1. Available Measures Against Counterfeit Goods

When taking measures against counterfeit goods in Japan, there are three main options to consider: (i) border enforcement by Customs, (ii) civil litigation and provisional injunctions, and (iii) criminal proceedings. In practice, the most important of these is often the Customs suspension system, which enables counterfeit goods to be stopped at the border before they enter Japan. In Japan, goods that infringe intellectual property rights are treated under the Customs Act as goods that must not be imported or exported. This applies to goods that infringe patent rights, utility model rights, design rights, trademark rights, copyrights, neighboring rights, plant breeder’s rights, and certain goods that violate the Unfair Competition Prevention Act.

2. Application for Customs Suspension

Under this system, a rights holder may file an application in advance with the Director-General of Customs requesting that Customs commence a procedure to determine whether certain goods suspected of infringing the rights holder’s intellectual property rights constitute infringing goods when such goods are about to be imported into or exported from Japan. This procedure is known as an “identification procedure.” The goods covered by this system include counterfeit branded goods, copy products, pirated goods, goods imitating protected designs, and goods bearing indications that may cause consumers to mistake them for genuine products. Goods that are relatively easy to assess based on their appearance or labels, such as goods infringing trademark rights or design rights, are particularly suitable for border enforcement.

3. Identification Procedure by Customs

When Customs discovers goods suspected of being counterfeit, it initiates an identification procedure to determine whether the goods constitute intellectual property infringing goods. In this procedure, both the importer and the rights holder are notified and given an opportunity to submit evidence and opinions. Customs then determines whether the goods are infringing goods based on the evidence and opinions submitted by both parties. In a standard identification procedure, Customs generally aims to make its determination within approximately one month. If the goods are found to be infringing, and if the importer does not voluntarily abandon or dispose of the goods, Customs will ultimately confiscate and destroy them.

4. Key Advantage of Customs Suspension

A major feature of this system is that counterfeit goods can be prevented from entering the Japanese market through an administrative procedure before court proceedings are initiated. In litigation, a rights holder files a lawsuit against an infringer and seeks remedies such as an injunction and damages. By contrast, Customs suspension is a system in which Customs, as an administrative authority, intervenes at the stage when goods are crossing the border. It can be used where certain evidence is available, even before the infringer has been fully identified or the amount of damages has been sufficiently proven. In particular, where large numbers of small-lot counterfeit goods are shipped from overseas, or where importers are dispersed among many parties, Customs suspension may be faster and more effective than filing individual lawsuits.

5. Limitations of Customs Suspension

However, Customs suspension is not a comprehensive remedy. Customs can determine whether goods constitute intellectual property infringing goods, but it cannot order payment of damages. In addition, if the rights holder wishes to broadly stop the infringer’s future sales activities or recover damages for past sales, it will be necessary to consider civil litigation or provisional injunction proceedings. In the case of trademark infringement, civil remedies may include claims for injunction, damages, restitution of unjust enrichment, and measures to restore business reputation. In serious cases, trademark infringement may also be subject to criminal penalties.

6. Difference Between Customs Suspension and Civil Litigation

The difference between Customs suspension and civil litigation can be summarized as follows: Customs suspension is a procedure to “stop goods,” whereas civil litigation is a procedure to “stop the overall infringing conduct and recover damages.” Since Customs suspension targets imported and exported goods, it does not directly stop the sale, advertising, storage, or online listing of counterfeit goods that are already circulating within Japan. To address such activities, rights holders need to combine various measures, such as sending warning letters to sellers, filing takedown requests with e-commerce platforms, applying for provisional injunctions with the court, and initiating civil litigation. In particular, where sales are ongoing and urgent action is required, a provisional injunction may be effective because it can provide injunctive relief more quickly than ordinary litigation.

7. Criminal Proceedings

Criminal proceedings are also important in cases involving malicious sales of counterfeit branded goods or pirated products. The process generally involves investigation by the police, prosecution by the public prosecutor, and criminal punishment imposed by the court. Criminal proceedings can have a strong deterrent effect. However, they are proceedings through which the state imposes punishment, and the rights holder cannot freely control their progress. They are also not designed primarily to recover damages. Therefore, criminal proceedings are usually considered in combination with civil proceedings and Customs suspension in cases involving highly malicious conduct or repeated and continuous sales of counterfeit goods.

8. Strengthened Regulation of Counterfeit Goods Sent from Overseas

A particularly important recent development in Japan is the strengthening of regulations against counterfeit goods sent from overseas to individuals in Japan. Since October 1, 2022, it has been clarified that the act of bringing counterfeit goods into Japan by mail or other means by an overseas business operator constitutes infringement of trademark rights or design rights. As a result, even where goods are purchased from an overseas e-commerce website for personal use, counterfeit goods infringing trademark rights or design rights may be confiscated by Customs. This was an important amendment aimed at addressing the inflow of counterfeit branded goods through cross-border e-commerce, and it has further increased the practical importance of Customs suspension for companies that market their products in Japan.

9. Practical Strategy for Rights Holders

Accordingly, when implementing anti-counterfeiting measures in Japan, it is first essential to ensure that rights such as trademark rights and design rights are properly registered in Japan. On that basis, rights holders should combine appropriate measures depending on the circumstances of the case, including filing an application for Customs suspension, submitting takedown requests to e-commerce platforms, sending warning letters, seeking provisional injunctions, filing civil lawsuits, and submitting criminal complaints.