Challenge of WAKAYAMA Prefecture for protecting their Geographical Name

Wakayama prefecture filed an opposition against an individual’s trademark application on September 6, 2016, after finding out that he filed a trademark application "Wakayama" in China without their permission and the China Trademark Office decided to grant him the trademark right.

According to the announcement by Wakayama prefecture, an individual living in Beijing filed the trademark application while designating goods such as clothes, footwears, and headgears. If the trademark should be registered as a trademark right, local companies in Wakayama developing their businesses using the geographical name in China will bear risks of being involved in a law suit of trademark right infringement.

In the past, a couple of trademark applications were filed for "Wakayama", and 4 trademark applications were filed for "Kisyu" (geographical name of the district more than 150 years ago) without the permission of the prefecture. Thus, Wakayama prefecture has filed oppositions against all these applications and the Chinese Trademark Office decided not to register these trademarks.

According to the announcement by Wakayama prefecture, the China Trademark Office will examine the case for about 1 to 2 years before issuing a decision.

Recently, the China Trademark Office regards geographical names of foreign local districts as "famous geographical names in foreign countries" and often decides not to register trademarks after oppositions are filed.

Considering such circumstances, Wakayama prefecture has been focusing on monitoring Chinese trademark applications for six years. According to the announcement, they will continue monitoring foreign trademark applications, and challenges for protecting their brands.