1

Desirable Border-Enforcement System Against
Intellectual Property Infringing Goods

This research was based mainly on the following two processes. Firstly, the Committee on Border
Measures Against Counterfeits Through Application of the Unfair Competition Prevention discussed a guidefor determining violation of the Unfair Competition Prevention Law for import suspension. The guide will be
used as a reference in the preparation of the written opinion of the Minister of Economy, Trade and Industry
as is required upon seeking import suspension. It will also be used for the provision of the opinion of the
Minister of Economy, Trade and Industry when such an opinion is sought in the infringement-determination
procedure in the system of border enforcement against goods that constitute the acts referred to in Article
2(1)(i) to (iii) of the Unfair Competition Prevention Law, which was introduced by the amendment of the
Customs Tariff Law on March 1, 2006. Secondly, the Working Group for Studying Japan’s Desirable
Border-Enforcement System Against IP Infringing Goods was set up to gather information to contribute to thestudy of Japan’s desirable border-enforcement system. This was conducted by identifying the current status
and challenges of Japan’s border-enforcement system and investigating overseas border-enforcement systems
and frameworks. Furthermore, discussions were held to make contributions to upgrading the Japaneseborder-enforcement system against intellectual property infringing goods.

Ⅰ Committee on Border Measures
Against Counterfeits ThroughApplicationoftheUnfairCompetition Prevention Law
The Committee on Border Measures Against
Counterfeits Through Application of the Unfair
Competition Prevention compiled a guide fordetermining violation of the Unfair Competition
Prevention Law for import suspension. The
guide will be used as a reference in the
preparation of the written opinion of the
Minister of Economy, Trade and Industry as isrequired upon seeking import suspension, theinfringement-determination procedure of Customs,
and the provision of the opinion of the Ministerof Economy, Trade and Industry when such an
opinion is sought by the Director-General of
Customs in the infringement-determination
procedure, in the system of border enforcement
against goods that constitute the acts referred toin Article 2(1)(i) to (iii) of the Unfair
Competition Prevention Law. The committee
created the guide by investigating and analyzing
past court cases related to the Unfair
Competition Prevention Law, particularly thosethat were likely to become subject to importsuspension, extracting the requirements andideas for determining the acts referred to in
Article 2(1)(i) to (iii) of the Unfair Competition
Prevention Law from these cases, and holding
concrete discussions on each of them.

IIP Bulletin 2006

1

Border-enforcement system against
goods that violate the Unfair Competition
Prevention Law

Unlike registration-based intellectual property(IP) such as patents, there is no certification ofright that is equivalent to a registration
certificate in the border-enforcement systemagainst goods that violate the Unfair Competition
Prevention Law. Therefore, when seeking
import suspension from Customs, one mustfurnish Customs with the opinion of the Ministerof Economy, Trade and Industry on the following
matters to prove his/her rights: i) the fact thatthe indication of goods or business pertaining to
the party holding the right to seek importsuspension is widely recognized by consumers
nationwide (Article 2(1)(i) of the Unfair
Competition Prevention Law); ii) the fact that theindication of goods or business pertaining to theparty holding the right to seek import suspension
is famous (Article 2(1)(ii) of the Unfair
Competition Prevention Law); and/or iii) the factthat the configuration of the goods pertaining to
the party holding the right to seek importsuspension is not indispensable for ensuring thefunction of the goods, and three years have yet toelapse from the date on which the goods were firstsold in Japan (Article 2(1)(iii) of the Unfair
Competition Prevention Law). Therefore, theparty seeking import suspension needs to request
and acquire from the Minister of Economy, Tradeand Industry the written opinion before seeking● 2 ●import suspension from Customs.
Incidentally, there is a system in which the
Director-General of Customs can seek theopinion of the Japan Patent Office Commissioner
in the procedure for determination on patent,utility model, or design right. Therefore, anequivalent procedure was introduced to enable
the Director-General of Customs to refer to theopinion of the Minister of Economy, Trade andIndustry on whether or not certain goods
constitute any of the acts listed in Article 2(1)(i)to (iii) of the Unfair Competition Prevention Law,in the infringement-determination procedurewhen the application for import suspension is
accepted by Customs and the allegedly infringing
goods are prevented from entering Japan.
2

