1. Recent Customs statistics

According to a public announcement by the Ministry of Finance on May 5, 2021, the number of the cases of seizure at the border was 30,365 in the fiscal year (Reiwa the second), which was about a 27% increase from the previous year, while the number of the items seized was 589,219, which was about a 42% decrease from the previous year. These statistics appear to show that the number of small-sized importation has increased. Practically speaking, most of the counterfeits in such small sized parcels are imported under the disguise of personal importation.

2. Recent developments (Revision of the laws)

Under the circumstances, the Japanese government (the Ministry of Finance and the Ministry of Economy, Trade and Industry) has stated that it will consider how to regulate such illicit importation of counterfeits in the Promotion Program for Intellectual Property 2020.

However, it has been practically difficult to regard “personal use/personal importation” as trademark infringement, since it might bring about a lot of confusion in actual trade.

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As a result, the government decided to re-define “importation of counterfeits” as trademark infringement by adding the following article to a draft revision of the Trademark Law:

Article 2 “Definitions”
I-7 “‘Importation’ includes the bringing of counterfeit goods to individuals in Japan by overseas vendors via postal mail, etc.”

The revised Trademark Law passed the Diet on May 14, 2021, was promulgated on May 21, 2021, and will come into force in 2022 or in the beginning of 2023. However, in order to more effectively prevent personal importation of counterfeits, it is also necessary to amend the Customs Law. A similar amendment was applied to the Design Patent Law. These developments are being watched closely.

3. How to record your client’s trademark registrations at Customs

In general, Customs can seize suspicious goods at the border ex officio. However by recording specific trademark registrations, one can expect more active seizures by Customs. Customs training would be also beneficial for trademark right holders, so as to effectively educate Customs officers and enhance border seizures.

In practice, the requisite documents for filing an application for Customs recordation would be as follows.

– Evidence that can reasonably prove that there is potential infringement of trademark rights in Japan. For example, samples, brochures, photos of the counterfeit goods.
– Checklist for Customs officers to distinguish between genuine goods and counterfeit goods
– Power of Attorney
– Authorized copy of Registration of Japanese Trademarks
– Application form to Customs
– Opinion of Attorneys (if possible)
– Court judgment regarding infringement (if any)

The process will take some time since it is necessary to have meetings with the Customs officers in advance to persuade them that there is actual infringement or a serious possibility of infringement of the trademark rights in Japan. As listed above, it is also necessary to provide Customs with a check list containing photos of genuine goods/counterfeits to enable the Customs officers to distinguish between counterfeit goods and genuine goods at the border.

4. Effects of recordation of trademark registration at Customs

The effective term of Customs recordation is a maximum of 4 years, unless the recorded trademark rights expire during the effective term. For the detailed procedure at Customs when suspicious goods are detected, reference is made to the following Customs website: https://www.customs.go.jp/mizugiwa/chiteki/pages/c_001_e.htm