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In Case Your IPR is Infringed
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What is Infringement?
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When You Become Aware of Counterfeits or Pirated Goods of Your Products |
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| When you become aware of counterfeits or pirated products, please first consider the following. |
(1) The extent to which you can investigate the origin of the counterfeits or pirated goods and what the area of distribution
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It is important to know where counterfeits or pirated goods are from and the area of distribution area in order to know against whom countermeasures for the counterfeits or pirated goods should be taken and to determine what measures to take.
In particular, if you find counterfeits or pirated goods in a store, you need to trace the origins of the products to the distributors and to the manufacturer because prevention of production is the most effective measure to prevent damage from counterfeits and pirated goods. In many cases, counterfeits and pirated goods are found in retailers, trade shows/exhibitions, and advertisements in newspapers/magazines, and you need to pay attention to them. A research company can be used if it is too much of a task for your company alone to investigate.
In the event that counterfeits and pirated goods are imported, a research company or law office can be used to provide you with assistance in the country in question. Additionally, exchanging information in cooperation with people in the same trade is also effective.
As for imports, there is a system to notify the intellectual property
right holder of the names of the importer and manufacturers in the identification
procedures.
See Suspension at Customs for additional information. |
(2) Whether you can obtain the actual counterfeits or pirated goods
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It is important to obtain the actual counterfeits or pirated goods to be able to judge whether or not there is an infringement of a right, the appropriate countermeasures, and the evidence for a lawsuit, etc.
Generally, you purchase the actual counterfeits from a store and you need to keep the evidence of the fact of the sale for you to be able to use it as evidence in a subsequent lawsuit. In particular, it would be best to keep a receipt that shows the product, purchase date, amount paid, and the name of the shop where you made the purchase. Also, you need to keep advertisements, leaflets or brochures and print out the advertisement that appeared on the Internet homepage.
In the event that counterfeits are not obtainable, taking photos or videos of such counterfeits is an option.
In the event that there is a circumstance in which it becomes difficult to obtain counterfeits, such as in the case that a manufacturer stops the production of the counterfeits thereof, there is a system called "preservation of evidence" for the preparation of a lawsuit by which a court requests the manufacturer to submit the counterfeits. |
(3) The specific kind of intellectual property rights you have in connection with your company's products
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It is important to know the specific kind of intellectual property rights you have to protect your company's products against counterfeits and pirated goods. If you have any industrial property rights (patent rights, utility model rights, design rights, trademark rights), copyrights/neighboring rights, rights of layout-designs of integrated circuits or breeder's rights, you may want to use such rights to prevent the manufacture, sale and import of counterfeits or pirated goods. Among these rights, all rights other than copyrights/neighboring rights need to be registered.
Even if you do not have these rights, there are cases in which you can exercise your rights under the Unfair Competition Prevention Law to prevent the sale and import of counterfeits, so you should also review the possibility of exercising your rights under the Unfair Competition Prevention Law.
See To Secure Beforehand Intellectual Property Right for further information. |
(4) Whether counterfeits or pirated goods infringe intellectual property rights of your company's products or not
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The judgement of whether counterfeits or pirated goods infringe the intellectual property rights of your company's products or not is based upon different determining factors and processes depending on the kind of rights held by your company.
Patent Rights
- As for patent rights, business use of the invention included in the scope of claims set out in the application for patents constitutes a patent infringement. Even if it does not fall under all of the scope of claims, it also constitutes a patent infringement if it is considered to substantially fall thereunder.
See What is Patent Infringement? for further information.
Utility Model Rights
- As for utility model rights, the commercial exploitation of the device included in the scope of claims set out in the specification submitted in the application for utility model registration constitutes a utility model right infringement. In order to exercise utility model rights against infringement, prior warning attached with the report of a technical opinion as to registrability of the utility model, issued by the Japan Patent Office after the request to do so has been made, is required (Article 29-2 of the Utility Model Law).
Trademark Rights
- Goods and services for which a trademark is used are designated when registering a trademark right, and use of such trademark or a trademark that is similar thereto for any goods or services that are identical with or similar to such designated goods or services constitutes a trademark infringement. Similarity between trademarks is judged by whether it is likely to cause confusion among traders and general purchasers with goods and services of the owner of the trademark on the basis of appearance (how the trademark looks), sound (how it is read) and concept (general impression).
See What is Trademark Infringement? for further information.
Design Rights
- Use of a design that is identical or similar to a registered design constitutes a Design Right Infringement. In many cases, the judgment of the similarity of designs is based upon a visual impression.
See What is Design Infringement? for further information.
Copyrights
- As for copyrights, reproduction or modification of a copyrighted work without the authorization by the copyright owner constitutes copyright infringement. (However, if the expression of a new work is completely different, it does not constitute a copyright infringement.)
See What is Copyright Infringement? for further information.
The Unfair Competition Prevention Law
- One case of violation of the Unfair Competition Prevention Law is that: (i) an indication, such as the name, trademark or container of a good, is widely known to the consumers of the good as the indication of the good or business of a specific party; (ii) the indication of counterfeits is similar to that of the widely-known indication; and (iii) the origin of the goods and the counterfeits are likely to be conceived to be of the same origin.
Another case is that (i) the indication such as the name, trademark or container of goods is a famous indication by a specific party for and among consumers, etc. (and it needs to be more widely known than those mentioned in (i) of the preceding paragraph) and (ii) the indication of the counterfeits is similar to that of the famous indication.
There is also the case of slavish imitation(identical or substantially identical counterfeit) of some goods. In such a case, however, slavish imitation 3 years after the goods are first sold and slavish imitation of the same kind of goods in a normally-used configuration are excluded.
See What is Violation of Unfair Competition Prevention Law?
for further information.
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(5) Where can you ask for consultation?
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There are organizations that have a consulting service office for counterfeits and pirated goods and websites provided by organizations that do not have such offices but provide information concerning countermeasures against IPR infringement, such as Q&A. Consulting with patent attorneys or lawyers is also effective.
See Consultation Services for further information. |
(6) What measures can you take against counterfeits and pirated goods?
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If, after reviewing (3) and (4), it is concluded that counterfeits and pirated goods may be infringing your IPR, there are some options. In particular, the options to negotiate with the other party, use alternative dispute resolution procedures outside of court including mediation and arbitration, investigate court procedures or request investigative authorities to proceed with criminal prosecution.
See Actions and remedy procedures for damages due to counterfeits or piracies for further information. |
Preventive action to protect your company's products from counterfeits and pirated goods |
As discussed above, you will take preventive measures against the production and sale of counterfeits or pirated goods after damages have occurred due to counterfeits or pirated goods. However, it is important to take precautionary measures to prevent you from suffering such damages in the first place. In order not to suffer damages, there are a few points which you should be careful about. These are securing intellectual property rights beforehand, making sure of information management and scheming devices to distinguish counterfeits, etc.
See Preventing Damages from Counterfeit
for additional information. |
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