Japan

Registrations of non-traditional trademarks in Japan rose sharply over the past year, following domestic companies’ initially hesitant response to the 2015 legislation which extended the parameters of brand protection in the country. However, unconventional marks have yet to become a major subject of disputes among brand owners. Other developments include Japanese law firms’ continued expansion into the burgeoning markets of Southeast Asia. Nonetheless, the country’s rights holders remain reluctant to embroil themselves in enforcement actions in foreign jurisdictions – a reflection of the cautious legal ethos that still prevails in Japan.

Firms

1
Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
2
Baker McKenzie Gaikokuho Joint Enterprise
Kyowa Patent & Law Office
Nishimura & Asahi
3
Anderson Mori & Tomotsune
Asamura Patent Office PC
Fukami Patent Office
Jones Day
Matsubara, Muraki & Associates
Mori Hamada & Matsumoto
SOEI Patent & Law Firm
Wada & Watanabe
Anderson Mori & Tomotsune
One of Japan’s fabled ‘Big Four’ law firms, Anderson Mori & Tomotsune is a preferred choice for eminent companies on both sides of the Pacific. Its formidable army of talented practitioners allows it to flourish across the gamut of trademark instructions; it can field specialist teams of laser-focused IP lawyers or hybrid squads of commercial experts to meet the needs of the most demanding clients. Redoubtable litigator Yasufumi Shiroyama stuns with his encyclopaedic knowledge of case law.
Asamura Patent Office PC
Asamura Patent Office provides a slick trademark service to complement its core patent practice. Its judicious brand rights development is popular with large corporations, which appreciate its clued-up professionals and seamless network of foreign associates. Pre-litigation acumen is another weapon in its arsenal, helping patrons to thrash out favourable outcomes to thorny disputes.
Baker McKenzie Gaikokuho Joint Enterprise
Drawing on vast global resources, Baker McKenzie’s local member firm deftly advises numerous international mega-brands operating in Japan, as well as local clients seeking a springboard into foreign markets. Flawless cross-border portfolio management is a natural strength for the practice, which benefits from peerless support systems to ensure efficiency and reliability. Its assiduous anti-counterfeiting programmes and contentious might are widely acclaimed, too.
Fukami Patent Office
Even in the most challenging circumstances, Fukami Patent Office is unwavering in the quality of its trademark offering. Distinguished by responsive service and microscopic attention to detail, vibrant prosecution is a hallmark. Dispensing pragmatic, crystal-clear advice, Kozo Takeuchi receives a steady stream of repeat instructions from satisfied brand owners; while veteran campaigner Hisao Fukami is a thought leader among Japan’s soft IP practitioners.
Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Dazzling on disputes, Hogan Lovells also turns heads with its adroit acquisition and management of brand rights. The team in Japan continues to grow in stature, ably supported by the firm’s expansive global web; Panasonic, Sony and Brother are just a few of the household names that grace its client roster. Spearheading the IP, media and technology division, Lloyd Parker is admired by international clients for his incisive legal mind and tailored contentious strategies. Flanking him is the newly featured Chikako Hashimoto, whose sage advice across the contentious/non-contentious divide is distilled from 25 years’ experience. Fellow WTR 1000 debutant and skilled portfolio manager Nicolas Hirt is another crucial player on this well-rounded team.
Jones Day
The Japanese outpost of global IP powerhouse Jones Day is esteemed for its masterful management of brands at all stages of the trademark lifecycle. With five Japan-admitted lawyers, it is a preferred choice for both inbound and domestic mandates. The pivot of the practice is seasoned lawyer Michiru Takahashi, whose deep expertise is sought out by many prestigious enterprises. One patron describes her as “one of our finest outside trademark counsel – responsive, practical and clear in communication. Possessing legal and business expertise, she offers viable solutions.” The star performer recently secured registration of Mini Maglite’s three-dimensional trademark at the IP High Court – the first time that the court has recognised this type of mark. Takahashi also handles prosecution for Dell and Sunkist, and has represented Starbucks in a number of anti-counterfeiting campaigns.
