According to recent statistics, the number of custom seizures of infringing goods has exceeded 30,000 cases, marking a 26.6% year-on-year increase and the third highest record since the statistics started in 1987. Fake products of the hit blockbuster movie "Demon Slayers" are among them. If a trademark owner wishes for infringing goods to be seized by Japan Customs, the owner should record the trademark rights with Japan Customs by filing a request for import seizure. Japan Customs will seize any goods that allegedly infringe the trademark right once the request is accepted by Japan Customs. This article introduces practical tips for exercising border enforcement in Japan.
Application for Request for Import Seizure
Requirements for filing a Request
The following requirements should first be confirmed by the person who wishes to file a request for import seizure.
The person who files a request for import seizure must be the owner of an infringed trademark right or must be an exclusive licensee of the trademark right. A non-exclusive licensee is not eligible for filing a request. As long as a Power of Attorney is submitted, a request can be filed through an attorney.
- Validity of Trademark Right
A trademark right must be valid to be used as a basis for seizure. If a renewal deadline is approaching, the trademark right should be renewed before filing a request for import seizure.
The trademark must be used by the owner or licensees, in order to avoid being cancelled through a non-use cancellation trial. If an importers or other interested party files a non-use cancellation trial for the sake of opposing a request for import seizure and the trademark right is cancelled, the request for import seizure will be rejected. If a non-use cancellation trial is filed, the owner must prove that the trademark has been used in the past three years in Japan, otherwise the trademark registration will be cancelled.
- Existence of Infringement
If the rights owner cannot submit photos of the allegedly infringing goods, Japan Customs will not accept a request for import seizure. It is not required to prove that infringing goods are actually imported to Japan. It is enough to show that infringing goods exist somewhere in the world.
The following documents must be submitted to file a request
~ Bibliographic information, details of trademark rights and other relevant information must be filled in.
~ Multiple trademark rights can be used in one request.
~ The validity period of the recordal must be selected, four years at most.
Registers and Publications of Trademark Rights
~ These documents must be attached to the request form.
Document for Explaining Infringement
~ A document that explains infringement of the trademark right.
~ Brief explanation of similarity of the registered trademark and the trademark of the counterfeit, and similarity of the designated goods and the counterfeit should be sufficient in general.
~ Guidelines that explain how to discriminate genuine goods from counterfeits.
~ Differences between genuine goods and counterfeits must be described, and photos of genuine goods and counterfeits must be submitted.
Power of Attorney
~ An original copy, not scanned copy, of Power of Attorney must be submitted by the rights owner if an attorney files a request for import seizure
~ If a PoA is executed by a person who is different from the CEO or president, it must be notarized.
In Japan, there are nine customs offices. It is only necessary to file a request with one of the offices.
Once the necessary documents are prepared, the rights owner should send them to a customs office as a draft via e-mail. A customs officer will review the draft in terms of both formality and substance. If the customs officer asks the rights owner to amend the draft, the rights owner must amend the draft and send the amended draft to the customs officer. After the customs officer accepts the draft, the rights owner can file the request.
Upon request, the customs office will publish a summary of the request on their website. In addition, the customs office searches for interested parties such as importers of the infringing goods and informs them of the request.
An interested party, who found the summary on the website or who was informed by the customs office, can file an opinion within 10 business days of publishing the summary. If no opinions are submitted, the customs office will finally accept the request.
If an opinion from an interested party is submitted, the customs office will select three experts such as a trademark attorney or attorney at law in order to ask for their opinions on whether importing the goods infringe the trademark right(s). The customs office holds oral proceedings, whereas the three experts hear arguments from the rights owner and the interested party. Subsequently, each of the experts submit an opinion to the customs office. The customs office refers to the expert opinions and makes a decision based on majority rule. For example, if two experts judge that the trademark right is infringed and one expert judges that the trademark right is not infringed, the customs office will accept the request for import seizure. If the interested party files an invalidation or cancellation trial against the trademark right with the Japan Patent Office, the customs office may suspend their decision until the JPO issues a trial decision.
Once the request is accepted, officers in all the customs offices will begin seizing infringing goods.
Renewal of Recordal
The customs recordal can be renewed. The rights owner can file a request for renewal 3 months before the expiration date. If the customs recordal expires due to expiration of the trademark right, the rights owner must first renew the trademark right, then file a request for renewal of customs recordal.
