Responding to counterfeit products

1. Checking the position and securing evidence

There is no telling when the information in a listing will be taken down. In addition to the product images, one option is to preserve the listing URL, the date and time of the listing, how the seller is identified, the price, the terms of sale, and the history of changes to the listing. Where there are circumstances such that the evidence will be difficult to use unless it is examined in advance, court proceedings for the preservation of evidence are also an option.

Where a sample can be purchased, one option is to match up the goods, the packaging, the labeling, the order record, the payment record and information about the dispatch origin, and to keep them in a state in which the route by which the sample was obtained can be explained. In later procedures it becomes necessary to show that the item was purchased from that particular listing.

On the company's own side, one option is to set out, for each product and model number concerned, how the product was developed, how its configuration has changed over time, when it first went on sale in Japan, and its sales record. This is needed when the time limit described below falls to be considered.

Something else worth checking is whether the goods are counterfeit or genuine goods in authorized distribution. Goods cannot be treated as counterfeit, or as infringing a trademark right, merely because they did not pass through authorized distribution channels. Nor, on the other hand, is it the case that genuine goods can never give rise to infringement. For parallel imports, the matters to be checked include the authority to apply the trademark, the relationship between the right holders in Japan and abroad, and the state of quality control. Where a contractual restriction on sales is in issue, see the guide on disputes over intellectual property licenses.

Care is also needed where the company notifies its business partners or makes a public announcement. Making or circulating a false statement that harms the business reputation of another person in a competitive relationship is unfair competition. The facts that have been checked are kept separate from the legal assessment, and the recipients and content of any notice are decided with care. On this point, see the guide on responding to a warning of intellectual property infringement.

What to do, and in what order

Dealing with the page on which the goods are listed, preventing further imports, and stopping the other side's infringing conduct are three distinct objectives. Once evidence has been secured, the listing page is addressed through a notification to the online marketplace or social media service, further imports through an application to customs, and a claim against the trader through negotiations, provisional disposition proceedings or similar steps. These do not have to be taken in sequence, and in some cases they proceed in parallel. A provisional disposition is a Japanese court procedure for interim relief pending a decision on the merits. Suspension of import at customs is not a procedure that directly achieves the recall of goods already circulating in Japan.

2. Which laws provide protection

Several laws are in issue at the same time where counterfeit goods are concerned.

Trademark rights. The holder of a trademark right has the exclusive right to use the registered trademark in relation to the designated goods or designated services. In addition, use of a trademark similar to the registered trademark in relation to the designated goods or designated services, and use of the registered trademark or a similar trademark in relation to goods or services similar to the designated goods or designated services, are deemed to infringe the trademark right or the exclusive right to use. On the other side of the line, the scope in which a trademark right has no effect is laid down: it does not extend to a trademark that is not used in a manner enabling consumers to recognize the goods or services as relating to the business of a particular person.

Design rights. The holder of a design right has the exclusive right to work the registered design and designs similar to it as a business. Whether a design other than the registered design is similar to it is decided on the basis of the aesthetic impression the designs produce through the eye of the consumer.

Copyright. Whether the design of a product attracts copyright protection is examined by reference to the expression for which protection is sought, separately from whether a design registration exists.

Patent rights. Even where the external appearance differs, the composition or the manufacturing method of the other side's product may fall within the technical scope of the company's patented invention. The absence of imitation in external form does not mean the absence of patent infringement. Nor is patent infringement ruled out merely because the other side says it developed the product independently: whether there is a right based on prior use, or another license to work the invention, is checked separately.

The Unfair Competition Prevention Act. Using an indication of goods or business that is identical or similar to another person's indication of goods or business that is well known among consumers, in a way that causes confusion with that person's goods or business, is unfair competition. So is using, as one's own indication of goods or business, an indication identical or similar to another person's famous indication of goods or business. The first of these requires confusion; the second does not.

Where there is no registered right, the provision on imitation of the configuration of goods, set out next, is what matters most in practice.

3. Imitation of the configuration of goods: requirements and the time limit

Transferring, leasing, displaying for the purpose of transfer or lease, exporting, importing, or providing through a telecommunications line goods that imitate the configuration of another person's goods is unfair competition. The configuration indispensable for ensuring the function of the goods is excluded. The practical value of this provision lies in the fact that no registration is required.

