11 May
2021

Customs seizure based on trademark rights

Japanese Customs can seize imported goods that infringe trademark rights. If a trademark owner wishes Customs to seize infringing goods, the owner should record its trademark rights with Customs by filing a request for import seizure. If the request is accepted, Customs will seize goods that allegedly infringe the registered trademark rights.

Request for import seizure

Requirements for request

If a person wishes to file a request for import seizure, they should first confirm whether certain requirements are met.

Eligibility: A person who files an import seizure request must be the owner of an infringed trademark right or must have an exclusive licence for that right. Non-exclusive licensees are not eligible to file requests. A request can be filed through an attorney, so long as a power of attorney has been submitted.

Validity of trademark rights: A trademark right to be used for the seizure of allegedly infringing goods must be valid. If a renewal deadline is approaching, the right should be renewed before filing a request for import seizure.

The trademark must be used by the owner or licensee in order not to face cancellation in a non-use cancellation trial. Importers and other interested parties may oppose a request for import seizure. If they file a non-use cancellation trial and a 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 Japan in the past three years, otherwise the trademark registration will be cancelled.

Existence of infringement: Infringing goods must actually exist. Customs will not accept a request for import seizure if the rights holder cannot submit photographs of the infringing goods. It is not necessary to prove the fact that infringing goods have been imported into Japan, as it is sufficient to show that infringing goods exist somewhere in the world.

Documents to be submitted

Request form: Customs provides a request form on its website. The rights holder must fill in bibliographic information, details of trademark rights and other relevant information.

It is possible to use multiple trademark rights in one request. If the rights holder wishes to seize a variety of goods, but one trademark right does not cover all the goods in question, the rights holder should use multiple trademark rights.

In the request form, the rights holder must select the recordal’s validity period. The maximum period is four years. If the trademark right expires within four years, the maximum period will be the remaining period of the trademark right. For example, if the rights holder wishes to file a request in January 2021 and the trademark right expires in February 2022, the maximum period of recordal will be February 2022.

Registers and publications: The register and trademark registration publication of the trademark right must be attached to the request form.

Document for explaining infringement: The rights holder must submit a document that explains the infringement of the trademark right. It is usually sufficient to briefly explain the similarity of the registered trademark and the counterfeit mark and the similarity of the designated goods and the counterfeit goods, because counterfeits have the same or highly similar trademark as the registered mark and the trademark right designates goods that cover counterfeits in most cases. If Customs doubts the similarity of trademarks or goods, the rights holder must submit a document explaining the similarity in detail, such as a legal opinion prepared by a trademark attorney.

Detection guidelines: It is necessary to submit guidelines that explain how to distinguish genuine goods and counterfeits. The rights holder must describe differences between genuine goods and counterfeits and submit photographs of each. For example, if the goods are shoes, the rights holder can state that the genuine shoes have a logo on the insole and that shoes with no such logo are the counterfeits. They should submit photographs showing the insole for each of the shoes, both genuine and counterfeit.

The guidelines must be objective so that customs officers, who have no knowledge for judging authenticity, can distinguish between genuine goods and counterfeits. Subjective explanation – for example, the genuine goods use high-quality material, but the counterfeits use low-quality material – is not accepted by Customs.

Power of attorney: If an attorney files a request for import seizure, a power of attorney must be submitted to Customs. Customs does not accept a scanned copy of any power of attorney and the rights holder must submit an original. If the person who executes a power of attorney is different from the CEO or president, the power of attorney must be notarised.

Filing request

There are nine customs offices in Japan and a request can be filed with any one of these offices.

After the rights holder prepares the necessary documents, they should be sent to a customs office as a draft via email. A customs officer reviews the draft in terms of formality and substance. If the customs officer asks the rights holder to amend the draft, the rights holder must do so and send the amended draft to the customs officer. After the customs officer finally accepts the draft, the rights holder can file the request.

Expert opinion

After the customs office receives a request, it will publish a summary on its website. In addition, the customs office searches for interested parties (eg, 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 of the summary by the customs office can file an opinion within 10 business days of publication. If no opinions are submitted, the customs office will accept the request.

If the customs office receives an opinion from an interested party, it will select three experts (eg, trademark attorneys or attorneys at law) and request their opinions on whether importing the goods infringes the trademark rights. The customs office holds oral proceedings where the three experts hear arguments from the rights holder and the interested party. Subsequently, each of the experts submits 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 has been infringed and one expert judges otherwise, 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 (JPO), the customs office can suspend its decision until the JPO issues a trial decision.