Kyowa Patent & Law Office
With over a century of IP practice under its belt, Kyowa’s cultivated trademark unit bears the stamp of experience and wisdom. As one of the most prolific filers in Japan, it stands out for its sterling prosecution, but has also carved a niche overseeing brand-rich deals for large Chinese clients.
Matsubara, Muraki & Associates
Compact boutique Matsubara, Muraki and Associates earns effusive praise from its illustrious clientele. Hawkish anti-counterfeiting is the usp of the trademark practice, with savvy prosecution planning another strong point. Captaining the side is Kiyoshi Muraki, a battle-hardened professional with a sophisticated grasp of soft IP law and adjacent issues.
Mori Hamada & Matsumoto
Clients seeking a joined-up, soup-to-nuts trademark practice are safe in the hands of Mori Hamada & Matsumoto, one of Japan’s largest commercial ensembles. With a deep bench of streetwise lawyers, it handles complex contentious and transactional briefs with poise. Bureaux in Bangkok, Yangon, Singapore and Jakarta make it a compelling option for brand owners with interests throughout Southeast Asia. The successful defence of Gurunavi at the Supreme Court was a recent highlight. Dynamic enforcer and sure-footed licensing maven Yutaka Miyoshi is an essential ally in disputes. Deeply rooted in Japan’s IP landscape, Nakamura & Partners plays a prominent role in many of the country’s big-ticket trials. “One of the best lawyers in Japan”, ace litigator Koichi Tsujii can also astutely shepherd IP-rich deals to close. Another stalwart on the contentious side is Shinichiro Tanaka, whose advocacy is enhanced by ancillary expertise in entertainment law. Venerable soft IP and legal division practitioners Kazuko Matsuo and Yoshio Kumakura are deep fonts of wisdom at the firm; so too Hiroyuki Itaki, a prosecution and contentious expert who sits in the trademark section.
Nishimura & Asahi
Japan’s biggest law firm, Nishimura & Asahi has a stellar reputation for its prowess in must-win disputes and steady-handed stewardship of IP-heavy transactions. Seeking to provide a comprehensive service, it has also made big strides in the development of its prosecution practice. Having resolved every type of trademark conundrum going, its experts provide commercially sound, practical advice when it matters most. “They are incredibly responsive and deal competently with matters of the utmost complexity,” remarks one foreign associate. Recent highlights include representing Canon in a heated court battle. Business-minded Eiichi Fukushima is a valuable counsellor in adversarial circumstances. Colleagues Nobuhiro Nakayama and Mitsuru Shishido are renowned for their firm grasp of the myriad nuances of soft IP law. New to the firm, Makoto Shiotani is behind the recent meteoric rise of Nishimura & Asahi’s non-contentious offering. Well-oiled prosecution machine Seiwa Patent & Law has the wherewithal to dispatch even the most unwieldy mandates with utmost composure. Tried and true on cross-border instructions, it works seamlessly with foreign clients and associates. Winning plaudits for her sharp legal mind and genial approach, Nami Togawa is an influential figure on the local trademark scene.
SOEI Patent & Law Firm
Newly featured SOEI secures watertight protection for a host of premier domestic and foreign brands, receiving rave reviews for its “practical, effective advice and responsive service”. Trademark virtuoso Ai Kato’s well-honed strategic instincts allow her to overcome seemingly insurmountable obstacles to registration. A major Japanese player with German roots, Sonderhoff & Einsel maintains thriving relationships with an admirable collection of European patrons, including heavyweight automotive and luxury goods companies. Able to satisfy all soft IP needs, it wins particularly effusive accolades for its relentless pursuit of brand imitators. Effortlessly bridging cultural differences, Felix-Reinhard Einsel is treasured by many international patrons, who appreciate his close attentiveness to their needs and dedication to their business objectives. The cosmopolitan Sugimura is a trusted guide for multinationals seeking efficacious brand protection in Japan. Supported by an office in California, it recently expanded its outbound representation of domestic clients doing business in the United States. Formerly a dedicated prosecution shop, the IP department has also developed an impressive enforcement practice under the supervision of multi-talented Kenichi Nakayama, who previously oversaw the trademark group at Baker McKenzie.

