What Can You Do When Your Trademark is Infringed in Japan?

Articles 25 states that the holder of a registered trademark has exclusive rights to use for designated goods or services, and according to Article 37 of the Japanese Trademark Law, trademark infringement occurs when someone unauthorizedly uses a trademark that is identical or similar to your own. 

 

The consequences of trademark infringement can be severe, potentially leading to financial losses as infringers often profit from selling counterfeit or unauthorized products. Trademark infringement may even cause confusion among consumers and damage a brand’s reputation significantly if consumers associate the products with the infringer’s inferior quality or unethical practices.

 

Hence, this article will offer guidance on the actions that can be taken in case of trademark infringement in Japan, so that trademark owners can find solutions through the legal system and take proactive steps to safeguard their intellectual property rights.

 

 

When faced with trademark infringement in Japan, acting promptly and decisively is crucial. As such, you can consider issuing a warning, resolving it through litigation or arbitration, or requesting an import injunction.

 

When confronted with suspected trademark infringement in Japan, the first step is often to issue a formal warning letter to the alleged infringer. The goal is to resolve the issue amicably without resorting to legal action. 

Ideally, the other party may voluntarily discontinue their infringing activities upon receiving the warning. In some cases, the other party may try to negotiate for a license or even counterargue that there is no infringement. If both parties cannot come to an agreement, then further action may be necessary.

 

Litigation involves filing a lawsuit in a Japanese court to seek legal remedies for trademark infringement. The specific court where you file will depend on the infringer's domicile or the location of the infringement. However, most trademark owners may choose to file the lawsuit in the Tokyo District Court or Osaka District Court since these are the districts where the Intellectual Property Division is established.

Additionally, this process will require you to hire a lawyer. Due to the complexity and specialized focus of infringement lawsuits, it is advisable to consult with a lawyer experienced in intellectual property law to navigate the legal process and build a strong case.

 

An alternative to litigation is arbitration, which involves resolving the dispute with the help of a neutral third party, known as an arbitrator, who reviews the evidence and makes a binding decision. This approach can often be a more efficient and cost-effective process compared to traditional court proceedings. 

 

For more information and resources on arbitration, please refer to the official website of The Japan Intellectual Property Arbitration Center.

 

If the infringing goods are being imported into Japan from another country, you can file a request for an import injunction with the customs authorities. This will prevent the entry of infringing products into the country. 

You may visit the Japanese Customs’ IPR Border Enforcement webpage for more details recording the application process. 

 

 

By exercising your rights in trademark infringement, Japanese law may offer legal remedies such as injunctions, damages, and credit recovery, in addition to potentially imposing criminal penalties on the infringer.

2.1. Injunctions

An injunction is a court order that compels the infringer to stop their infringing activities and prevent further damage to your trademark. This may involve requiring the infringer to halt the production or sale of goods, dispose of infringing products, remove equipment used for infringement, or dispose of related advertisements. It can be requested even if the infringer did not act willfully or negligently. 

 

There are two types of injunctions: preliminary injunctions and permanent injunctions. A preliminary injunction is a temporary order issued before a full trial to prevent immediate harm. A permanent injunction is issued after a trial and prohibits the infringer from continuing the infringing behavior indefinitely. To cease the infringement quickly, it is advisable to file for a preliminary injunction first as you take further action.

 

If you've suffered financial losses due to the infringement, you can seek compensation for damages. This can include lost profits, diminished brand value, and other economic harm. Japanese law presumes that the infringer was negligent (as applied mutatis mutandis under Article 39 of the Trademark Law), making it easier to claim damages. Nevertheless, proving the extent of damages can be challenging, so it's advisable to gather evidence and consult with a legal professional. 

 

For more information about calculating the damages in accordance with Article 38 of the Japanese Trademark Law, you may refer to the JPO website. 

 

In certain cases, you may be able to seek credit recovery if the infringer's actions have damaged your trademark's reputation. This can involve requiring the infringer to publish a corrective advertisement or take other steps to restore your brand's image.

 

In addition to civil remedies, trademark infringement can also be a criminal offense in Japan. The infringer may face criminal penalties, including imprisonment of up to 10 years and fines of up to 10 million yen, according to the Japanese Trademark Law Article 78. The severity of the punishment will depend on the circumstances of the case.

 

 

It's important to note that the specific legal remedies available to you will depend on the individual circumstances of your trademark infringement case. Consulting with a legal professional is highly recommended to understand your options and choose the most appropriate course of action.

 

Additionally, you should also ensure that your trademark rights are valid and enforceable. The infringer may challenge the validity of your trademark or request cancellation of non-use, so it's crucial to have documentation and evidence to support its legitimacy. 

 

 

While it may be complex to navigate trademark infringement issues in Japan, it is still important to exercise your rights and with the help of WPTO, the process will be much simpler. With over 70 years of experience in providing comprehensive IP services, our team of expert attorneys, IP agents, patent engineers, and consultants is dedicated to ensuring the effective protection of your trademark rights in Japan.

 

Our experts, knowledgeable in various fields from electronics to biotech, have successfully secured numerous trademarks. Rely on WPTO's extensive experience and technical proficiency to ensure your intellectual property is well-protected.

 

Don't let the complexities of the Japanese trademark regulations deter you. Contact WPTO today to exercise your rights and safeguard your intellectual property against trademark infringement.

 

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