Summary

There have been legislative changes in Trademark/Design Law so that it is possible to stop importation of counterfeits disguised as personal importation. Further, the act on the Limitation of Liability for Damages of Internet Service Providers was amended so that it is possible to obtain necessary information regarding an infringer on the Internet more easily and effectively, since it had previously been extremely difficult to identify an infringer due to anonymity of the Internet.

Both new laws came into force on October 1, 2022.

 

1.Revision of Trademark/Design Patent law

In practice, it has been difficult for “personal use/personal importation” to be regarded as trademark infringement, since doing so may give rise to widespread confusion in actual trade.

However, due to the rapid spread of electronic commerce, it has become easier for Japanese consumers to buy goods in online shopping malls, regardless the actual place the goods are located. Under the circumstances, vendors exported their goods (counterfeits) to Japanese consumers under the guise of personal importations by sending them in small-sized packages, so that they could avoid potential seizure by the Japanese Customs due to trademark infringement.

Therefore, in order to regulate this kind of unlawful conduct, the Japanese Government decided to define “importation of counterfeits” as trademark infringement by adding the following article to the Trademark／Design Patent Law.

Article 2 “Definitions”
I-7 “‘In this law, the act of importing includes the act of a person in a foreign country causing another person to bring it into Japan from a foreign country.”

 

2. Revision of Procedures Concerning Disclosure of Sender Information

An aggrieved party who suffered from information posted on the Internet may seek an injunction and/or damages against the person who posted such information (“sender”). However, before initiating such action against the sender, the victim must identify the sender, which is extremely difficult. In order to aid the aggrieved party in identifying the sender, the Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to Demand Disclosure of Identification Information of the Sender (the “Act”) provides that ISPs (such as content providers who store information and transmit it to the public and access providers who provide Internet access services to the sender) shall disclose, under certain conditions, information concerning the sender including the name and address of the sender, the IP address through which the sender posted the infringing information, and the timestamp showing the time when the infringing information was posted (“sender information”).

This newsletter explains the recent revisions of the Act aimed at allowing the aggrieved party to more easily identify the sender.

The revision to the act was made to mitigate the following problems:

A) The aggrieved party must bring at least two cases in sequence to obtain sender information, namely, a procedure against a content provider and then a procedure against an access provider. This is time consuming.

B) As a result of the time-consuming procedures, IP addresses, timestamps, etc. may be erased, making it impossible to identify the sender.

C) Some content providers only retain IP addresses and timestamps pertaining to login and do not retain those pertaining to the posting of the infringing information. Note that most courts do not issue an order mandating the content provider to disclose sender information pertaining to login.

The revision simplifies and accelerate the procedures. Before the revision, the Civil Procedure Code, which provides strict procedures, is applied to the proceedings for the sender information disclosure. After the revision, the Non-Contentious Case Procedures Act is applied to the procedures. Therefore the procedure is expected to be simpler and faster.

Specifically, it is expected that the service process of petition to a defendant abroad will be notably expedited after the revision. Service of complaint under the Civil Procedure Code requires strict formalities, and it typically takes six months or more to serve a complaint to a defendant in a foreign country.

After the revision, the case against the content provider and the case against the access provider may be consolidated. By having the same judge hear both of the cases in a single procedure, duplicate hearings and inconsistent orders between those against content providers and access providers can be avoided.

The counts may issue following orders:

• Order to Disclose Sender Information.
• Provision Order:
  A) Order the content provider to provide the aggrieved party with information about the access provider.
  B) Order the content provider to provide the access provider (not the aggrieved party) with the sender information such as timestamps.
• Order not to erase sender information.

After the revision, login information is also subject to disclosure.