The configuration of goods means the external and internal shape of the goods that consumers can perceive when using them in the ordinary manner of use, together with the patterns, colors, gloss and texture combined with that shape. To imitate means to create goods of a configuration substantially identical to the configuration of another person's goods, in reliance on that configuration. Reliance and substantial identity are the two requirements.

This provision is, however, subject to a time limit. Where three years have passed from the date on which the goods were first sold in Japan, the provisions of the Act on injunctive relief and damages, and its penal provisions, do not apply to transferring or otherwise dealing in goods that imitate the configuration of those goods. In addition, conduct by a person who took transfer of goods imitating the configuration of another person's goods and who, at the time of taking transfer, did not know that the goods were imitations and was not grossly negligent in not knowing, is also exempt when that person transfers or otherwise deals in them. Under this exemption, whether the person knew that the goods were imitations, and the related matters, are assessed as at the time that person took transfer of the goods. Receiving a warning afterwards does not by itself take the sale of goods already received outside the exemption. For goods newly obtained after a warning has been received, what was known at the time of that purchase is checked separately.

A point requiring care here is what the three-year period actually covers. It is an exemption relating to imitation of the configuration of goods; it is not a time limit on all the protection available against counterfeit goods. Even after three years have passed, there is room to examine trademark rights, design rights and copyright separately, along with protection under the Unfair Competition Prevention Act against causing confusion with a well-known indication and against the misuse of a famous indication.

The passage of three years does not, however, move the matter automatically into one of those other categories. Where the configuration of goods is itself to be protected as an indication of goods or business, what has to be examined, alongside the features of the configuration, is whether consumers recognize it as an indication that the goods come from a particular trader. That is examined from the features of the configuration and from how the goods have been sold and advertised. The fact that a product name or brand name is known does not mean that the configuration itself is protected.

Whether goods with changes in points of detail are substantially identical is decided by reference to the content and degree of the changes and their effect on the goods as a whole. The conclusion does not follow from the proposition that changes confined to points of detail automatically amount to imitation.

4. Identifying the manufacturer, seller or importer, and bringing a claim

In deciding who a claim should be brought against, one option is to distinguish between the name under which the goods are listed, the party that sells them under the contract, the dispatch origin, the importer and the manufacturer, and to compare these against transaction records and against the information obtained through the identification procedures described below.

A person whose business interests are infringed, or are at risk of infringement, by unfair competition is entitled to claim that the infringement be stopped or prevented. A person who intentionally or negligently engages in unfair competition and thereby infringes the business interests of another is liable to compensate the loss so caused.

Where a claim is brought against a manufacturer on the ground of imitation of configuration, one option is to establish, in addition to the fact of manufacture, that person's involvement in the transfer and other conduct listed in the provision on imitation of configuration, or the risk of such conduct, and to frame the claim accordingly.

Something else worth checking is whether the company is in a position to bring that claim at all. Selling the goods does not in itself carry the right to bring a claim based on imitation of configuration. In the case law, the persons entitled to bring such a claim have been identified by reference to whether they themselves developed and commercialized the goods, or hold an equivalent distinct and legitimate interest. Equally, it is not the case that nobody other than the developer can ever bring a claim. The manner of involvement in importing and selling the goods, who bore the development costs, and the position under the relevant contracts are set out and considered.

5. Notifying online marketplaces and social media services

Notifying an online marketplace does not mean that a reply will be received within seven days under the Information Distribution Platform Act. The guidelines issued by the Ministry of Internal Affairs and Communications give online marketplaces and similar sites as an example of services that fall outside the scope of designation as large-scale providers. The first step is therefore to check each service's own procedure for notifying intellectual property infringement. For social media and other services that have been designated, on the other hand, where a statutory request is made, the provider is required to give notice of whether it has taken measures, and of related matters, as a general rule within seven days of the day it received the request. That is not a deadline for removal. The limitation of liability in damages under the same Act, and the disclosure of sender information, are separate sets of rules, and for online marketplaces and similar sites each is examined against its own requirements.

