EU-Japan EPA and Geographical Indications
CO-AUTHOR
Fumiko Oikawa
Senior Partner
Atsumi & Sakaki
CO-AUTHOR
Naoki Kanehisa
Partner, Head of London Office
Atsumi & Sakai
1. Overview of the GI System
A system for Japan and the EU to mutually protect names that connect certain agricultural products, etc. with the place of their production as geographical indications (GI) was introduced on February 1, 2019 with the coming into force of the EU-Japan EPA. “Geographical indication” is a distinctive sign used on a product or in its advertising, etc. to identify the product as one whose quality, reputation or other characteristic is linked to its geographical origin.
2. GI Protection System in Japan
GI protection was introduced in Japan June 2015, making it possible to register a product together with its name, place of production and standards of quality, etc. As of April 18, 2019, 76 products, 75 domestic and one overseas (Prosciutto di Parma) have been registered with GIs in Japan.
3. Mutual protection under the EU-Japan EPA
71 products from the EU and 48 products from Japan are now protected under the EU-Japan GI protection regime; for example, the name “Kobe Beef” cannot be for any EU products and can only be used in the EU for uniquely branded Japanese beef products.
Determining whether a GI has been infringed requires careful judgment and expert advice. For example, although “Gouda” is a generic term and not subject to GI protection, selling cheese in Japan with the name “Gouda cheese” with the flag of the Netherlands or something similar would likely constitute an infringement of the GI “Gouda Holland”. In addition, for a product to use a GI it must conform to all the registered GI specifications (e.g. place of production, quality or production method) so even if a product is manufactured in a GI-protected place of production and the packaging identifies that place of production the use of qualifying expressions such as “kind,” “type” or “style” would not be enough to save it from infringement of the GI if other characteristics of the GI were not satisfied. For example, hard Italian cheese is often imported into Japan in blocks and then processed to powder in Japan and even if correctly labeled as made in the designated GI area and “processed in Japan”,marketing it as “Parmigiano-Reggiano” would breach the GI protection for “Parmigiano-Reggiano” (unless the seven-year exception mentioned below applies).
The use of names that are identical or similar to a protected GI is permitted for up to seven years from the date the EU-Japan EPA came into force if the name was used before that date, provided that there was no intention of gaining illicit profits or otherwise through the use of the name and the continuity or repetitive nature of the underlying business can be shown.
If a GI is used illegally in Japan, the Minister of Agriculture, Forestry and Fisheries will issue an order for action; if the order is not complied with, a person responsible for the failure would be liable to a jail term of up to five years or a fine of not more than JPY 5 million; a company, etc. responsible would be liable to a fine of up to JPY 300 million.
4. Conclusion
The EU-Japan EPA represents a significant landmark in EU- Japan trading relations and the mutual protection of GIs between Japan and the EU under the new regime will enhance the protections for both Japanese and EU agricultural, forestry and fishery brands, hopefully significantly enhancing trade in such products.
Atsumi & Sakai is a multi-award-winning independent full-service Tokyo law firm, and the first major independent Tokyo law firm with foreign partners. In addition to lawyers admitted in Japan, our Firm includes Registered Foreign Lawyers licensed in Japan to advise on the laws of the US States of New York and California, the People’s Republic of China, England and Wales, India, the States of Queensland and Victoria (Australia). United States and Australian Federal law, and the laws of the Federal Republic of Germany (in collaboration with Janssen Foreign Law Office). Operating as an integrated international team, Atsumi & Sakai advises a wide range of international and domestic companies and financial institutions on all aspects of finance and business law utilizing our Japanese expertise and the international know-how of our foreign partners.
Published 2019.