What is Regional Collective Trademark System? Explain types of trademark applications

What is Regional Collective Trademark System?

I heard there is a system called “Regional Collective Trademark”, how is it different from the regular trademark system?

The “regional collective trademark” system allows for registration of trademarks that is a combination of a regional name and a product (service) name, etc. under a certain condition, which is likely to be refused because it is not suitable for exclusive use by a specific person.

I see. I’d like to know more about that condition.

This article provides an overview of the Regional Collective Trademark System and the advantages and disadvantages of using it, as well as some points to keep in mind.

Overview of Regional Collective Trademark System

The purpose of the system is to revitalize local economy by protecting as a trademark the name of a local brand that is a combination of a name of a region and a name of goods (service).

Generally, a character trademark consisting of a combination of a “regional name” and a “goods (service) name” cannot be registered unless it is “well-known throughout Japan. Under the Regional Collective Trademark System, requirements for registration of such combined characters as trademark are relaxed.

The term “nationally well-known” is a very high level requirement, as it means that the trademark must be well-known nationwide among consumers. Under the regional collective trademark system, however, the requirement is relaxed to the extent that the trademark must be known in a certain region (several neighboring prefectures as a general guideline).

Please refer to the following page for an introduction to the types of trademark registrations, including the regional collective trademark.

Can trademark be registered as regional collective trademark?

Trademarks that can be registered as a regional collective trademark are those that consist of “names of region” and “names of goods (service)”.

• The name of region includes not only the name of the current administrative division, but also its former name or names of river, mountain and sea area.
• Customary characters used to indicate the place of production, etc. (e.g., “Honba (genuine)”, “Tokusan (special product)”, “Meisan (well-known product)” etc.) can also be added.

Specific examples of registered trademarks include “Hokkaido mai (Hokkaido rice)”, “Hinai jidori (Hinai Jidori chicken)”, “Kusatsu onsen (Kusatsu hot spring)”, “Edo kiriko (Edo faceting)”, “Kaga Yuzen (Kaga Yuzen silk)”, “Toyamameisan kobumakikamaboko (Toyama specialty kombu-maki kamaboko)”, “Nakatsugawa Kurikinton (Nakatsugawa chestnut kinton)”, “Toyooka kiryu-zaiku (Toyooka kiryu work)”, “Kyoto meisan semaizuke (Kyoto specialty senmaizuke pickles)”, “Bingo tatamiomote”, “Naruto kintoki (Naruto sweetpotato)”, “Honba Amami Oshima tsumugi (genuine Amami Oshima silk)”, “Ryukyu awamori (Ryukyu awamori brandy)” and others. CEYLON TEA,” and “Zhenjiang Xiangshiang Vinegar” have been registered for foreing cases.

The regional collective trademark must consist of characters only. If the trademark contains logo or designed characters, it cannot be treated as a regional collective trademark.

Points for registering regional collective trademark

Although the requirements for registration of a regional collective trademark are relaxed, not just anyone or anything can be registered. The following four requirements must be met in order for registration to be granted.

Aapplication must be filed by a community-based organization

The requirements for applicants as stipulated in the Trademark Law are as follows.

• 1) Associations established under special laws such as business cooperatives (e.g., agricultural cooperatives, fishery cooperatives, etc.)
• 2) Chamber of Commerce
• 3) Chamber of Commerce and Industry
• 4) Specified non-profit organization (NPO)
• 5) Foreign corporations equivalent to (1) through (4) above
• 6) General incorporated associations (*)

*The requirements stipulated in the Act on Promotion of Investment in Region for Future must be met, which came into effect on July 31, 2017. For details, please refer to the webpage on the website of JPO (available only in Japanese version)

Trademark used by members of association

The members of the association must be allowed to use the regional collective trademark. For example, a farmer who is a member of the Hokuren Federation of Agricultural Cooperatives, which holds the rights to the “Hokkaido Mai (Hokkaido rice)” region collective trademark, and uses the “Hokkaido rice” trademark, would meet this requirement.

Connection between regious name and goods (service)

There must be a connection between a name of region and goods (service), such as a name of region corresponds to the place of production of the goods. For example, “Hokkaido Mai (Hokkaido rice)” would meet this requirement if “Hokkaido” is the place of production of “rice”.

Trademark well-known among consumers in certain geographical area

It must be proved with “objective facts” by the applicant or its members that the trademarks are known to “consumers” in a “certain geographical area” through the use of the trademarks.