(1) Checking where to notify and on what ground

The company checks each marketplace's or social media service's contact point for notifying intellectual property infringement, the types of rights it accepts, and who is eligible to make a notification. The contact point and the documents required may differ according to the type of right.

(2) Setting out the materials and the measures sought

The company prepares materials showing who holds the right, the URLs and goods concerned, and a comparison with its own product, and identifies the measures sought, such as removal of the listing, suspension of the offer for sale, or action against the account.

(3) After the notification

The service may ask for further materials. Whether the listing reappears after removal is also checked. Whether to proceed in parallel with a direct claim against the seller or an application for a provisional disposition is also decided at this stage.

(4) The statutory notice mechanism for designated services

A large-scale specified telecommunications service provider that has been designated by the Minister for Internal Affairs and Communications and has made the statutory notification must establish and publish a method by which a person whose rights are infringed can identify the infringing information and request that measures be taken to prevent its transmission. Where such a request is made, the provider must carry out the necessary investigation without delay into whether rights are being unjustly infringed.

The Act then requires the provider to decide whether to take measures and, within the period specified by Ministry of Internal Affairs and Communications ordinance and no later than fourteen days from the day it received the request, to notify the person who made the request that measures have been taken or, where they have not, that they have not been taken and why. That period is set at seven days by the enforcement regulations under the Act. The fourteen days in the Act is the maximum that the ministerial ordinance is permitted to set.

There are exceptions to the duty to give notice where there is a legitimate reason for not giving it, such as where the same request has been made by the same person in the past. In addition, where the provider decides to hear the views of the sender as part of its investigation, to have the investigation carried out by an infringing information investigation specialist, or where there is another unavoidable reason, it is sufficient for the provider to notify which of those grounds applies within the period, and to notify the outcome without delay once it has made its decision. Where an unavoidable reason applies, the substance of that reason is also to be notified within the period.

This is a deadline for giving notice of whether measures have been taken, not a deadline for removal. Where no measures are taken, notice of that and of the reasons is required. Conversely, the giving of notice does not settle whether a decision not to remove the content was correct. Designation is also made service by service, so within the same company some services may be covered and others not.

6. Suspension of import at customs

For counterfeit goods coming in from abroad, action at customs can be effective.

Goods infringing a patent right, utility model right, design right, trademark right, copyright, neighboring rights, layout-design exploitation right or plant breeder's right are goods that may not be imported. Goods that constitute conduct listed in the Unfair Competition Prevention Act, such as causing confusion with a well-known indication, misuse of a famous indication and imitation of the configuration of goods, excluding conduct falling within the corresponding exemptions, are also goods that may not be imported. Imitation of the configuration of goods is placed in this category.

The range of goods whose import is prohibited and the range of rights on which a right holder can file an application for suspension of import do not coincide entirely. For a layout-design exploitation right, what is available is not an application for suspension of import but the mechanism for providing information for import suspension.

A right holder or other eligible person whose right is covered by the application procedure may apply to the Director-General of Customs, in relation to goods that the applicant considers to infringe its right or business interests, for identification procedures to be carried out, submitting the evidence necessary to make a prima facie showing of the fact of infringement. Where the application is made on the basis of the Unfair Competition Prevention Act, the applicant must ask the Minister of Economy, Trade and Industry for an opinion or a determination on the matters specified, and submit the document setting out that opinion or determination to the Director-General of Customs with whom the application is filed. Where the ground is imitation of the configuration of goods, what is required is a written opinion of the Minister of Economy, Trade and Industry; for goods infringing trade secrets a written determination is required instead, and the applicant does not choose between them. The applicant is also required to submit the full set of documents used in applying for the opinion, and materials enabling genuine goods to be distinguished from suspected infringing goods. Because this procedure takes time, one option is to begin it early in light of the company's business plans.

Where the Director-General of Customs carries out identification procedures in relation to goods, the Director-General must notify the right holder and the person seeking to import the goods that identification procedures are being carried out, and that these persons may submit evidence and state their views, among other matters. Information about the importer is not obtained as soon as an application for suspension of import has been filed. Once identification procedures begin in relation to specific goods, the right holder is notified of the name and address of the importer and of the consignor. Where the producer is apparent from the documents submitted to customs or from the markings on the goods, that information is notified as well. On the other hand, the person seeking to import the goods is also notified of the right holder's details, so the relationship between this procedure and any direct claim against the other side is taken into account. The importer notified is not necessarily the same person as the seller in the listing or the manufacturer.

