Border measures and other means of customs intervention - Japan

www.lovells.comLovells Horitsu Jimusho Gaikokuho Kyodo Jigyo

Border measures and other means of customs intervention - Japan

Eiichiro KubotaLovells Tokyo

www.lovells.comLovells

Scope of goods subject to border measures

• Imported goods

• Exported goods

• Goods on transit


Scope of IPR protected by border measures

• Trademarks• Copyrights and related rights• Patents• Industrial Designs• Utility Model rights• Layout-design rights• Plant Breeder's rights• Famous indication of goods and configuration of

goods


Custom seizure cases – Increasing each year

Source:Ministry of Finance Japan

9,143

13,467

19,59122,661

26,415

0

5,000

10,000

15,000

20,000

25,000

30,000

2004 2005 2006 2007 2008


Mainly coming from China

2008Source:Ministry of Finance Japan

Other2%

China74%

Thailand2%Philippine

2%Taiwan4%

Korea12%

Hongkong4%

Number of goods basis


Mainly infringing trademarks

Trademark73%

Other0%Patent

7%

Copyright10%

Design10%




Variety of goods

Cigarette10%

Clothingaccessory

14%

Medicine10%

Clothing9%

Shoes6%

Bag15%

Others36%




Custom authorities promoting seizures


Covering all of Japan

Okinawa

Hakodate

Tokyo

Yokohama

OsakaKobe

Nagoya

Moji

Nagasaki

1 application covers whole of Japan9 major custom hubs


Specialized IPR enforcement team


IPR National Center

• A body created under the Tokyo Customs• Deals specifically with IPR matters• 30 members with 8 supervisory IPR specialists• Coordinates work of local IPR specialists


Education and training

• Seminars on identifying counterfeit products are often held within the customs by right holders– 140 seminars in 2008

• Local IPR officers are given training courses and are given OJT at the IPR National Center


Supplementing Customs' abilities

• Customs may consult with the Japan Patent Office, the Ministry of Agriculture, Forestry and Fishery and/or the Ministry of Economy, Trade and Industry to ask their opinions on infringement

• Customs may also ask opinions of advisers who are lawyers, patent attorneys and scholars specialized in IP


Custom seizures - main steps Submit customs seizure application

Identification proceduresNotification to right holders and importers

Customs examines application

Acceptance Publish acceptance on Custom's website

Retention of suspected goods (Ex officio for famous mark)

1 month

(preliminary consultation to customs)

Right holders and importers submit opinion(10days)

Determination (custom officer)

Infringement Noninfringement

Simplified procedure for accepted seizure application for TM, Copyright

Notification to importers

Importer opposes seizure

Importer does not oppose


Goods destroyed

2 months opposition

Custom seizures - main steps

Import prohibited Import allowed

Goods released

Not opposed Opposition to Director of Customs

End of matter IP rights owner

commences civil litigation

Examination by customs

Goods destroyed

Goods released

Determination (custom officer)

Infringement Noninfringement


Provision of security

• Director-General of a Customs-House may order the IPR holder to provide security in case the Identification procedures have commenced but the Customs cannot come to a quick decision and the suspension continues

• In case of Patents, Design rights and Utility Models, the importer may request the release of the imported goods after a certain period and under the condition of providing security


Application: Necessary/desirable information

• Evidence of IP ownership• Genuine v infringing goods

– Examples of infringing goods– May be requested to supplement this with:

• JPO decisions• Court decisions• Lawyers' opinions

– How to identify infringing goods from genuine goods– List of authorized importers and distributors


Tips for successful detention

• Sample of infringing good is a MUST– without samples, you will have a hard time with the

Customs• Good relationship with the Customs makes

things easier– through consultation procedures, Customs will realize

fame of brand • Providing information to the Customs will

facilitate customs seizure– providing seminars– any information regarding exporters, freight


Practical benefit of filing application

• Accepted applications published on customs website

• Importers may look at website and avoid importing dead copies/imitations of those companies goods


Example of Custom’s website


Customs seizure based on Patents

• In 2004, Customs stopped importation of Plasma Display Panels made by Samsung SDI based on application by Fujitsu– Samsung and Fujitsu settled and importation was

allowed• In the year 2008, there were 27 cases where

importation was suspended based on patent rights


Small size imports

• Trademark infringement and Patent infringement occurs only when the act is done "as a business"– But, Customs may go through Identification procedures

to find out whether they are imported "as business" or not

• Travelers' private luggage– Customs "persuade" travelers to give up infringing

goods → nearly 4000 travelers gave up goods in 2008• Personal shipments

– Infringing goods often imported as personal shipments– 97% of cases are posted goods


Parallel Imports - Trademarks

• Fred Perry Case– Supreme Court's decision of February 23, 2003– Parallel imports are permissible only if: i) mark on the

good is legally placed by trademark owner or Licensee in country of first sale, ii) trademark owner in country of first sale can be deemed as the same person as the trademark owner in Japan from a legal perspective or an economic perspective, and iii) the quality of the imported goods are under direct or indirect control by the Japanese trademark owner and there are no substantial differences from the authorized domestic goods in quality.


Parallel Imports - Copyrights

• Copyright Act provides that the right to transfer a copyrighted work is subject to international exhaustion (Article 26-2)

• Although "Cinematographic works" are not subject to international exhaustion, whether imported DVDs and Videos fall under such "Cinematographic works" is still "grey"


Parallel Imports - Patents

• BBS Aluminum Wheel Case– Supreme Court's decision of July 1, 1997– Japanese patent owner cannot enforce its rights if the

patented product is sold outside Japan by the patentee or someone equivalent to the patentee without the seller agreeing with the buyer that Japan is excluded from the territory of sale or use of that product, and in case of such an agreement, without indicating clearly on the patented product that such an agreement is in place.


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Border measures and other means of customs intervention - Japan