BORDER ENFORCEMENT IN JAPAN
notice will identify the suspect goods, the reason for the initiation of the identifi cation procedures, and the IP rights that are thought to be infringed.
If the importer does not submit a written objection to Customs in response to the notifi cation of
initiation within ten business
days, or three business days for perishable items, Customs will make
an infringement
determination based solely on the information provided in the Application for Suspension.
If the importer does submit a written objection to Customs in response to the notifi cation of initiation, the importer and the right holder are both allotted ten working days, or three business days for perishable items, to submit written arguments and further evidence to Customs and the other party. In cases where the identifi cation procedures were initiated based on an Application for Suspension, both parties may inspect the suspect goods. In addition, the applicant right holder may request a sample examination during which the applicant may take apart samples of the suspected goods if infringement is not obvious from looking at the exterior of the suspect goods.
T e importer is also off ered an opportunity to respond to the right holder’s request to Customs. A request for a sample examination will be granted if Customs determines that: (1) the sample inspection is necessary to submit opinions or evidence; (2) the interests of the importer are not likely to be unreasonably prejudiced; (3) it is unlikely that the samples will be used for improper purposes; and (4) the applicant right holder has the ability to properly handle the sample. If the request for a sample examination is granted, Customs offi cers and the importer may also be present.
Requests for special adviser opinion During the Application for Suspension and the identifi cation procedures, Customs may seek the opinion of a panel of three IP rights experts from a list of 37 candidate lawyers, patent attorneys, and scholars. T e expert advisers must be unbiased and cannot have any special interest with respect to either party. T ese designated specialists assist Customs offi cials in eff ectively making substantive determinations on infringement violations in technical and highly specialised areas.
Petition deposit and dustoms release deposit Upon initiating identifi cation procedures based on an Application for Suspension, Customs may require the right holder to post a ‘petition deposit’ to protect the importer from potential undue harm due to the suspension of suspect goods. T e deposit is returned to the right holder in full if Customs determines that the suspect goods are counterfeit.
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“JAPAN CUSTOMS IS VESTED WITH THE AUTHORITY TO DECIDE THE SUSPENSION AND RELEASE OF IMPORTED GOODS, TO DECIDE THE MERITS OF EACH CASE, AND TO EXECUTE SUCH DECISIONS.”
Aſt er identifi cation procedures have been
initiated, the importer of the suspect goods may request Customs to discontinue the procedures. Customs will require the importer to post a ‘customs release deposit’ to cover any damage caused by the importation of the subject goods prior to discontinuing the procedure and clearing the goods through Customs.
Final determination If Customs determines that the suspect goods are not infringing, the importer is granted an import permit and the goods are cleared through Customs. If on the other hand, Customs determines that the suspect goods do infringe, Customs will issue a ‘notifi cation of decision’. T e importer must then choose voluntarily to dispose of the infringing goods or obtain a certifi cate of consent from the right holder. Infringing goods not voluntarily disposed of may be confi scated and destroyed by Customs.
T e importer may protest against the decision of infringement by fi ling an opposition with the Commissioner of Customs within two months of receiving the notifi cation of decision. T e Commissioner’s decision can be further appealed against by requesting an examination from the Minister of Finance. T e decision of the Minister of Finance may be further appealed against to the courts by requesting a cancellation of the decision.
Effective use of customs measures To use Customs measures eff ectively to defend against counterfeit goods, it is important to be adequately prepared. Prior registration of IP rights is recommended to prove ownership of a valid IP right when submitting an Application for Suspension. Right holders should also be ready to provide Customs with all pertinent information and thus it is important to collect as much information as possible on suspect shipments.
Meetings with Customs to discuss the nature of suspension requests and to confi rm proper compilation of requisite information are highly recommended and even encouraged by Customs authorities. T ese meetings may be arranged directly with Customs offi cials or by proxy through local representative attorneys.
Kenji Sugimura is the president of SUGIMURA International Patent & Trademark Attorneys. He can be contacted at:
k.sugimura@
sugi.pat.co.jp
Rebecca Chen is the foreign counsel liaison of SUGIMURA International Patent & Trademark Attorneys. She can be contacted at:
r.chen@
sugi.pat.co.jp
Kenji Sugimura is an experienced Japanese patent attorney and litigator specialising in mechanics and building engineering. He is a member of AIPPI, APPA, FICPI, INTA and the JPAA.
World Intellectual Property Review Annual 2014
Rebecca Chen is a California-licensed attorney. She is based in Palo Alto and specialises in comparative IP law.
She
serves as the liaison between SUGIMURA’s international clients and the firm’s Tokyo office.
www.worldipreview.com
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