The unofficial fifth member of Japan’s Big Four, full-service colossus TMI Associates brings enviable resources to bear when delivering its holistic IP advice – peers hail it as “the best of the best”. Homing in on clients’ diverse commercial needs, it is best known for adding value through farsighted strategic guidance, exemplified by the work of deft portfolio managers Shunji Sato and Takeshi Hironaka. “Lawyer of the highest quality” Yoshiyuki Inaba is “responsive and forward thinking” in his management of a broad range of trademark briefs; while the equally versatile Mitsuko (Mimi) Miyagawa shrewdly advises a raft of foreign patrons, including many iconic fashion brands. She recently hit the spotlight for her successful registration of a number of non-conventional marks for ST Corporation.

Wada & Watanabe
Dynamic outfit Wada & Watanabe provides a “solid, workmanlike trademark service” to an impressive roster of clients, particularly in the electronics and consumer goods sectors. A founding member of the International Lawyers Network, the communicative, collegial firm is acclaimed for its “excellent interface with western companies”. Gilt-edged litigator Yoshiki Abe is closely attuned to what really matters to patrons, while “practical adviser” Hiromi Watanabe valiantly defends valuable brand rights to the hilt. A full-service outfit with a strong focus on intellectual property, combines panoramic commercial understanding with the refined trademark expertise more commonly found in boutiques. A deep bench of gifted professionals makes the firm a byword for excellence, especially in the resolution of disputes. A favourite of international enterprises, contentious maven Kozo Yabe also carefully oversees the drafting of licensing agreements, often in collaboration with transactional guru Osamu Suzuki. For clear-sighted advice, look no further than Hiromichi Aoki, who has won the reverence of peers during a distinguished career. Colleague Toshiaki Makino enjoys a similarly high profile; the former High Court judge has an encyclopaedic knowledge of trademark law. Fellow former judge Toshiaki Iimura is lauded for his penetrating legal analysis.

Individuals: enforcement and litigation

Mitsuko (Mimi) Miyagawa - TMI Associates
Lloyd Parker - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Kozo Yabe - YUASA and HARA
Eiichiro Kubota - KUBOTA
Nobuhiro Nakayama - Nishimura & Asahi
Wataru Sueyoshi - STW & Partners
Michiru Takahashi - Jones Day
Koichi Tsujii - Nakamura & Partners
Hiromi Watanabe - Wada & Watanabe
Yoshiki Abe - Wada & Watanabe
Chikako Hashimoto - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Toshiaki Iimura - YUASA and HARA
Yutaka Miyoshi - Mori Hamada & Matsumoto
Yasufumi Shiroyama - Anderson Mori & Tomotsune
Mitsuru Shishido - Nishimura & Asahi
Osamu Suzuki - YUASA and HARA
Shinichiro Tanaka - Nakamura & Partners

Individuals: prosecution and strategy

Yoshiki Abe - Wada & Watanabe
Hiromichi Aoki - YUASA and HARA
Felix-Reinhard Einsel - Sonderhoff & Einsel Law and Patent Office
Chikako Hashimoto - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Takeshi Hironaka - TMI Associates
Nicolas Hirt - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Yoshiyuki Inaba - TMI Associates
Hiroyuki Itaki - Nakamura & Partners
Ai Kato - SOEI Patent & Law Firm
Kumpei Kogure - BORDERS IP
Masashi Kurose - Kurose IP Management
Hiroki Matsui - LEXIA Partners
Mitsuko (Mimi) Miyagawa - TMI Associates
Yukei Mizuno - CoTech International Inc
Chikako Mori - Sun East IP Firm
Kiyoshi Muraki - Matsubara, Muraki & Associates
Kenichi Nakayama - SUGIMURA International Patent & Trademark Attorneys
Lloyd Parker - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Shunji Sato - TMI Associates
Makoto Shiotani - Nishimura & Asahi
Michiru Takahashi - Jones Day
Kozo Takeuchi - Fukami Patent Office
Nami Togawa - Seiwa Patent & Law
Reiko Toyosaki - Toyosaki & Associates
Hiromi Watanabe - Wada & Watanabe

Luminaries

Hisao Fukami - Fukami Patent Office
Eiichi Fukushima - Nishimura & Asahi
Yoshio Kumakura - Nakamura & Partners
Toshiaki Makino - YUASA and HARA
Kazuko Matsuo - Nakamura & Partners
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Issue 70