Goods violating the Unfair Competition
Prevention Law subject to importsuspension(1) Goods that constitute acts of Article
2(1)(i) (acts that cause confusion withwell-known indications of goods orbusiness) or Article 2(1)(ii) (misappropriationof famous indications of goods orbusiness) of the Unfair Competition
Prevention Law(i) Another party’s indication of goods orbusiness
The committee identified the following asimportant factors and discussed them: i) anotherparty; ii) goods; iii) business; and iv) indication of
goods or business.
(ii) Widely recognized among consumers(well-known status)
The committee identified the following asimportant factors and discussed them: i)consumers; ii) wide recognition; iii) areas
where the indication is well-known; and iv)
determination of well-known status.
(iii) Identical or similar to an indication of
goods or business
The committee discussed the following
aspects: i) in the concept of “similar” in cases
including the Morimitsu case (Tokyo District
Court judgment of August 3, 1981) and in theconcept of similarity of trademarks under the
Trademark Law, identicalness or similarity isdetermined comprehensively by independently
observing the “sound,” “concept,” and“appearance”; ii) in the Manpower case (Supreme
Court judgment of October 7, 1983), “similarity”
was determined based on similarity as a whole;and iii) in the Vogue case (Tokyo District Court

judgment of July 2, 2004), the approach taken tocompare the indications of the plaintiff and thedefendant was to extract the substantial part ofthe indication by eliminating the parts that are“quality indication,” the “article to the noun,”“common noun,” and “commonly-used trademark,”
which were the differing parts of the two
indications.
(iv) Causing confusion with another party’s
goods or business (confusion)
The committee identified the following asimportant factors and discussed them: i) threat of
causing confusion; and ii) confusion in the narrow
sense and in the broad sense.
(v) Exclusion from application (Article 19(1)(i)to (iv) of the law)
The committee identified the following asimportant factors and discussed them: i) common
name for goods or services; ii) goods made fromgrapes or using grapes as an ingredient; iii)
indication of goods or business that is commonlyused for identical or similar goods or business; iv)
using in a normally used manner; v) using one’s
own name without wrongful purpose; vi) using
another party’s indication of goods or businessbefore such indication became well-known or
famous; and vii) using an indication that does notcorrespond to an indication of goods or business.
(vi) Another party’s famous indication of goods
or business
The committee identified the following asimportant factors and discussed them: i)“famous;” ii) fame “nationwide”; and iii) whether
or not the act corresponds to dilution or
free-riding.
(2) Goods that constitute acts of Article
2(1)(iii) (imitation of the configuration of
goods)(i) Purpose of legislation
The provision of Article 2(1)(iii) of the Unfair
Competition Prevention Law was introduced
upon a sweeping revision of the law in 1993.
Although it is not expressed in the language ofthe provision, the prevalent theory and court
judgments construe it as a provision for“protecting the interests of the prior developer,”considering the purpose and the course ofdevelopment of the legislation.
(ii) Claims and evidence of the plaintiff
The committee identified the following asimportant factors and discussed them: i)“configuration of the goods”; ii) “another party”
in Article 2(1)(iii) of the Unfair Competition
Prevention Law; iii) exclusion of configuration● 3 ●IIP Bulletin 2006

that is indispensable for ensuring the function of
the goods; iv) the term of protection; v) the
defendant’s act of assignment, etc.; vi) imitation;and vii) infringement or a threat of infringement of
the plaintiff’s business interests.
(iii) Claims and evidence of the defendant
The committee identified the following asimportant factors and discussed them: i) denialthat the configuration of the goods is identical tothe configuration of the plaintiff ’s goods; ii)
exclusion of a configuration that is indispensablefor ensuring the function of the goods; iii) denialof the defendant’s act of assigning, delivering,
displaying for the purpose of assignment ordelivery, exporting, or importing the goods; iv)
denial of imitation; v) defense that three years
have elapsed from the day the goods were firstsold in Japan; vi) denial of infringement or athreat of infringement of the plaintiff’s businessinterests; and vii) reasons for exclusion fromapplication, such as acquisition in good faith andabsent gross negligence, or parallel import of thegenuine goods.
3

