Hogan Lovells

Hogan Lovells' LimeGreen IP

The site will give you an overview of Intellectual Property law and related procedures, and how these may differ from country to country.

Trademarks - Anti-counterfeiting: Customs watch applications - Japan

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-Are there any fees or local procedural requirements?

No fees, bonds or securities are required.

-How do you register a customs watch application?

An application document in Japanese has to be submitted to Japan Customs. Japan Customs usually require interviews (by email, call or in person) with the representative of the applicant in advance.

-How long does it take and what is the term of protection?

It usually takes around 4-6 months for registration. The registration must be renewed every four years unless a renewal of the relevant trademark interrupts.

-If filing on behalf of a subsidiary of the IP rights holder what evidence of connection to the parent company is required?

Only the trademark owner may become an applicant. 

-Is a local agent required? If so, is a power of attorney required?

If a non-Japanese company intends to file an application, it must practically appoint a Japanese attorney in Japan as a representative unless it has a contact point in Japan as a foreign company registered in Japan.  A power of attorney is required to appoint such attorney before Japan Customs. The power of attorney needs to be issued by the trademark owner, not by a subsidiary of the trademark owner.

-What documentation is required or recommended?

The application should contain:

  • A description of the genuine products
  • Information on any known counterfeits of the products

Known trafficking routes and a list of authorised manufacturers/ distributors, and preparation of actual counterfeits are strongly recommended.

Applicants are also usually required to:

  • Show the points for clearly identifying the counterfeit goods (namely, what points Japan Customs should focus on in order to distinguish counterfeits from genuine goods)
  • Provide a list of licensees worldwide (regardless of whether the licensees are permitted to export products to Japan).  The second item is necessary for Japan Customs to determine whether a product is imported as a parallel import (which is widely permissible in Japan).

Information on any known counterfeits of the products, and showing the points to clearly identify the counterfeit goods, are almost essential for the registration.  It would be quite difficult to register a mark with Japan Customs without this information.

-What level of understanding of IP rights is available from customs? Are additional procedures or training required?

Such training is usually not required.  However, if the applicant is able to give training on how to distinguish counterfeits from genuine goods, it is likely that it would give a good impression to Japan Customs.

-When customs report on a finding how long does the rights holder have to respond and what steps are required to ensure non-release of counterfeit goods?

When Japan Customs find a suspicious product, they notify both the registration holder and the importer. The importer has 10 days (except for holidays of administrative bodies) from receipt of the notice to file a response to Japan Customs.  If the importer does not dispute in the response that the product infringes the trademark, or if the importer fails to respond in a timely manner, Japan Customs will forfeit the product.  In this case, no action by the registration holder is necessary.

If the importer responds in a timely manner and denies infringement, Japan Customs notify the registration holder. The registration holder must inspect the suspicious product and file an opinion on whether the product actually infringes the trademark, within 10 days from receipt of the notice. If an attorney requests photographs of the suspicious products to be sent to them on the registration holder's behalf, the local customs office will send them to the registration holder.  If the registration holder files an opinion in a timely manner, Japan Customs then decides whether to forfeit or release the product.