Update on 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
Two years after the EU-Japan EPA entered into force in February 2019, trade between the EU and Japan has reached 170 billion euros a year. On February 1, 2021, the EU and Japan agreed to expand the Geographical Indications (GI) that describe the origin of agricultural products and alcoholic beverages, with 28 products added to the list, including “Echizen Gani” and “Iburi-Gakko” on the Japanese side, while the EU side will add 28 products such as “Cassis de Dijon” liqueur from France and “Kalamata” olive oil from Greece, which will be protected in their respective markets. The GI system is one of the major achievements of the EU-Japan EPA, and it is expected to be continually updated in the future.
Overview of the GI System
A system for Japan and the EU to mutually protect names that connect certain agricultural products, etc. with their place of 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.
For example, when one hears “Yubari Melon” in Japan it brings to mind the characteristics of the fruit being produced in Yubari, Hokkaido, and the flesh of the melon, which is orange and sweet (having a high sugar content), and a characteristic rich aroma. In this way, when the origin and characteristics of a product can be identified from the name of the product, the name of the product associated with the origin is referred to as a “geographical indication”.
A geographically indicated product is differentiated from other products, and has a certain brand value, so it is essential that they be protected from counterfeit products. Under the WTO’s TRIPS Agreement, geographical indications are designated as an intellectual property right, and more than 100 countries worldwide protect geographical indications.
GI protection was introduced in Japan in 2015 under the Act on Protection of the Names of Specific Agricultural, Forestry and Fishery Products and Foodstuffs (“GI Act”), making it possible to register a product together with its name, place of production and standards of quality, etc. As of May 6, 20121, 106 products, 104 domestic products and two overseas products (Prosciutto di Parma and Luc Ngan Lychee) have been registered with GIs in Japan.
Products that meet the registration criteria may use the geographical indication and the GI Mark (a registered symbol) below whichcertifies that a product is a true GI product registered under the GI Act and differentiates it from other similar items
Mutual protection under the EU-Japan EPA
71 agricultural products from the EU and 48 agricultural products from Japan have to date been protected under the EU-Japan GI protection regime, and 21 new products from the EU and 25 new products from Japan were added for protection in February 2021; for example, the name “Kobe Beef” cannot be used for any products emanating from or sold in the EU 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 GIwere 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).
Some products were excluded from protection under the GI Act due to their established usage on the Japanese market. For example, cheese names that are recognized as generic names in Japan are not subject to protection under the GI Act provided that they will not be mistaken for authentic products. In other words, the underlined parts of “Brie de Meaux” (France), “Camembert de Normandie” (France), “Mozzarella di Bufala Campana” (Italy), and “Gouda Holland (Netherlands)” can still be used as long as they are not confused with an authentic GI product. For example, GI Act protections would not apply to “Camembert made in Hokkaido”, whereas “Normandy-style Camembert” could be confused with authentic Camembert de Normandie (France) and thus would constitute a GI violation.
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 making illicit profits or other gains 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.
To date, 139 alcoholic beverages from the EU and 8 alcoholic beverages from Japan have been protected under the EU-Japan GI protection regime and the Act on Securing of Liquor Tax and on Liquor Business Associations of Japan governs the protection in Japan; 7 new products from the EU and 3 new products from Japan gained protection in February 2021.
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
is enhancing the protections for
both Japanese and EU agricultural, forestry and fishery brands, hopefully significantly enhancing trade in such products.
Published by www.eujapanforum.com, 2021