IP NEWS:SOEI Patent & Law Firm

Local branding, in which local business people use a common brand to manufacture products related to their region or to supply services continues apace. The advance of local branding has also seen the appearance of free riders who cash in on the famous local brand names. If somebody sells fake products using a branded product name, the reputation built thus far can be seriously damaged. Under the current trademark law, it has been difficult to prevent such illegal actions, but due to the legal revisions to come into force on 1 April 2006, registration of local brand names will be legal, enabling fakes to be quickly eliminated based on trademark rights.

Regional organization trademarks that can be registered will be logos comprising a “region name” and a “product name (or service name).” Combinations with images cannot be registered as regional organization trademarks. For example, in “Arita pottery,” “Arita” is a small town in Kyushu and “pottery” is a product and in “Yubari melons,” “Yubari” is an agricultural community in Hokkaido and the “melons” are the goods.

For a regional organization trademark to be registered, however, the following registration requirements must also be satisfied.

- The applicant must be an organization such as a union, formed according to the law, and membership in the organization open to all.

For example, the Farmer’s Union, Forestry and Fisheries Union, or the Union of Medium and Small Businesses, etc.

- The mark must have a degree of popular familiarity due to use

The brand must be known at least in the adjoining prefectures.

- Normal registration requirements under Articles 3 and 4 must be satisfied.

For example, the mark must be distinctive and must not be confusingly similar to an existing mark or registration. In this way, the regional organization trademark system allows the registration regional trademarks only for products that satisfy a fixed set of conditions. In the same way as for collective trademarks, however, if a trademark is used in a manner that causes the public to mistake the quality of the goods or services, the trademark registration can be cancelled.