Acts in Article 2(1)(i) (acts that cause
confusion with well-known indicationsof goods or business), Article 2(1)(ii)(misappropriation of famous indicationsof goods or business), and Article
2(1)(iii) (imitation of the configuration of
goods) of the Unfair Competition
Prevention Law that serve as the basis
for import prohibition(1) Acts in Article 2(1)(i) (acts that cause
confusion with well-known indicationsof goods or business)(i) Related provisions
Related provisions are: i) Article 2(1)(i) (actsthat cause confusion with well-known indicationsof goods or business); ii) Article 2(2) (definition: atrademark); iii) Article 2(3) (definition: a mark);iv) Article 3(1) (right to seek suspension of an actof unfair competition); v) Article 19(1)(i)(exclusion from application: common names andcommonly used indications); vi) Article 19(1)(ii)(exclusion from application: one’s own name); andvii) Article 19(1)(iii) (exclusion from application:use before the indication became well-known).
(ii) Type of acts
If an act creates confusion with anotherparty’s goods or business by importing goods thatuse an indication that is well-known among
consumers as said party’s indication of goods orbusiness, it would constitute an act of unfair

IIP Bulletin 2006

competition (acts that cause confusion withwell-known indications of goods or business).
Such acts are stipulated so as to protect
consumers from confusion as to the source ofgoods or business. However, as long as the threatof confusion exists, these acts also have anindirect effect of prohibiting free-riding on
another party’s achievement of making theindication of goods or business widely known toconsumers through marketing efforts and capital
investment (acquisition of a well-known status).
(2) Acts in Article 2(1)(ii) (misappropriationof famous indications of goods orbusiness) of the Unfair Competition
Prevention Law(i) Related provisions
Related provisions are: i) Article 2(1)(ii)(misappropriation of famous indications of goods
or business); ii) Article 2(2) (definition: atrademark); iii) Article 2(3) (definition: a mark);iv) Article 3(1) (right to seek suspension of an actof unfair competition); v) Article 19(1)(i)(exclusion from application: common names andcommonly used indications); vi) Article 19(1)(ii)(exclusion from application: one’s own name); andvii) Article 19(1)(iii) (exclusion from application:use before the indication became well-known).
(ii) Type of acts
If an act of importing goods for which anotherparty’s famous indication of goods or business iswrongfully used as one’s own indication, it
constitutes an act of unfair competition(misappropriation of famous indications of goods
or business).
The import of goods using a widely
recognized indication of goods also constitutes anact of unfair competition in the case of acts of
causing confusion. However, such an act does notconstitute an act of unfair competition if it does
not cause misunderstanding or confusion that the
goods are identical to the genuine goods. In thisrespect, in the case of an unauthorized use of afamous indication of goods or business, there is arisk that the unauthorized user is free-riding on
the social reputation built by the brand, anddiluting the value as well as polluting the social
reputation of the brand, even if the use does notcause misunderstanding or confusion.
Therefore, misappropriation of famous
indications of goods or business is stipulated as
an act of unfair competition without requiring thepresence of confusion.

