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Due to the recent COVID-19 pandemic, people are refraining from going out and the popularity of flea market apps, which has increased the number of opportunities for people to shop online. The recent popularity of online shopping and developments in logistics have made the distribution of counterfeit goods more commonplace.
On the other hand, with the spread of 3D printers and technological advances, counterfeit goods are becoming more sophisticated. The damage caused by counterfeit goods is becoming more serious as more and more products are indistinguishable from counterfeit goods at first glance.
If counterfeit goods are not dealt with, there is a risk that inferior products will damage the credibility of your brand and cause problems with product liability.The need to take measures against counterfeit goods and protect the interests of our company and our customersis becoming more important.
One of the measures against counterfeit goods is the "import suspension" at customs. This is a border control measure in which counterfeit goods brought in from overseas are suspended at customs and prevented from being brought into Japan. According to the announcement by the Ministry of Finance, the number of import suspensions in 2021 was 28,270, which amounts to 819,411 items. On a simple daily basis, this means that an average of 77 cases, or 2,244 items of intellectual property infringement goods, are suspended per day, which shows how many counterfeit goods are being imported into Japan.
This document explains the recent trends in damage caused by counterfeit goods and the application for import suspension at customs. We hope that this document will be of help to you in your intellectual property activities.
Recent trends in damage caused by counterfeit goods
Counterfeit goods generally refer to items that infringe intellectual property rights (patent rights, utility model rights, design rights, trademark rights, copyrights, etc.). In terms of damage caused by counterfeit goods by type of intellectual property right, the most common damage is caused by trademark rights, followed by those that infringe copyrights and design rights.
Trademarks (marks), works, and designs protected by trademark rights, copyrights, and design rights can be manufactured without advanced technology by simply copying their appearance, making them vulnerable to counterfeiting.
(Source) Japan Patent Office, "Annual Report on Consultation Services for Counterfeit and Piracy Countermeasures" (June 2021)
In addition, according to a press release by the Ministry of Finance regarding the latest status of seizure of intellectual property infringing goods, the number of imports seized by country (region) of origin is as follows:Chugokuis the whole80.3%and remains at a high level.I can see that you are doing it.
In terms of item type, in addition to so-called branded goods such as clothing, bags, and miscellaneous goods, there are also many electrical appliances, pharmaceuticals, and automobile accessories that pose a risk to health and safety if used or ingested.
(Source) Examples of infringing goods whose import was suspended by customs (Ministry of Finance press release website dated September 10, 2021)
The Importance of Intellectual Property Rights
Advance acquisition of intellectual property rights
By obtaining intellectual property rights, you can apply for an import suspension request at customs.
Among intellectual property rights, patent rights, utility model rights, design rights, and trademark rights are obtained by filing an application with the Japan Patent Office, and require a certain amount of time for examination by the Japan Patent Office. In addition, patent rights, utility model rights, and design rights require "novelty" and "inventive step (non-creatability)" in order to be granted, so even if you file an application after starting to sell your company's products and beginning to have problems with counterfeit products, it may be very difficult to obtain the rights.
Therefore, it is essential to begin application procedures early to obtain patent rights, utility model rights, design rights, and trademark rights.
When you become aware of the damage caused by counterfeit goods, if it is difficult to obtain patent rights, utility model rights, or design rights due to the loss of novelty, you may consider obtaining trademark rights. Since counterfeit goods often copy genuine products exactly, this is effective when your company's trademark is used as is on the counterfeit goods.
Injunctive counterfeit goods
There are various types of intellectual property rights for which an application for import suspension can be made to customs, including patent rights, utility model rights, design rights, trademark rights, copyrights, neighboring rights, breeder's rights, and the right to demand an injunction against unfair competition. Each right has different protection targets, and therefore the counterfeit goods that can be suspended by customs may differ.
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Rights held |
Authentic |
Counterfeit goods |
Possibility of injunction |
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Trademark: Registered trademark HARAKENZO Category 18 Bags |
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○: The trademark on the counterfeit goods is identical to the registered trademark, so it can be suspended. |
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×: Although the shape of the bag is very similar to the genuine product, the counterfeit product cannot be injunctive relief as it does not bear a trademark that is identical or similar to the registered trademark. |
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○: Although the shape of the bag is different, the trademark on the counterfeit goods is the same as the registered trademark, so an injunction is possible. |
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Rights held |
Authentic |
Counterfeit goods |
Possibility of injunction |
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Design rights: Registered Design
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○: The design (industrial design) of the imitation bag is identical to the registered design, so it can be suspended. |
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×: The design (industrial design) of the imitation bag is not similar to the registered design, so it cannot be injunctive. |
Even for one product, it is possible to apply to the customs office for an import suspension based on both design rights and trademark rights. In this case, counterfeit goods that cannot be suspended based on design rights may be suspended based on trademark rights, expanding the range of countermeasures available. For example, you can first apply for an import suspension based on trademark rights, and then, after observing the status of counterfeit goods in circulation, you can additionally apply for an import suspension based on design rights.
Import suspension procedures at customs
Documents required for import suspension procedures
The "import suspension procedure" refers to a system in which a holder of a patent, utility model right, design right, trademark right, copyright, neighboring right or breeder's right, or a holder of a right to seek an injunction against unfair competition, who believes that goods that infringe his or her rights are about to be imported, may apply to the Director-General of Customs to suspend the import of the goods and to take certification procedures(※).
(*) The certification procedure is a procedure used by customs to determine whether or not imported goods or international mail items infringe intellectual property rights.
