Design Right-Infringing Goods

Overview

Design right-infringing goods are products that imitate the shape, appearance, design, pattern or visual form of a product protected by a design right without authorization from the rights holder.

Unlike trademark-infringing goods, design right issues may arise even when no brand name or logo is shown on the product. If the appearance of the goods is similar to a registered design, the goods may become an issue at Customs.

In Japan import practice, design right infringement can be difficult to identify because the focus is not only on words or marks, but on the appearance of the product itself.

This article focuses mainly on design rights. However, similar Customs border issues may also arise in relation to trademarks, copyrights, patents and other intellectual property rights, depending on the product and the protected element involved.

Why Design Right-Infringing Goods Matter in Import Practice

Design rights protect the visual design of a product, such as its shape, configuration, pattern or overall appearance.

In import practice, goods may be questioned even if they do not carry a famous brand logo. A product that looks very similar to a popular or protected design may still raise a design right issue.

In Japan, design right protection is based on registration. Therefore, when a design issue is raised, it may be important to confirm whether the relevant design is actually registered, whether the registration is still valid, and whether the imported product falls within the protected design scope.

Partial designs may also be protected. This means that not only the overall appearance of the product, but also the shape or appearance of a specific part of the product may become an issue.

This makes design right risk different from ordinary brand or logo risk. The cargo may look like general merchandise on the invoice, but the actual product appearance may be the key issue.

For overseas shippers and origin-side forwarders, the practical point is that “no logo” does not always mean “no intellectual property risk.” Product shape and design may still need confirmation.

Goods That Often Raise Design Right Issues

Design right issues may arise in many types of products, including:

• furniture;
• home appliances;
• general merchandise and lifestyle goods;
• smartphone accessories;
• bags and fashion accessories;
• containers, bottles and packaging products;
• lighting equipment;
• household goods;
• industrial parts and replacement parts;
• products that closely resemble famous or popular designs.

Particular care is required for products that resemble famous brand products, popular consumer goods, genuine replacement parts or highly designed items.

Difference from Trademark-Infringing Goods

Trademark infringement usually concerns unauthorized use of a brand name, logo, mark or product name.

Design right infringement concerns whether the product’s appearance, shape or design is similar to a protected design.

Therefore, even if the product has no logo, brand name or trademark marking, it may still be questioned from a design right perspective.

In practice, trademark risk is often easier to notice because a logo or brand mark is visible. Design right risk is harder to notice because the issue may depend on comparison between the imported product and a registered design.

Customs Border Enforcement

In Japan, goods suspected of infringing intellectual property rights may be checked by Customs at the border.

If Customs suspects that the goods infringe design rights or other intellectual property rights, the cargo may be held and verification procedures may begin.

In verification procedures, Customs may notify both the importer and the rights holder and give them an opportunity to submit opinions and evidence within a specified period. The importer may need to explain why the goods do not infringe the design right, while the rights holder may submit information supporting the suspected infringement.

Customs then reviews the submitted opinions and evidence and determines whether the goods fall under prohibited imports as intellectual property infringing goods.

In responding to a design right issue, the importer may need to consider not only product similarity, but also whether the relevant design right is registered, still valid, and applicable to the product or part of the product in question.

If the goods are determined to infringe intellectual property rights, they may be subject to import suspension, confiscation, destruction or other procedures under the applicable Customs framework.

Points Checked in Customs Practice

Design right infringement cannot usually be confirmed only from the invoice or product name.

Customs or related parties may need to review the actual appearance of the product, product photographs, catalogues, sales pages, specifications, drawings or other visual materials.

The importer may need to explain that the product is independently designed, does not fall within the scope of the protected design, that the relevant design right is no longer valid, or that the goods are imported with authorization from the rights holder.

For this reason, visual materials are important. A vague invoice description such as “plastic goods,” “parts,” “accessory,” “case,” “container” or “sample” may not be enough when a design issue is raised.