● 4 ●

(3)

Acts in Article 2(1)(iii) (imitation of theconfiguration of goods) of the Unfair
Competition Prevention Law(i) Related provisions
Related provisions are: i) Article 2(1)(iii)(imitation of the configuration of goods); ii)
Article 2(4) (definition: configuration of goods);iii) Article 2(5) (definition: imitation); iv) Article
3(1) (right to seek suspension of an act of unfair
competition); v) Article 19(1)(v)(a) (exclusionfrom application: goods for which three years
have elapsed from the day they were first sold inJapan); and vi) Article 19(1)(v)(b) (exclusion fromapplication: acquisition in good faith and absent
gross negligence).
(ii) Type of acts
Acts of importing goods that imitate theconfiguration of another party’s goods constituteacts of unfair competition.
The basic idea of stipulating these acts as
acts of unfair competition is to restrain imitation
for three years as a period for collecting theconsiderable amount of costs that the priordeveloper of the goods had paid in devising acharacteristic configuration of goods, conducting
trial production, manufacturing the goods,
advertising the goods, and placing them on themarket—in short, it is a protection of the priordeveloper’s interests.
Counterfeits are regulated by the provisionon acts that cause confusion with well-known
indications and that on misappropriation of
famous indications. However, these provisions
premise that the indication of the genuine goods
has been spread among consumers and is madewell-known or famous, so they do not provide
sufficient protection for goods that have shortlife cycles, such as clothes, and goods that are inlarge variety, such as toys, which sometimes
disappear from the market before the indicationof the goods become well-known or famous,
making it difficult to collect the costs required
for the manufacture and sales when counterfeits
appear. Therefore, there is significance inregulating acts of assigning goods that imitate
the configuration of another party’s goods as actsof unfair competition for a specific period (three
years) after the goods were first sold,irrespective of whether the indication has
become well-known or famous.

4

Relationship between the Minister of
Economy, Trade and Industry and Each
Requirement(1) Written opinion of the Minister of
Economy Trade and Industry to be
furnished when a party holding the rightto seek suspension of an act of unfair
competition seeks a determination
procedure from the Director-General of
Customs (Article 21-2 of the Customs
Tariff Law)
The committee will extract 16 requirementsthat are considered to be important for
determining whether goods violate the Unfair
Competition Prevention Law for suspending
import. When preparing a written opinion, theMinister of Economy, Trade and Industry will
determine the following based on those of the 16
requirements that he/she considers necessary: i)
the indication of goods or business pertaining to
the party holding the right to seek suspension ofan act of unfair competition is widely recognizedamong consumers nationwide (Article 2(1)(i) of
the Unfair Competition Prevention Law); ii) theindication of goods or business pertaining to theparty holding the right to seek suspension of an actof unfair competition is famous (Article 2(1)(ii) of
the Unfair Competition Prevention Law); and (iii)the configuration of the goods pertaining to theparty holding the right to seek suspension of an actof unfair competition is not indispensable for
ensuring the function of the goods, and three years
have yet to elapse from the date on which thegoods were first sold in Japan (Article 2(1)(iii) of
the Unfair Competition Prevention Law).
(2) Opinion of the Minister of Economy,
Trade and Industry sought by the
Director-General of Customs, as areference material, on whether or notcertain goods are infringing goods in theinfringement-determination
procedure(Article 21-4-2 of the Customs Tariff Law)
When preparing an opinion, the Minister of
Economy, Trade and Industry will determine thefollowing based on those of the 16 requirementsthat are necessary: i) whether or not theimported goods correspond to goods that
constitute the acts referred to in Article 2(1)(i) of
the Unfair Competition Prevention Law; ii)
whether or not the imported goods correspond togoods that constitute the acts referred to in
Article 2(1)(ii) of the Unfair Competition
Prevention Law; and iii) whether or not the● 5 ●IIP Bulletin 2006

imported goods correspond to goods that
constitute the acts referred to in Article 2(1)(iii)of the Unfair Competition Prevention Law.