Once the customs office accepts the request, officers in all the customs offices will begin seizing infringing goods.

Renewal of recordal

The customs recordal can be renewed. The rights holder can file a request for renewal three months before the expiry date.

If the customs recordal expires due to expiration of the trademark right, the rights holder must first renew the trademark right, then file a request for renewal of the customs recordal.

Seizure procedures

If a customs office finds suspicious goods, it will first ask the rights holder to judge whether the goods are counterfeits in principle (known as the ‘standard procedure’). However, if the goods match the detection guidelines, the customs office will not ask the rights holder for the judgment and will automatically begin the seizing process because the goods are highly likely to be counterfeits (known as the ‘simplified procedure’). In most cases, Customs employs the simplified procedure if it finds suspicious goods.

Simplified procedure

If a customs office finds goods that should be classed as counterfeit according to the detection guidelines, it will send the rights holder or its attorney and the importer a notification to inform them that simplified seizure procedures have begun. The notification indicates the type and number of suspected goods, the importer’s name and address, and the exporter’s name and address.

The rights holder 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 importer uses the imported goods for personal use.

If the importer does not file any arguments, the customs office will notify the rights holder and the importer that the importer has infringed the trademark right and will dispose of the goods. The importer may tell the customs office that it 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 it to the rights holder and offer them the opportunity to file a counter-argument. The rights holder can ask the customs office to send pictures of the suspected goods before filing the counter-argument. If the counter-argument is filed, the customs office will forward it to the importer and the importer can file a further argument, against which the rights holder can file a further counter-argument. Based on the arguments and counter-arguments, the customs office judges whether the importer has infringed the trademark right. The customs office sends the rights holder and the importer a notification of the result and disposes of or releases the goods.

Standard procedure

If a customs office finds goods that do not match the detection guidelines, but might be counterfeits, the customs office will send the rights holder pictures of the goods and ask them to judge whether the goods are counterfeits. After the rights holder informs the customs office that the goods are counterfeits, the customs office sends the rights holder or its attorney and the importer a notification to inform them that standard seizure procedures have begun. The content of the notification is almost the same as that of the simplified procedure notification.

In response to the notification, the rights holder and the importer can submit arguments to the customs office. The rights holder should explain the similarity of marks and goods.

If the importer does not file any arguments, the customs office will notify the rights holder and the importer that the importer infringes the trademark right and will dispose of the goods. If the importer files an argument, the customs office will proceed in the same way as the simplified procedure.

Investigation by Customs

If a customs office finds smuggled goods that infringe trademark rights or considers an import to be particularly serious (eg, importing a large number of counterfeits that infringe the trademark rights of numerous brands), the customs office will begin an investigation of the case instead of the simplified or standard seizure procedure. Such investigation includes asking specialists for a legal opinion on the infringement and questioning the importer. It is also possible for Customs to conduct a raid.

If the customs office judges that the importer infringes the trademark right, it will notify the importer that a certain amount of money corresponding to a fine should be paid and 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 serious, the customs office can charge the importer at the Prosecutor’s Office without the notification.

The investigation is carried out by a customs office only. However, the rights holder can be involved indirectly in the investigation if the customs office asks the rights holder to submit a legal opinion on whether the seized goods are counterfeits and the importer infringes the trademark right. Unlike simplified or standard seizure procedures, the customs office does not inform the rights holder of details of the importer and the result of the case.

TABLE 1: Import seizure cases and seized imported goods based on trademark rights

 20152016201720182019
Number of cases28,98225,66630,11125,28423,182
Number of goods656,853409,279313,314723,650867,804

Training workshop

Each year, Customs holds workshops for training customs officers to distinguish counterfeits from genuine goods. During such workshops, the rights holder or its attorney explains the detection guidelines to customs officers. It is recommended to bring a sample of counterfeit and genuine goods to these workshops so that customs officers better understand the detection guidelines. It is not mandatory to attend workshops but it is recommended in order to maintain a good relationship with the customs offices and increase the number of seizures.

Customs sends rights holders enquiries regarding participation in workshops. The rights holders respond as to whether they wish to attend and where and when they wish to carry out the workshops. It is possible to conduct multiple workshops at different offices in a year. Customs adjusts its schedule and notifies the rights holders of places and dates of workshops.

Fees

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 holder must bear all the fees incurred for a workshop, including transport fees.

Statistics

Table 1 shows the numbers of import seizure cases and seized imported goods based on trademark rights.