Trade Marks 2022 Japan: Trends & Developments Kenji Tosaki and Hiroki Tajima Nagashima Ohno & Tsunematsu
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Definitive global law guides offering comparative analysis from top-ranked lawyers Trade Marks 2022 Japan: Trends & Developments Kenji Tosaki and Hiroki Tajima Nagashima Ohno & Tsunematsu practiceguides.chambers.com
JAPAN Trends and Developments
Trends and Developments
Contributed by:
Kenji Tosaki and Hiroki Tajima
Nagashima Ohno & Tsunematsu see p.6
Japanese Trade Mark Protection Will Cover import process, Customs institutes Identifica-
Counterfeit Goods Sent Directly from Foreign tion Procedures. Specifically, Customs notifies
Businesses to Individuals in Japan the importer and the intellectual property right
Introduction holder of the institution of the Identification Pro-
The revision of the Trademark Act of Japan was cedures as well as relevant information such as
passed by the Diet of Japan on 14 May 2021 the name and address of the other party. Both
and was promulgated on 21 May 2021. Among parties can submit their opinions and evidence
various other matters, the revision deals with within ten working days and can also inspect the
the restriction of cross-border transactions of goods with the approval of Customs. Customs
counterfeit goods. The restriction of cross-bor- then considers the opinions and evidence sub-
der transactions of counterfeit goods is an issue mitted by both parties and makes a decision as
that has been considered for some time, and to whether the goods in question infringe the rel-
there is a growing concern about the increase evant intellectual property right within one month
in counterfeit goods due to the globalisation of from the institution of the Identification Proce-
the economy and increase in online transac- dures and notifies both parties of the decision.
tions with foreign businesses. For the purpose
of addressing such concern, the Trademark Act If Customs determines that the goods infringe
was revised to enable Japanese Customs to the relevant intellectual property right and the
confiscate counterfeit goods more effectively. importer does not voluntarily dispose of the
This article explains the above-mentioned revi- goods within three months of the notice of the
sion of the Trademark Act of Japan. decision, ie, the appeal period, Customs may
confiscate and destroy the goods. At any time
Procedures for Japanese Customs to enforce during the Identification Procedures, the import-
the restriction on counterfeit goods at er can voluntarily dispose of the goods in ques-
borders (Identification Procedures) tion.
In Japan, goods that infringe intellectual prop-
erty rights are subject to confiscation at borders. Simplified proceedings
In the case where imported goods suspected of In addition to the Identification Procedures, intel-
infringing intellectual property rights are found lectual property right holders can use simplified
by Japan Customs, Customs institutes proceed- proceedings to deal with counterfeit goods.
ings (known as “Identification Procedures”) to Intellectual property right holders can file a peti-
determine whether such goods infringe intellec- tion for suspension in advance to request Cus-
tual property rights pursuant to the Customs Act toms to institute the Identification Procedures
of Japan. An overview of the proceedings is as when goods infringing their intellectual property
follows. rights are being imported. In filing the petition for
suspension, an intellectual property right holder
Customs identification and actions is required to demonstrate that infringing goods
Once Customs detects goods suspected of are being imported or are likely to be imported.
infringing intellectual property rights in the
2Trends and Developments JAPAN
Contributed by: Kenji Tosaki and Hiroki Tajima, Nagashima Ohno & Tsunematsu
If a trade mark right holder files a petition for sus- understood that non-business activities do not
pension, the trade mark right holder is required constitute trade mark infringement and therefore
to demonstrate that the goods infringe the trade the import of counterfeit goods by individuals in
mark right by submitting documents or materi- Japan for their personal use does not constitute
als such as images of samples of the infring- trade mark infringement. In fact, individuals in
ing goods. Once the petition for suspension is Japan who import counterfeit goods increasing-
accepted, Customs publishes the fact that the ly assert that they imported the goods for their
petition for suspension was accepted. If a peti- personal use, and it is very difficult for Customs
tion for suspension is accepted, the Identifica- to refute their statement that they imported the
tion Procedures can be simplified. Specifically, if goods for their personal use unless they import
Customs detects goods suspected of infringing a large quantity of goods at one time. As a result,
trade mark rights covered by a petition for sus- counterfeit goods enter Japan lawfully.