15(1) Relationships between Japan’s bordermeasures and the Agreement Establishing
the World Trade Organization (WTO
Agreement) and other agreements(i) Organizations concerning border measures
stipulated in the TRIPS Agreement and thecorresponding organizations in Japan andother countries

Guide for determining violation of the
Unfair Competition Prevention Law for
import suspension

The committee compiled a guide fordetermining violation of the Unfair Competition
Prevention Law for import suspension, based on
its examination and discussions. The guide will be
used as a reference in the following procedures
between the Ministry of Economy, Trade andIndustry and Customs: i) the preparation of thewritten opinion of the Minister of Economy, Tradeand Industry; ii) the acceptance of an application
for import suspension; iii) the infringementdetermination procedure of Customs; and iv) the
provision of the opinion of the Minister of
Economy, Trade and Industry when such an
opinion is sought by the Director-General of
Customs.

Ⅱ Working Group for Studying
Japan’sDesirable
BorderEnforcement System against IP
Infringing Goods
The Working Group for Studying Japan’s
Desirable Border-Enforcement System against IP
Infringing Goods gained an understanding of thecurrent status and challenges of Japan’sborder-enforcement system against IP infringing
goods, which has been continuously developed
through revisions of the Customs Tariff Law andincreasing its effectiveness in recent years, inlight of the industrial views, viewpoints oflitigation practice, and international agreements
including GATT and the TRIPS Agreement.
Based on this, the working group investigated andorganized information on the current status of theframeworks of border-enforcement systems
against IP infringing goods in foreign countries.
In this way, it gathered information that willcontribute to future study of Japan’s desirable
border-enforcement system against IP infringing
goods.

IIP Bulletin 2006

Relationships between Japan’s borderenforcement system and international
agreements

TRIPS Agreement
Japan
EU
USA
Authorities having
Customs
Customs International
the power to decide (final decisionTradesuspension of release made by
Commission
by customs
Director-General(ITC)
authorities
of Customs(Article 51:[capable ofcompetent
seeking an
authorities)
opinion])Organization
Customs
Court
ITC
implementing theproceedings leading
to a decision on the
merits of the case
(Article 55: duly
empoweredauthority)
Execution authority Customs
Customs Customs(Article 51: customs
authorities)(ii) Desirable points to be reviewed in terms ofcompliance with WTO procedures
At the time of conclusion of the TRIPS
Agreement, the systems for seeking importsuspension existed only for copyright andtrademark in Japan, so compliance had beenachieved in the absence of the systems forseeking import suspension based on patents anddesign rights or based on the Unfair Competition
Prevention Law. Recently, however, there has
been an industrial demand that the following
matters be reviewed regarding appropriate
handling of IP infringing goods upon export andimport from the viewpoint of achieving
compliance of these systems for seeking importsuspension and the TRIPS Agreement: i) making
of decisions by the Director-General of Customs
to accept applications for import suspension; ii)
granting of temporary relief by the DirectorGeneralof Customs; iii)
infringementdetermination procedure by the Director-Generalof Customs; iv) evidence-collection procedure; v)
defense by the alleged infringer; and vi) status of● 6 ●the applicant of import suspension.
(2) Border-enforcement system against IP
infringing imported goods stipulated in
Article 21 of the Customs Tariff Law andits compliance with the WTO Agreement
The compliance of the border-enforcement
system against goods that infringe IP rights
including patents and registered trademarks,
which is stipulated in Article 21 onward of theJapanese Customs Tariff Law and related
administrative regulations, with the relevant
treaties in the Annexes of the WTO Agreement
was examined, and the following were found:(i) In the Japanese border-enforcement system,
suspension of release and decision on the meritsof the case are integrated, and this differs fromthe design of the system assumed by the TRIPS
Agreement.
(ii) As a result of such peculiarity, there areprocedural differences between the borderenforcement system and the IP infringement
litigation, and the system is considerably
disadvantageous for imported goods. Therefore,
the system does not comply with Article III:4 ofthe General Agreement on Tariffs and Trade(GATT), and cannot be justified by Article XX:(d)of GATT. It is also very likely that the systemdoes not comply with the general principles of IP
right enforcement stipulated in Part III, Section 1of the TRIPS Agreement.
(iii) However, if Japan’s border-enforcement
system is regarded as a measure for suspensionof release, generally high compliance could beachieved with Part III, Section 4 of the TRIPS
Agreement.
(iv) A number of notable incompliant points could
be found with respect to Part III, Section 2 of the
TRIPS Agreement. It cannot be denied that there
are deficiencies in the border-enforcement systemagainst the related provisions of the TRIPS
Agreement, particularly in terms of theprocedural rules concerning the offer andhandling of information and evidence.
2

