When exporting brand goods to Japan, it is important to keep in mind that, in spite of the Japan Customs' import suspension of counterfeits and pirated goods at the border as well as the police's crackdown preventing such illegal goods from being distributed domestically, the reality is that counterfeits and pirated goods are in fact imported to and distributed in Japan by dishonest importers and distributors escaping law enforcement. There seems to be no end to damages resulting from the import and distribution of trademark infringing goods. Trademark protection in Japan first requires registering of a trademark, followed by filing a motion for import suspension.
For the purpose of assisting the Customs and the police in suspending and cracking down on trademark infringing goods, a Japanese public organization, Manufactured Imports and Investment Promotion Organization (hereinafter referred to as MIPRO), as part of their intellectual property rights protection activities, annually publishes a Directory of Foreign Brand Right Holders, which contains updated information on trademarks owned by foreign businesses, and distributes it for free to the Japan Customs and the police.
The MIPRO is currently accepting applications for trademarks, owned by foreign businesses and granted trademark registration in Japan, to be listed in the forthcoming issue of Directory of Foreign Brand Right Holders.
We offer assistance to foreign businesses located outside of Japan and to overseas representatives in publishing their related trademarks in the Directory.
It should be noted, however, that a trademark holder publishing the trademark in the Directory does not replace the procedures for filing an import suspension motion to the Japan Customs. Instead, anticipated effects include that the Directory makes it easy for the Japan Customs and the police to independently detect goods infringing any trademark rights and carry out import suspension and crackdown of the infringing goods. Furthermore, the Directory includes contact addresses, which can be used when any trademark rights infringing goods are identified, and thus another anticipated effect is that, when the Japan Customs and/or the police has identified any trademark rights infringing goods and independently enforces import suspension or crackdown, they can easily communicate the identification results to the contact address of that particular trademark. Moreover, another benefit that can be expected is that the Directory in the form of a booklet provides easy recognition of registered trademarks and easy detection of trademark infringing goods to Customs staff who are in constant exposure to an overwhelming amount of imported goods.
Under these circumstances, publishing trademarks in the Directory of Foreign Brand Right Holders is expected to be useful in facilitating communication between the authorities, such as the Customs and the police, and those involved in related particular trademark rights in Japan including sole import agents, Japanese corporations, and patent firms, as well as in expediting processing import suspension measures taken by Customs and crackdown measures taken by the police.
Please note that MIPRO is a nonprofit organization established by the joint efforts of the private sector and the Ministry of International Trade and Industry (now the Ministry of Economy, Trade and Industry) of Japan. For more information on MIPRO, visit their website at http://www.mipro.or.jp/english/.
1. Trademarks allowable for listing in the Directory
The following are requirements for trademarks to be eligible for listing in the Directory.
- A trademark owned by a foreign business outside Japan must have been granted trademark registration in Japan.
- The trademark to appear in the Directory must be identical to that granted trademark registration by the Japan Patent Office
- Any pending trademarks are disallowed.
- Any trademarks granted trademark registration in Japan are allowable, even if they are not in use.
- In the case that multiple registrations for an identical trademark are granted by the Japan Patent Office, those multiple registration numbers can be listed as an entry in the Directory. On the other hand, different trademark registration numbers are not allowed to be collectively listed as an entry.
- Applications may be declined if the trademark sent to us as electronic data is not identical to the corresponding trademark granted trademark registration in Japan, or the application is already submitted to MIPRO via a different route than from Shobayashi International Patent & Trademark Office.
2. A sample entry in the Directory
a : Brand name
b : Original name
c : Reading described by Japanese katakana characters
d : Written in Japanese katakana characters to represent ABC.
e : Registration No. and classification No.
f : No. 1234567 (Class 25)
g : Domestic rightful person or contact
- Address and phone number of the above-identified "domestic rightful person or contact" are listed at the end of the Directory.
h : Shobayashi International Patent and Trademark Office
i : Name and country of trademark holder
j : ABC Corporation
k : USA
m : Brand mark
n : ABC
- Even if the trademark granted trademark registration is in color, the mark will appear in the Directory in black and white.
3. Application deadline and procedures
Please send applications to us by October 30, 2012.
4. Application procedures & advisory
Please click on the below "Application Form," and fill out the form to be displayed.
- In the case that multiple registrations for an identical trademark are granted by the Japan Patent Office, those multiple registration numbers can be listed as an entry in the Directory. On the other hand, different trademark registration numbers are not allowed to be collectively listed as an entry.
- The electronic data of a registered trademark sent to us should be formatted as a BMP, JPEG, GIF, or AI file. Please send us electronic data of the trademark identical to the one granted trademark registration in Japan. In addition, trademarks appear in the Directory as black and white. If the trademark granted trademark registration in Japan is in color, please send us data of the trademark that has been converted to black and white.
- In the event that a business in Japan such as a Japanese corporation or sole import agent has been serving you and your client to keep an eye on trademark rights infringing goods in Japan, please write the name of the business in the form. Please note, however, that the business should have its address and phone number in Japan.
If you do not have such a local business in Japan, and thus wish to designate Shobayashi International Patent and Trademark Office as your agent, rest assured that you will be contacted by us as soon as the Japan Customs and/or the police contacts us for possible infringement of your client's trademark rights. If this occurs, please forward such information to your client.
5. Application fees
- Application fees paid to MIPRO are JPY 5,000/case.
- Shobayashi's service fees are JPY 15,000/case.
- In cases where data of a trademark is to be converted by Shobayashi, additional fees of JPY 2,500 per trademark are separately added.
- Our debit note will be sent to the representative of the Applicant, along with a booklet of the Directory. Postage for the mailing is included in our service fees in (2) above.
6. Other services we offer
Regarding the procedures for a trademark holder to file a motion to Japan Customs demanding import suspension, we can assist you. If you need to bring about an action for damages, we can also assist you.
In addition to these services, we also provide consultation and accept requests concerning other legal procedures such as trademark registration procedures, trademark applicant name change procedures, and annuity management.
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