Legal measures available against industrial property rights infringement typically include civil claims such as injunctions, claims for damages, restitution of unjust enrichment, and measures to restore business credibility. However, from the perspective of deterrence and long-term prevention, criminal liability may also be pursued.
To enhance the international competitiveness of Japanese industries, it has been considered necessary to strengthen the protection of industrial property rights. Consequently, legislative amendments have been introduced repeatedly to increase criminal penalties, including raising fines and expanding imprisonment provisions.
Among industrial property rights infringements, trademark infringement is said to be the most frequently prosecuted as a criminal offense. The Trademark Act provides criminal penalties for infringement as follows:
Article 78 Any person who infringes a trademark right or an exclusive right to use (excluding a person who commits an act deemed to constitute infringement under Article 37 or Article 67) shall be punished by imprisonment for a term not exceeding ten years or a fine not exceeding ten million yen, or both.
Article 78-2 Any person who commits an act deemed to constitute infringement of a trademark right or an exclusive right to use under Article 37 or Article 67 shall be punished by imprisonment for a term not exceeding five years, or a fine not exceeding five million yen or both.
Likewise, the Patent Act provides:
Article 196 Any person who infringes a patent right or an exclusive license (other than a person who commits an act deemed to constitute infringement under Article 101) shall be punished by imprisonment for a term not exceeding ten years or a fine not exceeding ten million yen, or both.
Article 196-2 Any person who commits an act deemed to constitute infringement of a patent right or an exclusive license under Article 101 shall be punished by imprisonment for a term not exceeding five years or a fine not exceeding five million yen, or both.
With respect to criminal offenses related to intellectual property rights, there are both “offenses prosecuted only upon complaint” (shinkokuzai) and “offenses prosecuted without a complaint” (hi-shinkokuzai). Infringement of patents and trademarks falls into the latter category, meaning that prosecution is possible even without a complaint from the rights holder. Nevertheless, filing a formal complaint is necessary in practice to prompt investigative authorities to take active steps.
For further information regarding infringement and available remedies, please refer to the Japan Patent Office (JPO) website:
“What constitutes infringement of industrial property rights?” https://www.jpo.go.jp/support/ipr/kenrishingai.html
“If your rights are infringed – available remedies” https://www.jpo.go.jp/support/ipr/kyusai/index.html