A degree of economic optimism is apparent in conversations with Japanese attorneys, most of whom report an uptick in trademark prosecutions over the past year. The scope of trademark protection afforded by the Japan Patent Office (JPO) has broadened recently with the introduction of non-traditional trademarks, including sound and colour marks. Meanwhile, the volume of trademark litigation has remained relatively low. Faced with a saturated market and an ageing population, Japanese corporations are pushing into emerging markets, especially in Southeast Asia. Law firms and patent offices with extensive regional and global networks are poised to capitalise on this trend.
Venerable boutique Nakamura & Partners has long been Japan’s most trusted source for trademark protection. “The older generation is absolutely brilliant, but the group also has a crop of great young talent” that should ensure its continued dominance. “When you have a big and important client with issues in Japan, Nakamura is the firm you trust to get the job done.” Managing trademark partner Hiroyuki Itaki is a “very experienced attorney with a strong network of international contacts”. The “brilliant” Kazuko Matsuo is an “outstanding advocate” who “has been one of Japan’s best trademark prosecutors for many, many years”. “Smart and diligent”, Yoshio Kumakura “can do anything on either side; he is a complete package, maybe the best all-around IP practitioner in Japan”. Koichi Tsujii is a new entrant this year, billed as “one of the top trademark litigators in the country”.
A general practice outfit that started life as an IP-focused start-up, TMI Associates has “a specialised core of IP experts with a solid reputation in the trademark sphere”. “Its practitioners are responsive and results oriented, a real privilege to collaborate with.” In addition to an advanced filing operation, the group fields a team of litigators who are frequently involved in big-ticket IP disputes. The “wonderful” Mitsuko (Mimi) Miyagawa is “a real trademark specialist who is passionate about her work”; she is especially sought after by fashion industry players. Shunji Sato enjoys the “utmost respect” of patrons and is appreciated for his strategic brand advice. On the prosecution side, Yoshiyuki Inaba “has a very good understanding of the needs of US clients and an extremely high level of expertise on a wide range of complex issues”. The “outstanding” Takeshi Hironaka gives “incredibly thoughtful suggestions. His extremely clear and well-reasoned communiqués are a joy to receive and read. He is that good of a lawyer and writer”.
With a tradition for excellence stretching back more than a century, Yuasa and Hara is an “undeniable leader” in the trademark space. The filing unit is the pride of the firm, securing high-value marques for major foreign and Japanese clients with incredible efficiency. The legal wing is adept at handling tense negotiations, often hammering out favourable, business-friendly licensing agreements to forestall costly court action. Heading the litigation team is Toshiaki Makino, a well-respected former presiding judge of the Tokyo High Court. Osamu Suzuki oversees a heavy load of enforcement briefs with an excellent track record of victories. The inimitable Kozo Yabe ably represents rights holders in tricky disputes; while prosecution sage Hiromichi Aoki has “a profound depth of knowledge of Japanese trademark and design law, and a good eye for strategy”.
The Tokyo office is an important node in Baker & McKenzie’s expansive international network, guaranteeing clients a presence in this Asian IP hub and attracting IP-rich Japanese clients. Inbound filing forms the lion’s share of the practice, but an increasing number of key local corporates are signing on for outbound trademark applications, enticed by the firm’s vaunted global IP management platform. The four-partner team recently welcomed the arrival of two associates from another foreign enterprise. Other recent developments include several trademark infringement lawsuits and almost daily dealings with customs officials on anti-counterfeiting matters.
“Hogan Lovells is one of the very few law firms in Japan which can provide whole client solutions - from trademark prosecutions to disputes - in every part of the world.” The sizeable trademark team includes practitioners qualified in the United States, the United Kingdom, Europe, the Middle East and a host of other markets. It thus comes as no surprise that blue-chip Japanese brands such as Kao Group, Brother Group, Panasonic and Sony flock to it for outbound trademark filing and difficult multi-jurisdictional dispute resolution. “IP authority” Lloyd Parker possesses “great leadership skills and the ability to manage a large portfolio worldwide”. Eiichiro Kubota is “a tireless worker and superb communicator who is excellent at managing a timeline”.
Although this marks the inaugural WTR 1000 appearance for Kyowa Patent & Law, the filing-focused outfit is far from a newcomer, having been in operation for more than 100 years. The prosecution unit is among the elite few that are perennially among the top trademark registrants at the JPO. However, Kyowa’s trademark capability does not stop there - a dedicated China section helps clients to coordinate enforcement regimes and pursue licensing opportunities in the world’s largest consumer market. “Masashi Kurose is a well-known expert on IP law in both China and South Korea who demonstrates excellent judgement and powers of persuasion.” He is also a noted expert on anti-counterfeiting law.
This mid-sized firm is well attuned to the commercial needs of multinationals doing business in Japan and around the region, especially when it comes to the protection and exploitation of their intellectual property. The 10-attorney cohort has an established reputation for incisively resolving cross-border disputes on behalf of major properties in the technology, communications and consumer goods sectors. Yoshiki Abe is “someone who can do everything IP-related, though his great talent lies in difficult litigious matters”. The “excellent” Hiromi Watanabe is “very effective at interfacing with Western companies and takes a solid, workman-like approach to the issues”.
