Keeping in step with the recent growth of e-commerce, there has been a rapid increase in the number of cases where foreign business entities directly sell and send by mail a small amount of counterfeit goods to individuals residing in Japan.
Goods that infringe on trademark rights are subject to confiscation by the Japan Customs and Tariff Bureau (CTB), which is an internal bureau of Japan’s Ministry of Finance. Currently however, because only “the act having a business nature” constitutes an infringement of trademark rights, the act of importing counterfeit goods for “personal use” does not constitute an infringement. Therefore, goods imported for personal use are currently not subject to confiscation by Japan customs.
Amendments to the Japan Trademark Law and Design Law came into force on April 1, 2022. They have been introduced with the purpose of clarifying that the act of a foreign business entity using a person in Japan to bring in counterfeit goods by mail constitutes an act of trademark or design rights infringement.
Previously, there has not been an accepted explanation as to whether such an act of a foreign business entity constitutes an infringement of trademark rights. Figure 1 by the Japan Patent Office (JPO) shows the acts that are newly specified as infringement on trademarks or design rights.
Specifically, the following wording in Japanese is added to article 2 of Japan’s Trademark Law as paragraph 7: “In this Act, the act of importing shall include the act of a person in a foreign country to cause another person to bring goods into Japan from a foreign country.” (Translated from Japanese).
Similar wording in Japanese is added to the Design Law article 2 as part of paragraph 2, that further defines the acts, meaning in English: “‘Working’ of a design in this Act shall mean the following acts: (i) manufacturing, using, assigning, leasing, exporting or importing (in this Act, the act of importing shall include the act of a person in a foreign country to cause another person to bring goods into Japan from a foreign country, the same applies hereinafter), or offering for assignment or lease (including displaying for the purpose of assignment or lease, the same applies hereinafter) of an article to the design.”
These amendments are expected to strengthen regulations by the Japan CTB on the private import of counterfeit goods.
Previously, there has not been an accepted explanation as to whether such an act of a foreign business entity constitutes an infringement of trademark rights. Figure 1 by the Japan Patent Office (JPO) shows the acts that are newly specified as infringement on trademarks or design rights.
“There has not been an accepted explanation as to whether such an act of a foreign business entity constitutes an infringement of trademark rights.”
Ryo Maruyama, Kyosei
Figure 1: Tightening Regulations on the Import of Counterfeit Goods from Outside Japan
Created by Kyosei International Patent Office based on “Outline of the Act of Partial Revision of the Patent Act and Other Acts” (May 2021, JPO)
Specifically, the following wording in Japanese is added to article 2 of Japan’s Trademark Law as paragraph 7: “In this Act, the act of importing shall include the act of a person in a foreign country to cause another person to bring goods into Japan from a foreign country.” (Translated from Japanese).
Similar wording in Japanese is added to the Design Law article 2 as part of paragraph 2, that further defines the acts, meaning in English: “‘Working’ of a design in this Act shall mean the following acts: (i) manufacturing, using, assigning, leasing, exporting or importing (in this Act, the act of importing shall include the act of a person in a foreign country to cause another person to bring goods into Japan from a foreign country, the same applies hereinafter), or offering for assignment or lease (including displaying for the purpose of assignment or lease, the same applies hereinafter) of an article to the design.”
These amendments are expected to strengthen regulations by the Japan CTB on the private import of counterfeit goods.
Ryo Maruyama is a Japanese patent attorney and vice president and chief patent attorney of Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp
Main image: shutterstock.com / pixelparticle
