Structure Council held on
February 8, 2013). Yet, depending on the definition ofgeographical indications, local governments and public
institutions could possibly be included, and thus
further expansion of the scope of applicants should besought.
76
In the process of defining the two concepts, therequirements for constituting an appellation of origin
should be more rigorous and sever than those ofgeographical indications, while stronger protection
should be provided to the former than the latter. With
respect to geographical indications, problems exist inthat provisions regarding the relationship withordinary trademarks (especially the relationship withprior-use marks) must be established, and control andsupervision on the quality and/or characteristics
originating in the relevant geographical factors shouldbe achieved. On the other hand, the key issues for theappellation of origin would be the establishment ofprovisions to provide additional protection without
imposing any requirements on confusion to realize aprotection stronger than that provided to geographicalindications, as well as the standards for theexamination and management regarding the concept ofle terroir, which will serve as the theoretical grounds
for establishing the abovementioned provisions.
77
Takabayashi, Ryu, Mimura, Ryoichi, and Takenaka,Toshiko. Gendai Chitekiziasanho Koza II Chitekizaisanho
no Jitsumuteki Hatten (Modern Intellectual Property
Laws Vol. II – Practical Development of Intellectual
Property Laws), p. 333 (Nippon Hyoron Sha, Co., Ltd.,
2012). The following cases are listed as the major court
cases: judgment of the Tokyo District Court, July 11,
1980, Hanrei Jiho No. 977, p. 92 (TV Manga case);
judgment of the Tokyo District Court, May 27, 1981,
unpublished on the law reports (website of the court)(Case of research institute for advancement ofmanagement); judgment of the Tokyo High Court, July
31, 1973, Mutaireishu, Vol. 5, No. 2, p. 250 (Omocha no
Kuni case); judgment of the Tokyo High Court, January
13, 2005, unpublished on the law reports (website of
the court) (Ink ribbon case); judgment of the Osaka
District Court, July 25, 2005, Hanrei Jiho, No. 1926, p.
130 (Shinko case); judgment of the Osaka District
Court, June 12, 2007, unpublished on law reports(website of the court) (YG personality test case);
judgment of the Sendai District Court, October 2, 2007,
Hanrei Jiho, No. 2029, p. 153 (Sendai Shiro case); andthe judgment of the Tokyo District Court, March 26,
2010, unpublished on law reports (website of thecourt) (CRYSTALKING case).
Under the current Trademark Act, "in many cases, thecourt holds that the trademark right has not been
infringed based on the following logic in the cases
where a trademark (mark) identical or similar to aregistered trademark is used for the purpose of
describing the origin or substance of the relevant
goods (services): while it is presumed that the"essential function of a trademark is to distinguish its
own goods or services from those of others, and there
are functions such as the indication of origin, guaranteeof quality and advertising that derive from the firstmentioned function," "as long as the right of prohibition

based on a trademark right is provided for the purposeof prohibiting any use that hinders the performance ofthe essential function of registered trademarks asmentioned above, when the defendant's use of the
trademark cannot be found to be made in a manner toperform the function to distinguish its own goods fromthose of others, such use of the trademark cannot be
prohibited."
78
Shibuya, Tatsuki. "Shohyoyo niyoru Chiritekihyoji no
Hogo" (Protection of Geographical Indications under
the Trademark Act), Patent News No. 11417, p. 5
(2004).
79
For example, trademarks for goods and services maycollectively be referred to as trademarks, whileappellation of origin and geographical indications maycollectively be named geographical indication marks.
80
In particular, in conjunction with the introduction of
the certification mark system to the Trademark Act,
substantial management and supervision shall be
performed on the quality and/or characteristics
originating in the relevant geographical factors byindependent administrative organs or relevant publicagencies, i.e., the Ministry of Agriculture, Forestry and
Fisheries could take charge of agricultural and marine
products as well as the processed products thereof,
while marks representing geographical indications for
traditional crafts, liquors and spas could be managed
and supervised by the Ministry of Education, Culture,
Sports, Science and Education or each local
government, Ministry of Finance, and Ministry of Land,
Infrastructure, Transport and Tourism, respectively.
81
Supra note 78, p. 7; Shibuya, Tatsuki. Shohyoho no
Riron (Theory of Trademark Act) p. 334ff (Universityof Tokyo Press, 1973).
This is based on the understanding that "(i) Similarityof goods or services is found when, on the assumptionthat the same trademark that has an average
distinctiveness is used both for the goods or servicesof the holder of a trademark and an alleged infringer, it
is likely that that consumers who have accessed thegoods or services offered by the alleged infringer
would be confused of the origin or the provider of thegoods or services, under the rule of thumb oftransactions; and (ii) similarity of trademarks is foundwhen a registered trademark is used for its designatedgoods or services and a trademark actually used by analleged infringer is used for his/her goods or services
that have been found identical or similar to said
designated goods or services, if it is likely that theconsumers who have accessed the goods or services
offered by the alleged infringer would be confused of
the origin or provider of the goods or service, under
the rule of thumb of transactions."
82
Maruyama, Ryo. "Chiritekihyoji no Hogo to Dantai,
Chiikishohyo Seido" (Protection of Geographical
Indications and the Systems of Collective Trademarks
and Certification Trademarks), Tokkyo Kenkyu (Patent
Studies), No. 38, p. 55 (2004). "Under the TRIPS
agreement, geographical indications are those of which
the characteristics such as the quality and social
reputation of the goods are attributable to thegeographical place of origin. Thus, both thegeographical indication itself and such characteristics
of goods must be protected concurrently."●

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