Challenges of Japan’s border-enforcement
system and prospects for a desirable
system(1) Evaluation of the current borderenforcement system and challenges for
future discussion(i) Evaluationof
thecurrent
borderenforcement system
Considering that other parts of Asia areinundated with counterfeits and pirated copies
produced by unidentified parties, Japan’s current
border-enforcement system is an effective bordermeasureagainstimmediately
obviouscounterfeits and pirated copies (for which it isdifficult for importers to defend). It is hoped thatthe system will be further improved into a moreaccessible system for right holders in the future.
(ii) Challenges for future discussioni) It is necessary to discuss establishment ofa function to stop infringing goods at the borderby way of hearing the arguments of both parties
under due process and promptly determining theinfringement status and the validity of the right,
through introduction of another system (e.g., useof courts) apart from the current borderenforcement system.
ii) To improve the current system, thefollowing need to be discussed while also bearing
in mind introduction of the system referred to ini): (a) reviewing the customs-release system; (b)increasing the types of IP rights subject to borderenforcement; (c) and reducing the burden on theright holders.
(iii) Conclusion
Apart from the current border-enforcement
system against immediately obvious counterfeits
and pirated copies, it is essential to introduce
another system for stopping infringing goods atthe border by way of determining the IP right
infringement status. Such a system should bedesigned so as not to appear unfair for importers,
while consideration should be given to using theexisting organizations as much as possible.
(2) Needs and the feasibility of introducing
an ITC-style quasi-judicial system: froma practical viewpoint(i) Introduction
The current border-enforcement systemagainst patent-infringing products determines theinfringement status by premising the validity ofthe patent right, so it differs from the court’s
process in a patent infringement case. Therefore,
the procedural protection for importers is
insufficient, and when a retaliation measure istaken in the country of the import supplier in linewith the use of the system, the use of the system
involves a lot of difficulties.
It is impossible in terms of human andmaterial resources to have Customs also
determine the validity of patent right under thecurrent border-enforcement system, so it would
be possible to establish an ITC-style quasijudicial organization that will take the role of● 7 ●IIP Bulletin 2006

determining the patent validity. However,considering the current fiscal conditions, it would
not be possible to enact such a system into law
unless the need for the system becomes veryclear.
In view of this point, the need and thefeasibility of introducing an ITC-style quasijudicial system were examined.
(ii) Problems in the current system and the
direction of improvementi) One of the problems in the current systemis that the system may appear to be unfair in theeyes of not only importers, but also overseas
manufacturers producing the imported goods,
since it is a common concept in the world that
determination of patent validity is indispensablefor determining the patent infringement statusunder the current law. Therefore, as exemplified
by the dispute between Matsushita ElectricIndustrial Co. Ltd. and LG Electronics Inc.
concerning plasma display panel patents, there isa risk that the system would give rise to a politicalproblem such as an overseas manufacturer seeking
a retaliation measure in its own country against apatentee who sought import suspension.
ii) A possible direction of improvement
would be to provide the importers a means for
disputing over patent validity under the current
system, but since it would impose an excessive
burden on the human and material resources tohave Customs even determine the patent validity,
this would not be a reasonable approach. It isnecessary to consider determination of patentvalidity by a quasi-judicial organization, forexample, as being similar to the ITC of the UnitedStates.
(iii) Limits of judicial relief against patentinfringing goodsi) The Japanese legal principle does notrecognize extraterritorial application of law,according to the Supreme Court judgment in thecard reader case. Therefore, in the dispute
between Fujitsu Limited and Samsung SDI Co.,
Ltd. concerning plasma display panel patents, forinstance, it was possible to file suits in the UnitedStates not only against Samsung America but also
against Samsung SDI in South Korea, but suits
could only be filed with Japanese courts against
Samsung Japan.
ii) If provisions on extraterritorial application
were to be established through legislation,
Japanese patent holders would be able to filesuits with Japanese courts against overseas
manufacturers
onallegationsofpatentinfringement, based on the new law that allows

