1. Background of the law revision
In recent years, with the development of cross-border e-commerce, the number of applications for import seizures against patent and design rights (over 150 cases in 2009) and the number of import seizures (over 450 cases in 2021) have been increasing. In addition, since October 1, 2022, as the Customs has become to confiscate counterfeit goods brought by overseas businesses entities to domestic non-business entities by mail, etc., the Customs now needs handle many cases. Further, in the case of ordinary identification procedures, a right holder needs to submit a written opinion even when the importer admits that the goods are counterfeit, which is a heavy burden for the right holder.
2. Main Point of the law revision
Right holders of patent rights, utility model rights, design rights, and trade secrets, previously not covered, can stop the counterfeit products through simplified identification procedures.
In the ordinary identification procedure, a right holder needs to submit a written opinion and evidence each time the Customs issue a notice of commencement of the certification procedure. Under the simplified identification procedure, however, the right holder submits a written opinion and evidence only when the importer submits a written statement disputing that the goods are counterfeit.
3. What is the simplified identification procedure?
In the simplified identification procedure, the Customs discovers a shipment suspected of infringement and initiates the procedure. Under this system, a right holder submits a written opinion and evidence only when the importer submits a written statement of dispute. Prior to this procedure, the right holder must first file a petition for import seizure with the Customs, which must be accepted by the Customs.
When a petition for an import seizure, the right holder submits documents that show the ownership and contents of the right (original register and gazettes), as well as materials that explain the points that identify the infringing goods and genuine goods, and prima facie evidence of infringement, etc.
4. Our Firm’s Experience
We have extensive experience in customs identification procedures including simplified identification procedures, including those filed on behalf of foreign right holders, and in 2022, we stopped approximately 20,000 counterfeit products.
Customs identification procedures and simplified procedures are effective measures against infringing products to prevent from entering the Japan market. They are also beneficial to the enforcement of rights as they enable us to obtain information on importers, etc. If you are interested in taking advantage of the system, please feel free to contact us.
Reiko Tonomura （Ms.）r_tonomura@nakapat.gr.jp