What is the import suspension system?
The import suspension system is such a system that owners of patent rights, unity model rights, design rights, trademark rights, copyrights, copyrights-related rights or breeder’s rights or those who request an injunction of unfair competition are entitled to make an appeal to the Customs director for taking the procedure of suspending the import of the product and determining whether the product constitutes infringement, in case where the infringing products are to be imported (Article 69-13 of the Customs Law).
Among the intellectual property rights, circuit layout rights are not applicable to the import suspension, however, the owners can provide Customs with information so as to suspend the products at Customs.
* The term “those who request an injunction of unfair competition” corresponds to owners of the right (Article 3 of the Unfair Competition Prevention Law) to suspend inducing confusion, arrogating marks, and imitating configuration (Article 2, paragraph 1, item 1, 2, and 3 of the Unfair Competition Prevention Law).
Requirements for filing import suspension
1. Right holder (including those who posses intellectual property rights or requests an injunction of unfair competition)
Those who are entitled to appeal for import suspension are confined to a right holder, an exclusive licensee, an owner of a right of exclusive use, and an owner of a right of exclusive utilization. Identification of the right holder, the exclusive licensee, and the like is carried out by checking the register.
In addition, the right holder can delegate the procedures for filing to a lawyer or a patent attorney.
2. Request with regard to effective rights
A right registered with Patent Office or the like is considered as being effective (excluding copyright and copyright-related right), therefore, one in process of applying for registration is not applicable to the filing.
Those who request an injunction of unfair competition is expected to ask the Minister of Economy, Trade and Industry for a comment on the product, which is an article or a mark stated in Article 2, paragraph 1, item 1, 2, and 3 of the Unfair Competition Prevention Law, as being widely-recognized in the market, and to submit the written comment to Customs.
3. Fact of infringement
The term “fact of infringement” includes not only a case of infringing products having been imported into Japan, but also a case of those having a potential to be imported into Japan.
4. Proof of fact of infringement
Presentation of the infringing product, catalogs and pictures thereof is required to prove the fact of infringement.
Further, in case where the presentation of the infringing product, the catalogs, or the like does not fulfill the proof, submission of either one of the following documents which demonstrate the infringement is required.
∙ a court-issued decision document or provisional disposition determination
∙ a written determination issued from Patent Office
∙ a written expert opinion prepared by a lawyer or a patent attorney
The written determination is regarded as more important than the written expert opinion.
5. Capability of identifying the infringing product at Customs
Procedures for filing import suspension
When filing the import suspension, application for filing and associated documents in accordance with Customs’ form have to be submitted to an intellectual property examiner in operation department of each custom.
Customs include 9 blocks of jurisdiction as Hakodate, Tokyo, Yokohama, Nagoya, Osaka, Kobe, Moji, Nagasaki, and Okinawa, and the document is required for the number of customs for which import suspension is appealed. However, the documents can be submitted together to one that has jurisdiction over the area in which those who make the appeal live (in the case of corporation, address of the main office), or the area at which the infringing products are arrived.
There is no charge for filing the import suspension.
Additionally, preliminary consultation with Customs is permitted for purposes of quick filing. The preliminary consultation provides a confirmation related to the filing and an explanation of procedures for filling the application.
Documents required for filing import suspension
(Required documents)
1. application for filing (Customs’ form)
Main entries ∙ Customs director who makes the judgment
∙ details of the right related to the filing
(type of the right, registration number and date of registration, duration of the right, scope of the right, original owner of the right, licensee, and the like)
∙ name of the suspected infringing product
∙ basis for identifying as the infringing product
∙ distinguishing point
∙ information materials that become the basis for license fee
∙ desired period of effectiveness of the filing (within 2 years)
∙ prospective importer
2. copy of the register, publication (in the case of copyright or copyright-related right, materials that indicate the occurrence of the right; in the case of those who request an injunction of unfair competition, a written opinion of the Minister of Economy, Trade and Industry)
3.documents, samples, and pictures that proves the fact of infringement
4. calculation materials of Customs clearance charge (only in the case of patent right, unity model right, and design right)
5. letter of proxy (in the case of filing with proxy)
(Reference)
1. decision document, provisional disposition determination, written determination
2. written expert opinion prepared by a lawyer or a patent attorney
3. warning letter
4. relevant documents of dispute
5. relevant documents of parallel import
6. other documents related to the infringing product
Course of import suspension
(1) Determination procedures
Determination procedures are conducted by Customs to determine whether cargoes with import declaration or international postal matters constitute infringement of intellectual property rights.