IIP Bulletin 2006

extraterritorial application. However, even if apatent holder were to win in such a suit, in orderto suspend the overseas manufacturer’s
production and export, he/she must take theprocedure for recognition and enforcement of theJapanese court’s final judgment in the country of
the overseas manufacturer. In such a case, there
is a strong possibility that the Japanese court’s
judgment would not be recognized and enforcedon the basis that the extraterritorial application
principle under the new Japanese law runs
counter to the territoriality principle according tosuch a theory as the one adopted by the Supreme
Court in the card reader case.
(iv) Needs for establishing an ITC-style quasijudicial organization
In this manner, it is a serious problem thatlegislation of relevant provisions in Japanese law
would not be enough to grant sufficient relief,
because in the case of judicial relief, the judgment
is rendered in person. Therefore, it would benecessary to establish an ITC-style quasi-judicialorganization that can give orders to Customs inborder control, and to have such an organization
determine not only the patent infringement status,
but also the validity of the patent.
This would provide a fair system forimporters, allowing them to dispute patentvalidity. Furthermore, by using the in rem effectof suspending imported goods, it would bepossible to effectively suspend patent-infringing
goods at the border.
3

Border-enforcement
systems
andprocedures as well as their frameworks
in other countries
Taking into account the discussions of theworking group, an investigation was conducted on
border enforcement in the United States (ITC,
customs recordation), Europe (the United
Kingdom, Germany, and France), and South Korea(Korea Trade Commission [KTC], Customs Act),and the current situation in each country wassummarized. The overview of the results isshown below.
(1) United States
The International Trade Commission (ITC)
conducts the proceedings in the form of adversary
proceedings between the parties, so the parties
are not likely to find so much unfairness in patent
infringement cases where the determination of
the infringement status is particularly difficult.
Meanwhile, Customs promptly and strictly
executes the ITC’s orders. The system lacks● 8 ●speediness with the proceedings sometimes
taking about 15 months, but the framework placesemphasis on due process. With regard to goods
that infringe trademark rights, trade names, andcopyright, which are mainly counterfeits andpirated copies, there is a system for enforcement
based on customs recordation. Speediness issecured in this framework.
(2) Europe (the United Kingdom, Germany,and France)
In Europe, there is a suspension based on
EU regulations and one based on national law. EU
members basically use the EU regulations, anduse their national law to regulate areas that areoutside the scope of the EU regulations.
In Europe, the roles are clearly divided
between Customs that accept applications forimport suspension and enforce the rights andcourts that determine the infringement status.
The system is compliant with the rules on theprocedures on provisional measures andprocedures on the merits of a case under the
TRIPS Agreement.
(3) South Korea
South Korea has a system for suspension by
the Korea Trade Commission (KTC) and a system
for suspension based on the Customs Act. The
KTC has a similar structure as the ITC of theUnited States. While requests for cooperation canbe made in the relationship between the ITC andU.S. Customs, Customs in South Korea are notregarded as execution authorities of the KTC.
Similar to the ITC, the KTC lacks speediness but
places emphasis on due process. In suspension
based on the Customs Act, speediness is secured
with regard to suspension of goods that infringe
trademark rights and copyright. When there are
doubts regarding the infringement status, theright holder can file a suit with the court while
taking procedures to hold up customs clearance.
This point also is compliant with the rules on theprocedures on provisional measures andprocedures on the merits of a case under the
TRIPS Agreement.
(Senior Researcher : Isao HYUGAJI)● 9 ●

IIP Bulletin 2006