When a customs office detects suspicious goods, the customs office will, in principle, first ask the rights owner to judge whether the goods are counterfeit or not (standard procedure). However, if the goods match the detection guidelines and the goods are highly likely to be counterfeit, the customs office will not ask the rights owner for the judgment and will automatically begin the seizing process. The latter is called a "simplified procedure". In most cases, Japan Customs will adopt the simplified procedures when they detect suspicious goods.
If goods that should be classed as a counterfeit according to the detection guidelines are detected, the customs office sends the rights owner or its attorney, and the importer a notification to inform them of the start of the simplified seizure procedure. The notification indicates the type and number of the suspected goods, the importer's name and address, and the exporter's name and address.
The rights owner is not required to respond to the notification. The importer can file an argument with the customs office in response to the notification. For example, the importer can argue that the goods are genuine or that the imported goods are for personal use.
If the importer does not file any arguments, the customs office will notify the rights owner and the importer that the importer infringes the trademark right, and will dispose of the goods. The importer may tell the customs office that the importer is no longer interested in obtaining the goods. In this case, the customs office will dispose of the goods.
If the importer files an argument, the customs office will forward the rights owner the argument and will give the rights owner the chance to file counterarguments. The rights owner can ask the customs office to send pictures of the suspected goods before filing the counterargument. If counterarguments are filed, the customs office will forward them to the importer and the importer can file further arguments, against which the rights owner can file further counterarguments. The customs office judges whether the importer infringes the trademark right or not, based on the argument(s) and counterargument(s), and a notification of the result and subsequent disposal or release of the goods will be sent to the rights owner and the importer.
If a customs office detects goods that do not match the detection guidelines, but might be counterfeit, the customs office will send the rights owner pictures of the goods and ask the rights owner to judge whether the goods are counterfeits or not. After the rights owner informs the customs office that the goods are counterfeit, a notification informing of the start of the standard seizure procedure will be sent to the rights owner or its attorney, and the importer. The content of the notification is almost the same as that of the notification of simplified procedures.
Upon receiving the notification, the rights owner and the importer can submit arguments to the customs office. The rights owner should explain the similarity of marks and goods.
If the importer does not file any arguments, the customs office will notify the rights owner and the importer that the importer infringes the trademark right, and will dispose of the goods. If the importer files arguments, the customs office will proceed in the same way as the simplified procedure.
Investigation by Customs
If a customs office detects smuggled goods that infringe a trademark right or considers the import to be very vicious (e.g. importing a large number of counterfeits that infringe trademark rights of various brands), the customs office will start investigating the case, instead of following the simplified or standard seizure procedure. The investigation will include asking specialists for their legal opinion on infringement and questioning the importer. Also, Japan customs can carry out raids.
If the customs office judges that the importer infringes the trademark right, the importer will be notified that a certain amount of money that corresponds to a fine should be paid and that the goods should be confiscated. If the importer does not follow the notification, the customs office will charge the importer at the Prosecutor's Office. If the customs office finds the case to be extremely vicious, the importer may be charged at the Prosecutor's Office without notification.
The investigation is carried out only by a customs office. However, the rights owner can be indirectly involved in the investigation, if the customs office asks the rights owner to submit a legal opinion on whether the seized goods are counterfeit and the importer infringes the trademark right. Unlike the simplified or standard seizure procedure, the customs office does not inform the rights owner of the details of the importer and the result of the case.
Every year, Japan Customs holds workshops to train customs officers how to discriminate counterfeits from genuine goods. In the workshop, the rights owner or its attorney explains the detection guidelines to customs officers. It is recommended to bring samples of counterfeit and genuine goods to the workshop to allow better understanding of the detection guidelines. It is not mandatory to attend workshops, but attending is recommended in order to maintain a good relationship with customs offices and to increase the number of seizures.
Japan Customs sends rights owners inquiries about participation in the workshops. The rights owners answer whether they wish to attend the workshops and where and when they wish to carry out the workshops. It is possible to conduct multiple workshops at different offices in one year. Japan Customs arranges their schedule and notifies the rights owners of the places and dates of the workshops.
There are no official fees for filing a request for import seizure or renewal, for seizure procedures and for attending a workshop. However, the rights owner must bear all the fees incurred for a workshop, including transportation fees.
The following table shows the numbers of import seizure cases and seized imported goods based on trademark rights.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.