7. Provisional dispositions for injunctive relief, litigation and damages

Where injunctive relief, destruction of goods or similar measures are sought, the company checks, for each right relied on, who is entitled to bring the claim and what measures are available, and identifies the goods, the conduct and the stock concerned.

On an application for a provisional remedy order, the applicant must set out the right or legal relationship to be preserved and the necessity of preservation, and make a prima facie showing of each. For an order provisionally determining the status of a party, which is what is sought when sales are to be stopped, it must be necessary in order to avoid substantial loss or imminent danger in relation to a disputed legal relationship. As a general rule a hearing date at which the other party can attend is also required, and security may be required as well.

As to damages under the Unfair Competition Prevention Act, there is a provision under which, where the infringer is gaining a profit from the infringing act, the amount of that profit is presumed to be the amount of the loss. The Trademark Act and the Design Act contain corresponding provisions. This is a presumption as to the amount of the loss; it does not presume that unfair competition is made out, or that there was intent or negligence. Nor can the infringer's sales revenue simply be claimed as such: the amount of the profit has to be calculated, and whether there are circumstances rebutting the presumption has to be examined.

It is also possible to claim, as the amount of the loss, an amount equivalent to the money that should be received for the use of the configuration of the goods. There is a further method of calculation based on the quantity of goods transferred or otherwise dealt in.

8. How we assist

• We review the documents evidencing the company's rights and its development and sales records, and set out the laws on which protection can be based and how a claim can be framed

• We compare the sample goods, the listing information and the transaction records, and develop an approach to preserving evidence

• We prepare and handle notices to the other side and negotiations, and notifications of rights infringement to online marketplaces and social media services

• We file applications for suspension of import with customs and submit materials and views in the identification procedures

• We handle provisional dispositions for injunctive relief and litigation, and set out the terms of any agreement on stopping sales, dealing with stock and damages

Key legislation and official sources

English translations of legislation are provided for reference. The Japanese texts are authoritative.

Where it appears	Legislation	Source type
Causing confusion with a well-known indication of goods or business; misuse of a famous indication; imitation of the configuration of goods and its definitions; the exemption after three years and for a transferee without knowledge; false statements harming business reputation	Unfair Competition Prevention Act（不正競争防止法）	Japanese legislation
Injunctive relief and destruction of goods; damages; presumption of the amount of loss; amount equivalent to a license fee; calculation based on quantity	Unfair Competition Prevention Act（不正競争防止法）	Japanese legislation
Exclusive right to use a registered trademark; acts deemed to infringe; the scope in which a trademark right has no effect; importing as including causing goods to be brought into Japan from abroad; presumption of the amount of loss	Trademark Act（商標法）	Japanese legislation
Exclusive right to work a registered design and similar designs; the test of similarity based on the aesthetic impression produced through the eye of the consumer; the definition of working a design; presumption of the amount of loss	Design Act（意匠法）	Japanese legislation
Copyright in the design of a product	Copyright Act（著作権法）	Japanese legislation
Technical scope of a patented invention; right based on prior use	Patent Act（特許法）	Japanese legislation
Goods that may not be imported; applications for suspension of import; provision of information for import suspension; identification procedures and the notices given in them; the opinion or determination of the Minister of Economy, Trade and Industry	Customs Act（関税法）	Japanese legislation
The notice mechanism for designated large-scale providers; limitation of liability in damages; disclosure of sender information	Information Distribution Platform Act（特定電気通信による情報の流通によって発生する権利侵害等への対処に関する法律）	Japanese legislation
Court proceedings for the preservation of evidence	Code of Civil Procedure（民事訴訟法）	Japanese legislation
Provisional remedy orders, the prima facie showing required, orders provisionally determining a party's status, hearing dates and security	Civil Provisional Remedies Act（民事保全法）	Japanese legislation

Legal information reviewed: 2026-09-18

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This article is provided for general informational purposes only and does not constitute legal advice on any specific matter. Please consult us regarding your specific situation. The content is based on the laws and regulations in effect as of the date of the last update.