Among Japan’s traditional top tier of corporate law practices, Anderson Mori & Tomotsune is one of the few that houses both an IP prosecution and litigation function. The filing side is expanding, with two more trademark-focused patent attorneys joining in the past year. The high-calibre litigators here remain busy with enforcement actions and occasional infringement suits. Business is picking up as the firm’s traditional power base - the banking sector - sees its fortunes continue to improve. Yasufumi Shiroyama supervises a “quality IP team that has come on strongly in recent years”.
“We have always had favourable results with Asamura Patent Office,” avows one foreign counsel. Most of its clients are corporations with global reach and the group’s impressive success rate at the JPO is matched by similar track records in countless other jurisdictions. In addition to 10 patent attorneys who oversee trademark prosecutions, the patent agency has an associated law practice which conducts negotiations and files suit for trademark infringement or unfair competition when necessary.
Fukami is a respected patent agency that also recognises the importance of a robust trademark function. Eleven patent attorneys practise exclusively in the trademark domain, six of whom are specially qualified to represent parties in specific infringement litigation. Its practitioners strike the perfect balance in handling both foreign and domestic applications and clients. Chairman Hisao Fukami has been an eminent figure in the IP world for more than four decades. Group vice president Kozo Takeuchi leads the trademark practice; he has experience working in the United States and serves on the faculty of the Osaka University Graduate School of Law.
Jones Day is unique among foreign firms in that its team is overwhelmingly composed of bengoshi admitted in Japan. The trademark department is entrusted with the protection of big-name brands such as Dell, Starkist and Starbucks, which value its combination of a Japan-centric approach with the reach of Jones Day’s international network. High-end enforcement matters are the group’s forte. Clients rave about IP practice leader Michiru Takahashi: “She is very responsive and provides clear, useful, comprehensive yet appropriately concise opinions and recommendations. She is practical, business savvy, highly creative and a pleasure to team up with.”
Prosecution-focused boutique Matsubara Muraki & Associates has spent more than four decades amassing goodwill among the local business community as it renders services across every IP field. It not only helps clients to file in Japan and a host of other jurisdictions, but also conducts customs enforcement campaigns to keep counterfeit goods from reaching the market. Domain name disputes are another rich source of work. Co-founder Kiyoshi Muraki is “a master strategist in both trademark and unfair competition cases”.
The IP team at commercial powerhouse Mori Hamada & Matsumoto is highly qualified to take on contentious and transactional trademark briefs. In addition to handling local infringement suits, the group advises on disputes across Asia through its offices in Singapore and China. Like many of its biggest clients, the firm is expanding its presence in Southeast Asia, having recently opened an office in Yangon. Yutaka Miyoshi is an indispensable part of the team, with his vast licensing knowledge and extensive experience arguing cases in the United States, the United Kingdom and Germany.
As one of Japan’s ‘Big Four’ corporate practices, Nishimura & Asahi is brimming with elite bengoshi who apply their considerable legal talents to IP disputes and commercial transactions. The firm boasts no fewer than five offices in Southeast Asia, facilitating seamless coverage in a market that is becoming very lucrative for Japanese producers. Eiichi Fukushima dispenses sage counsel on IP disputes of every type. Renowned professor of intellectual property Nobuhiro Nakayama is widely sought after for his strategic perspective. Former IP High Court judge Mitsuru Shishido is best known for his patent litigation prowess, but is an all-round IP expert.
With a phalanx of benrishi, Seiwa Patent & Law ably coordinates major portfolios containing every class of intellectual property, including brand assets. Both international and domestic corporates call on this “reliable, trustworthy prosecution shop” to protect their marques in Japan. A far-reaching network of foreign associates allows Seiwa to offer patrons an efficacious outbound service as well. Partner Nami Togawa is praised for his client-friendly approach and shrewd problem solving.
European companies are particularly loyal to time-honoured institution Sonderhoff & Einsel, a full-service practice with a heavy emphasis on intellectual property. Although prosecution is the firm’s bread and butter, enforcement actions are on the rise; the past year brought many customs seizure cases and anti-counterfeiting actions targeted at department stores. “Felix Einsel has been on the scene for quite some time; he is easy to talk with because he is clearly passionate about the profession.”
Household names in technology and apparel are among the many high-profile clients that rely on Sugimura to protect their valuable brands. This sophisticated boutique is incredibly effective before the JPO. Its Japanese and foreign-qualified lawyers also help companies to design and execute global anti-counterfeiting strategies. With offices in Tokyo and Silicon Valley, the firm connects two of the world’s foremost tech hubs, advising Japanese and US corporates on the nuances of both countries’ IP regimes. The recent appointment of prominent trademark specialist Kenichi Nakayama should give the practice a considerable boost.
Other recommended experts
Oshima, Nishimura & Miyanaga PPC founder Atsushi Oshima is “one of the country’s most seasoned trademark attorneys”; he “handles a great volume of JPO filing and produces top-quality results at all times”. Ai Kato of SOEI Patent & Law Firm has a knack for shepherding tricky applications through the prosecution process. At STW & Partners, Wataru Sueyoshi has proven himself to be a fine courtroom tactician in a wide array of IP and technology suits.
Individuals: enforcement and litigation
Individuals: prosecution and strategy
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