1. Introduction

In Japan, Customs can seize goods during export or import where they infringe various IP rights (IPRs), including:

patent rights;

utility model rights;

design rights;

trademark rights;

copyright & neighboring rights;

plant breeder’s rights;

unfair competition relating to famous indications of goods;

configurations of goods;

access/copy control of restricted material; and

layout-design rights.

Transiting goods are also subject to border measures in Japan.

Border measures against counterfeit goods can be taken by Customs at their discretion (ex officio) even if the right holder has not an application for border measures.

2. Application procedures for border measures at Customs

IP rights holders can submit an application for suspension of the infringing goods at Customs in Japan, which is a kind of administrative procedure. Please note that this procedure is different from filing applications at the Japan Patent Office to obtain exclusive rights for patents, design patents, trademarks etc.

The required documents to be submitted are as follows:

• An application form (official form)
• An official document proving the existence and ownership of the IP right (e.g. a certified copy of the registration, etc.)
• Materials proving the fact of infringement (e.g. samples, photos of infringing goods)
• Checking points list s A checklist showing and explaining the difference between genuine goods and counterfeit goods
• A Power of Attorney, if the procedures are conducted by a legal representative

The period required for the application to be accepted and recorded is depending on the cases, but the application may be recorded in as little as one month.

Please keep in mind that applicants typically have meetings with Customs officials before filing their official applications with the Customs office and those meetings may require a few months to complete.

If the application is approved and recorded, the validity period of a recordation at Customs can be set by the applicant within a range not exceeding 4 years, provided that the recorded IP rights remain valid for that period. The recordation can be renewed within three months prior to the expiry date of the recordation.

3. Verification Procedures

When goods suspected of infringing IPRs are detected, Customs notifies both right holders and importers/exporters of the initiation of verification procedures.

Both right holders and importers/exporters are provided with equal opportunities to submit their opinions and evidence to Customs within 10 working days (3 working days for perishable items) from the day following the date of the “Notification of Initiation” letter.

In cases involving unavoidable circumstances, the right holders and importers/exporters may submit a “Request for Extension of Response Deadline” and may submit their opinions and evidence even after the deadline has passed.

If the suspected goods for verification procedures are related to applications for suspension, both right holders and importers/exporters may inspect them during the period when they may submit opinions and evidence.

Right holders and importers/exporters may request Customs to send photos of the goods via email to submit their opinions and evidence.

Based on opinions and evidence from the right holders and importers/exporters, Customs makes a decision without a court ruling as to whether the suspected goods are infringing IP rights or not.

To notify the result of verification procedures, the decisions are sent to both right holders and importers/exporters. If it is decided that the goods are not infringing IPRs, imports/exports are granted.

If it is decided that the goods are infringing IPRs and no measures of voluntary disposal have been taken during the period for protest, Customs may confiscate and destroy the infringing goods without any court rulings/orders.

4. Simplified verification procedures (Applicable to import only. Export is excluded.）

If verification procedures are initiated for the goods related to applications for suspension, and importers do not submit any written objections to Customs about the “Notification of Initiation” during the designated period, Customs makes a decision based on only information in the applications for suspension without any further opinions and evidence from parties concerned as to whether the suspected goods are infringing IP rights or not.

5. Security deposits

If the determination of whether the goods constitute infringing goods becomes difficult due to conflicting claims between the right holders and the importers/exporters, the verification procedures may be prolonged. Therefore, if the Director of Customs determines that security is necessary to compensate the importers/exporters for damages that may be incurred due to the goods not being imported/exported until the verification procedures are completed, the Director may order the right holders to deposit a sum of money deemed appropriate within a specified period. Furthermore, when applications for suspension are placed with respect to perishable goods, the deposits are generally required regardless of whether there is a conflict between the right holders’ and the importers’/exporters’ claims.

6. Others

Customs do not have the authority to impose fines on importers/exporters of IPR’s infringing goods, although Customs have the authority to notify the importers/exporters that the amount of money equivalent to fines shall be paid to Customs.

If such importers/exporters fail to comply with the notifications, Customs shall file accusations with public prosecutors.

Customs employs intellectual property specialists. Enforcement of rights is permitted even for personal imports. Customs can make its own administrative infringement decisions. Simplified verification procedures and a longer validity period for Customs recordals keep costs low, and since Customs bears warehouse storage and destruction expenses, IPR’s right holders’ expenditures are minimized, making this an extremely rights holder-friendly system.