pension in the import process, Customs under-
takes simplified Identification Procedures. In order to address such problem, the Trade-
mark Act was revised to amend the definition of
In the simplified Identification Procedures, con- “import” to include acts by a person in a foreign
currently with the notification to both parties of country of causing, either directly or indirectly,
the institution of the Identification Procedures, another person to bring goods into Japan from
Customs gives the importer an opportunity to a foreign country. This is somewhat tricky lan-
submit an objection within ten working days. If guage, but under the revised Trademark Act,
the importer does not file an objection, Customs even when an individual in Japan purchases
may make a decision as to whether the goods counterfeit goods directly from a foreign busi-
in question infringe the relevant trade mark right ness through an e-commerce website and
based on the petition for suspension and rel- imports the counterfeit goods for their personal
evant materials. If the importer files an objec- use, the act by the foreign business of causing
tion, the proceedings convert from the simplified the individual in Japan to bring the counterfeit
Identification Procedures to the regular Identifi- goods into Japan from a foreign country consti-
cation Procedures. Currently, about 90% of the tutes trade mark infringement, thereby entitling
Identification Procedures are simplified. Customs to confiscate the goods.
Problems under the current Trademark Act The revision will come into effect no later than
and overview of the 2021 revision 21 November 2022, with the specific date to be
Should a Japanese business import counterfeit determined in due course.
goods, such act would constitute a trade mark
infringement and Customs can confiscate the Several problems will remain even after the
goods. However, in recent years, due to the revision
development of e-commerce and the reduc- The revision is expected to decrease the number
tion of international shipping costs, there has of counterfeit goods brought into Japan. How-
been a rapid increase in the number of counter- ever, from a practical perspective, there will be
feit goods being directly imported from foreign several problems that will remain even after the
businesses by individuals in Japan. The for- revision.
eign businesses sell counterfeit goods through
e-commerce websites and send them directly to
the individuals by mail or courier. It is generally
3JAPAN Trends and Developments
Contributed by: Kenji Tosaki and Hiroki Tajima, Nagashima Ohno & Tsunematsu
Circumnavigating the revision lectual property rights to submit documents to
As explained above, after the revised Trademark prove such fact. With this in mind, close atten-
Act comes into effect, Customs will be able to tion should be paid to the discussion about the
confiscate counterfeit goods when an individual proposed bill in the Diet. The bill was passed
in Japan purchases counterfeit goods directly unanimously in the House of Representatives
from a foreign business and imports the counter- (the Lower House) and is now under deliberation
feit goods into Japan. If the name of a business, in the House of Councillors (the Upper House) as
such as the name of a company, is indicated as of 14 March 2022.
sender, Customs will easily be able to determine
that such foreign business has caused, either Assuming that the bill will be passed by the
directly or indirectly, any individual in Japan to Diet and the Customs Act will be revised in
bring the counterfeit goods into Japan from accordance with the bill, if a trade mark right
a foreign country. However, after the revised holder comes to know that goods that are likely
Trademark Act comes into effect, it is expect- to infringe its registered trade mark are being
ed that foreign businesses that sell counterfeit imported into Japan, and that the importer
goods to individuals in Japan will, in order to argues that they import the goods for their per-
circumvent the revised Trademark Act, indicate sonal use, and the goods were sent from a non-
the name of an individual, instead of the name business individual, it is advisable to argue that
of the business, as the sender. In that case, Cus- the goods should be determined to be sent from
toms will have difficulty determining whether it a foreign business unless:
is actually a business that has caused, either
directly or indirectly, any individual in Japan to • sufficient evidence to prove that the sender
bring the counterfeit goods into Japan unless is a relative of the importer, or that there is a
Customs has the power to instruct importers to personal relationship between the sender and
submit evidence. the importer is submitted; and
• the evidence of a series of online communi-
The current Customs Act provides that Customs cations between the sender and the importer
shall give an opportunity to both parties to sub- that led to the shipping of the goods is sub-
mit opinions and evidence, however, it does not mitted as evidence.
provide that Customs can instruct the importer
to submit evidence on specific matters, such Further, it is also advisable to check the appear-
as the sender’s information and the relation- ance of the package of the goods and argue that
ship between the sender and the importer. This the goods should be determined to be sent from
situation may make the revised Trademark Act a foreign business if the invoice is printed and
meaningless unless strong authority to collect follows patterns common to ordinary business.
evidence is given to Customs.