Documents and Information That May Be Requested

When design right infringement is questioned, the following documents or information may become relevant:

• commercial invoice and packing list;
• product photographs from multiple angles;
• catalogues, sales pages or product brochures;
• product specifications or drawings;
• purchase order or sales contract;
• supplier and manufacturer information;
• explanation of the product design background;
• confirmation of whether the relevant design right is registered and still valid;
• authorization letter or license agreement, if applicable;
• documents showing that the goods are genuine or authorized products;
• importer’s written explanation to Customs, if required.

The necessary materials depend on the product, the suspected protected design and the reason why Customs has raised a question.

Replacement Parts and Compatible Products

Design right issues may also arise with replacement parts, compatible accessories and repair parts.

Even if the product is not sold as a fake brand product, its shape may be designed to resemble a genuine part or a protected product design.

For example, smartphone cases, appliance parts, vehicle accessories, machine components, cosmetic containers or packaging items may raise questions if their appearance is very close to a protected design.

Forwarders should be careful when goods are described as “compatible,” “replacement,” “OEM,” “aftermarket,” “custom,” “sample” or “factory product” but visually resemble a well-known product or design.

Relationship with Other Intellectual Property Rights

Design right issues may overlap with other intellectual property issues.

A product may raise design right issues because of its shape, trademark issues because of a logo, copyright issues because of a character or artwork, and patent issues because of a technical structure.

Forwarders do not need to decide which intellectual property right is involved. However, when the product appears to imitate a known design, brand, character or product concept, the importer should be asked to confirm the rights relationship before shipment.

Practical Points for Forwarders

Forwarders are not usually in a position to make a final legal judgment on design right infringement.

However, forwarders should recognize possible risk signs and encourage the importer to confirm the issue before shipment or customs declaration.

Particular caution is needed where:

• the product closely resembles a famous or popular product;
• the product has no logo but appears to copy a distinctive shape or design;
• only a specific part of the product appears to imitate a protected design;
• the cargo is described only in vague terms such as “goods,” “parts,” “case” or “sample”;
• the supplier or manufacturer is unclear;
• the price is unusually low compared with the apparent original product;
• the goods are described as OEM, compatible, aftermarket, sample or surplus goods;
• the importer cannot explain the design origin, registration status or authorization;
• the product photographs suggest similarity to a protected design.

When these signs appear, the forwarder should ask the importer to confirm whether the goods are independently designed, authorized, outside the scope of a valid design right, or otherwise lawful for import into Japan.

Practical Impact if Goods Are Suspected

If goods are suspected of infringing design rights, the practical impact can be serious.

The cargo may be held by Customs, delivery may be delayed, additional documents may be requested, and the importer may need to respond to verification procedures within the required period.

If the goods are determined to be infringing, they may be subject to import suspension, confiscation, destruction, return restrictions or other consequences.

Additional costs may also arise, including storage charges, handling fees, legal costs, rebooking costs, return costs and delay-related claims.

Practical Notes for Shipments to Japan

For shipments to Japan, overseas shippers and origin-side forwarders should understand that intellectual property issues are not limited to visible brand names or logos.

Goods that imitate product appearance, shape or design may also be questioned by Japan Customs if they appear to infringe design rights.

If the goods are design-sensitive products, the overseas side should be prepared to provide product photographs, catalogues, supplier information, authorization evidence, explanation of independent design, and confirmation of whether the relevant design right is still registered and valid.

It is better to organize these points before shipment than to respond after the cargo is already held by Customs in Japan.

Key Takeaway

Design right-infringing goods may become an import issue even when no brand name or logo appears on the product.

The key issue is the appearance, shape and design of the product itself, including in some cases a protected part of the product rather than the whole product.

For forwarders, the practical role is not to decide design right infringement by themselves, but to identify risk signs early and ask the importer to confirm the legitimacy of the goods, including registration validity and authorization, before customs clearance is delayed or the cargo is held by Customs.