In case where the determination procedures proceed, the right holder and the importer are informed by letter from the intellectual property examiner or person in charge in Customs. In addition to the notice, the right holder is informed the name and the address of the importer, person of provenance, and producer. Likewise, the importer is informed those of the right holder.
Each of the right holder and the importer submits an opinion and evidences to Customs within a certain period. Based on the opinions and evidences, the intellectual property examiner or person in charge determines whether the cargo or the like constitutes infringement of intellectual property rights. The right holder and the importer are informed the judgment and the reason by letter.
The determination procedures require approximately a month from the start at earliest. It is possibly prolonged when the right holder and the importer have conflicting opinions.
(2) Request for canceling the determination procedures
The importer is entitled to request Customs to cancel the determination procedures after 10 workdays from the following day of the date as postmarked on the notification indicative of the start of the procedures (20 workdays if prolonged. In the case of inquiring of Commissioner of Patents, 10 days from the arrival of the Patent Office’s reply).
In this case, Customs gives order to the importer to deposit a clearance charge as a guarantee for the damage to the right holder when the infringement is confirmed.
Actual performance of import suspension by country (region) of provenance
| |
2006 |
2007 |
2008 |
2009 |
2010 |
Compared
with the
previous
year |
Composition
ratio |
China |
9,440 |
16,116 |
21,529 |
18,893 |
20,996 |
111.1% |
90.4% |
South Korea |
8,720 |
4,527 |
3,287 |
1,480 |
574 |
38.8% |
2.5% |
Hong Kong |
424 |
735 |
660 |
458 |
558 |
121.8% |
2.4% |
The Philippines |
445 |
472 |
308 |
403 |
488 |
121.1% |
2.1% |
Thailand |
343 |
572 |
356 |
392 |
313 |
79.8% |
1.3% |
Taiwan |
20 |
28 |
31 |
35 |
68 |
194.3% |
0.3% |
The United States |
52 |
37 |
62 |
75 |
55 |
73.3% |
0.2% |
Vietnam |
44 |
51 |
32 |
22 |
36 |
163.6% |
0.2% |
Turkey |
35 |
4 |
10 |
2 |
24 |
1200.0% |
0.1% |
Indonesia |
10 |
22 |
16 |
16 |
19 |
118.8% |
0.1% |
Country other than the above |
58 |
97 |
124 |
117 |
102 |
87.2% |
0.4% |
Total |
19,591 |
22,661 |
26,415 |
21,893 |
23,233 |
106.1% |
100% |
Actual performance of import suspension by intellectual property
| |
2006 |
2007 |
2008 |
2009 |
2010 |
Compared
with the
previous
year |
Composition
ratio |
China |
452,216 |
694,299 |
699,533 |
847,650 |
515,573 |
60.8% |
81.7% |
South Korea |
68,727 |
107,950 |
37,836 |
38,711 |
38,724 |
100.0% |
6.1% |
Hong Kong |
384,173 |
165,180 |
109,490 |
76,859 |
30,360 |
39.5% |
4.8% |
Thailand |
27,798 |
20,527 |
21,332 |
6,104 |
16,108 |
263.9% |
2.6% |
The United States |
2,987 |
476 |
2,038 |
4,520 |
7,488 |
165.7% |
1.2% |
Singapore |
572 |
2,733 |
260 |
850 |
7,168 |
843.3% |
1.1% |
The Philippines |
33,187 |
24,531 |
22,177 |
59,840 |
4,980 |
8.3% |
0.8% |
Taiwan |
587 |
1,506 |
37,136 |
4,817 |
3,096 |
64.3% |
0.5% |
Macau |
2 |
7 |
1,433 |
1,257 |
2,625 |
208.8% |
0.4% |
Malaysia |
67 |
58 |
342 |
340 |
2,120 |
623.5% |
0.3% |
Country other than the above |
8,908 |
22,091 |
12,464 |
3,074 |
2,446 |
79.6% |
0.4% |
Total |
979,224 |
1,039,358 |
944,041 |
1,044,022 |
630,688 |
60.4% |
100% |
Export suspension system
The same system as import suspension has been introduced according to the law amendment in 2006.
The intended products are those infringing breeder’s right, those constituting an act under Article 2, paragraph 1, 2, and 3 of the Unfair Competition Prevention Law, and those infringing patent rights, unity model rights, design rights, and trademark rights.
It should be noted that copyrights and copyrights-related rights are not applicable to the export suspension.
Also, circuit layout rights are not applicable to the export suspension, as the import suspension.
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OSAKA 