Completing an act of infringement
In order to avoid such unreasonable circum- An act of trade mark infringement is an offence,
stances, the Cabinet of Japan proposed a bill to and any person who has been found guilty of
revise the Customs Act on 28 January 2022. The committing trade mark infringement is subject
proposed revision of the Customs Act enables to imprisonment with work for a term up to ten
Customs to request an importer who argues that years, a fine of up to JPY10 million, or a com-
the goods at issue in the Identification Proce- bination thereof. However, it is generally under-
dures do not fall under goods infringing intel- stood that an act of trade mark infringement is
4Trends and Developments JAPAN
Contributed by: Kenji Tosaki and Hiroki Tajima, Nagashima Ohno & Tsunematsu
completed when the customs clearance is com- Conclusion
pleted, although some argue that it is completed The revised Trademark Act will strengthen trade
when the goods have landed, or when the goods mark protections against counterfeit goods
enter the territorial waters. According to gen- brought into Japan from foreign businesses.
eral understanding, if the counterfeit goods are However, in order for Customs to effectively
confiscated by Customs, then the act of trade confiscate counterfeit goods, we should pay
mark infringement has not been completed and close attention to the discussion about the bill to
is instead considered an attempted trade mark revise the Customs Act in the Diet. Further, it is
infringement, which is not an offense under the advisable that any trade mark right holder makes
Trademark Act. Thus, neither the sender nor the an effective argument in the Identification Pro-
importer of the goods can be penalised under cedures against importers who deny that they
the Trademark Act if the goods are confiscated purchased the goods from foreign businesses.
by Customs. As such, Customs and trade mark right holders
will need to make continuous efforts to minimise
Lastly, if it is determined that a foreign business the damages resulting from counterfeit goods.
has caused, either directly or indirectly, any indi-
vidual in Japan to bring the counterfeit goods
into Japan, the goods can be confiscated by
Customs under the revised Trademark Act even
if the importer did not know that the goods are
counterfeit goods. In such case, the importer
cannot receive the goods regardless of having
made any payment. The act of the seller will
constitute fraud, however, it will be difficult to
make the seller return the money. Taking this
into account, it will be worth considering post-
ing warnings to actual and potential customers
about the risk of purchasing goods through non-
official websites.
5JAPAN Trends and Developments
Contributed by: Kenji Tosaki and Hiroki Tajima, Nagashima Ohno & Tsunematsu
Nagashima Ohno & Tsunematsu is one of the and most significant corporate, finance and
first integrated full-service law firms in Japan real estate transactions related to Japan. The
and one of the foremost providers of interna- firm has extensive corporate and litigation ca-
tional and commercial legal services based in pabilities spanning key commercial areas such
Tokyo. The firm’s overseas network includes as antitrust, intellectual property (IP), labour and
offices in New York, Singapore, Bangkok, Ho taxation. Its IP practice covers not only IP litiga-
Chi Minh City, Hanoi and Shanghai, and col- tion but also IP transactional matters, from the
laborative relationships with prominent local traditional IP transactions, such as licensing
law firms. In representing leading domestic and or research and development agreements, to
international clients, the firm has successfully complex IP M&A, IP finance, IT-related matters,
structured and negotiated many of the largest or entertainment business.
AUTHORS
Kenji Tosaki is a partner at Hiroki Tajima is an associate at
Nagashima Ohno & Tsunematsu. Nagashima Ohno & Tsunematsu.
He specialises in intellectual His practice focuses on disputes
property (IP) litigation. He resolutions in the areas of
handles both IP infringement intellectual property law,
litigations and IP invalidation information technology law and
litigations before the IP High Court, the commercial law. He received his LLB at the
Supreme Court, District Courts and the Japan University of Tokyo and earned his LLM at
Patent Office. His IP expertise includes a wide Duke University School of Law. Hiroki Tajima
variety of IP matters in many areas, such as worked at Weil, Gotshal & Manges LLP in New
telecommunications, electronics, social games York from 2020–21.
and pharmaceuticals. He also provides pre-
litigation counseling, including infringement/
invalidity analysis. He received his LLB at the
University of Tokyo and studied as a visiting
scholar at SMU Dedman School of Law. He is
a member of AIPPI and LES Japan.
Nagashima Ohno & Tsunematsu
JP Tower
2-7-2 Marunouchi
Chiyoda-ku
Tokyo 100-7036
Japan
Tel: +81 3 6889 7000
Fax: +81 3 6889 8000
Email: kenji_tosaki@noandt.com
Web: www.noandt.com/en/
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