• The “certain area” is generally defined as including neighboring prefectures.
• The “consumer” refers to a final consumer or business operator.
• The “objective fact” can be shown by sales volume, newspaper reports, etc.

Merits and demerits of regional collective trademark

The JPO lists the following advantages and disadvantages of obtaining a regional collective trademark.

Merits of regional collective trademark

1. Legal effects : By acquiring a regional collective trademark, it is possible to exercise rights such as an injunction against the illegal use of the regional collective trademark by third parties. It is also possible to make a license agreement (permission to use) to other companies.
2. Differentiation effect : By promoting the fact that the trademark is protected and endorsed by the government as a regional brand, it can lead to increased credibility in business transactions and increased appeal of products and services.
3. Other effects: Since the exclusive use of a regional collective trademark is possible, it can increase association members and form a sense of pride in the brand.

Disadvantages of regional collective trademark

4. Trademark rights cannot be transferred
5. Exclusive right of use cannot be established
6. Those who have been using the name before the acquisition of a regional collective trademark may continue to use the name.

I see that some of the requirements for registration are relaxed, while other conditions are limited. I’ll consider to use the system taking into consideration of the registration requirements and how the advantages and disadvantages affect me.

Guidebook for Regional Collective Trademarks

The following site on the JPO website (available only in Japanese version) introduces the Japan Patent Office’s Regional Collective Trademark Guidebook as a reference material for creating regional brands.

• Guidebook for Regional Collective Trademark

Overseas brand development of regional collective trademark

When developing a local brand overseas, it is important not only to obtain trademark rights in Japan, but also to obtain trademark rights in the countries where the brand will be developed.

It should be noted that due to the special nature of a regional collective trademark, some countries and regions require different procedures for obtaining rights of a regional collective trademark than for general trademark rights, and if the procedures are not followed correctly, the trademark may not be registered.

To this end, expert advice on obatining or exerciging trademark rihts, brand strategies or risks of intellectual property including trademarks in foreign countries, as well as assistance through cost subsidy programs can help to reduce the burden. Below is a list of publicly available services.

• Intellectual Property Support Office for Overseas Expansion (INPIT: Industrial Property Information and Training Institute) : The INPIT provides advice on risks related to trademarks and other intellectual properties, advice on obtaining rights, and methods for use of rights in accordance with overseas expansion and development. Consultation is free of charge.
• Support Project for Overseas Expansion of Regional Collective Trademarks (JETRO: Japan External Trade Organization) : JETRO provides hands-on support for overseas development of products and services related to a regional collective trademark, from the formulation of branding strategies for overseas markets, to the implementation of overseas promotion and sales channel development activities, as well as the protection and utilization of intellectual properties overseas. **Please note that there is a set period of time each fiscal year during which applications are accepted. *
• Subsidies for foreign application fees (Foreign Application Support Program for Small and Medium Enterprises, etc.) : In order to support strategic overseas development, half of fees (with an upper limit) of an application filed overseas by small and medium-sized enterprises (SMEs) with the same content as a domestic application can be subsidized. **Please note that there is a set period of time each fiscal year during which applications are accepted. *
• Others (support projects for invalidation/cancellation disputes of infringed trademarks, support projects for measures against counterfeit goods) : In addition to the above, support for countermeasures against unfair preemption of trademarks overseas and support for anti-counterfeiting measures are also available.

It is possible to obtain trademark rights in Japan using our Amazing DX service. In addition, you can rest assured that our experienced staff with extensive experience in foreign-related matters will continue to handle any subsequent correspondence related to the acquisition of trademarks overseas.

Difference from Geographical Indications Protection System (GI System)

As mentioned above, the Regional Collective Trademark System allows for the registration of regional brand names as trademarks and the exclusive use of those names.

On the other hand, the Geographical Indications Protection System (GI system) is a system under which the names of agricultural, forestry, and fishery products that have characteristics associated with the production area are registered along with quality standards and protected as common property of the region. Once registered, the name becomes common property of the region and cannot be used exclusively (trademark rights do not have influence on legitimate use of the GI).

The JPO website below introduces the differences between the regional collective trademark system and the GI system, as well as the advantages and disadvantages of registering both (available only in Japanese version).

• Regarding Georgaphical Indications protection System

Summary

We hope that you now understand the necessity of a regional collective trademark and the points to keep in mind for businesses seeking to protect their “regional brand” and revitalize the local economy. Please take this opportunity to consider acquiring a regional collective trademark.