The following documents are required to file an import suspension application:
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【Required documents】
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[Documents to be submitted as necessary]
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With a single application (procedure), the application can be made effective at customs offices in the following areas: Hakodate, Tokyo, Yokohama, Nagoya, Osaka, Kobe, Moji, Nagasaki, and Okinawa.
In addition, the validity period of an application for import injunction can be set to a maximum of four years from the date of acceptance of the application, and the applicant can set the period desired. However, if the right on which the application for injunction is based expires within four years, the validity period will be until the expiration date of that right. For example, when applying for import injunction based on a design right, if only one year's registration fee has been paid, the validity period will be short even if the application procedure is accepted.
It is possible to renew the validity period of a customs import suspension application through the renewal procedure. When renewing, be sure to pay attention to the duration of the right that is the basis of the application.
Materials related to identification points
Of the above [Required Documents], the "Documents Related to Identification Points" must clearly state the points that can be used to distinguish between genuine and counterfeit products by comparing them with each other.
For example, please note that the following points may not be recognized as distinguishing points.
1. Differences in color
Completely different colors would be considered a distinguishing feature, but slight differences in color - for example, the genuine product is white and the imitation product is light gray - may not be recognized as a distinguishing feature.
②Difference in size
Descriptions such as "The counterfeit goods are slightly larger than the genuine goods" are vague and may not be recognized as distinguishing features. Since customs officials who actually seize counterfeit goods do not have the genuine goods on hand, it is necessary that the distinguishing features can be determined from the counterfeit goods alone.
③ Sticker
Since there is a risk that the sticker may come off during transportation, etc., it must be firmly attached to the product in order to be recognized as an identification point.
In addition, for products whose value or safety is compromised when opened, identification points on the outer box are extremely important. Points on the contents of the box are also accepted as identification points, but they may not be effective because customs officials cannot open the product on site. For example, for supplements, medicines, and cosmetics, it is more effective to tamper with the outer box so that genuine products can be distinguished from counterfeits just by looking at the outer box.
Flow when suspicious cargo is discovered at customs
The flow when customs discovers cargo suspected of infringing intellectual property rights is as follows:
(Source: Ministry of Finance Customs Agency website)
When suspected infringing goods are found, customs will send a notice to the right holder and importer to start the determination procedure. The right holder and importer can submit evidence and state their opinion to customs within a specified period of time as to whether the goods for which the determination procedure has been carried out are intellectual property infringing goods. When preparing the evidence and opinion, if an appraisal of the suspected goods is to be conducted, customs can also request that photos of the suspected goods be sent to customs without visiting the customs office.
On the other hand, if the goods suspected of infringing are goods related to a petition for import suspension, the "simplified procedure" is applied. When the simplified procedure is applied, when goods suspected of infringing are discovered, customs will send a notice to the right holder and the importer to commence the determination procedure, but will only give the importer an opportunity to submit a "Statement to Dispute Whether Infringement Occurs." If the importer does not submit a "Statement to Dispute Whether Infringement Occurs" within the specified period, the right holder will not be required to submit evidence and opinions. On the other hand, if the importer submits a "Statement to Dispute Whether Infringement Occurs," the right holder can submit evidence and opinions.
Customs will determine whether the suspected goods infringe intellectual property rights by considering evidence and written arguments submitted by the importer and the right holder, or a written statement disputing whether or not there is infringement.
If the item infringes intellectual property rights, it will be confiscated by customs, but if it does not infringe intellectual property rights, it will be allowed to be imported.
Expansion of simplified procedures
Until September 30, 2023, the simplified procedures were only applicable to certain intellectual property rights, such as trademark rights and copyrights, but the amendment to the Customs Act Enforcement Order in March 2023 expanded the scope of rights that are subject to the simplified procedures. As a result of this amendment, patent rights, utility model rights, design rights, and protected trade secrets will also be subject to the simplified procedures from October 1, 2023.
In the simplified procedure, if the importer does not submit a "Statement of Dispute on Infringement," the right holder does not need to submit evidence or opinions. In other words, the burden on the right holder is reduced. In addition, the determination of infringement at customs is made promptly.
The simplified procedure applies only to "goods related to a petition for import suspension." If you have confirmed that a product not listed in the petition for import suspension is a counterfeit, you can use the simplified procedure by increasing the number of goods included in the petition. Please note that the simplified procedure does not apply to petitions for export suspension.
Strengthening border control and establishing laws
The Trademark Act and Design Act, which came into effect on October 1, 2022, clarify that the act of overseas businesses bringing counterfeit products into Japan by transportation or other means constitutes an infringement of trademark and design rights.
In response to this, the Customs Act was amended so that counterfeit goods (items that infringe trademark or design rights) brought into Japan by overseas businesses via mail or other means can no longer be imported.
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Current status |
problem |
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Due to the development of e-commerce and the fall in shipping fees for international cargo, the number of businesses based overseas is increasing.There has been a sharp increase in cases where overseas businesses sell counterfeit goods directly to individuals in Japan. |
Direct transactions between overseas businesses and individuals in JapanIn cases where this is the case, the "import" is by an "individual in Japan" and does not constitute "use" of a "trademark",No trademark infringement |
| After revision |
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Due to the amendments to the Trademark Act and the Design Act, the act of overseas businesses bringing counterfeit goods into Japan by mail or other means has been deemed an act of trademark infringement or design infringement. As a result, such infringing goods are now subject to customs control as "goods that must not be imported" under the Customs Act.
(Reference: November 5, 2021, Japan Patent Office announcement: Strengthening border control of counterfeit goods sourced from overseas businesses) |
HARAKENZO is the best choice for fighting counterfeit goods!
Our firm handles all intellectual property rights matters, and also has a consultation desk and system in place to deal with counterfeit goods. Please feel free to contact us.