The recent extension of trademark protection to non-traditional marks has caused a considerable splash in Japan, with applications for the new motion marks, hologram marks, colour marks, sound marks and position marks flooding the Japan Patent Office (JPO); it remains to be seen whether these new rights prove fertile ground for disputes. Meanwhile, traditional trademark filings remain steady and the recent economic upswing is fuelling optimism among the IP community. Infringement spats between competitors are still rare, with cease and desist letters often proving sufficient to nip any misuses in the bud. Some concern has been expressed over the reluctance of domestic entities to effectively defend their rights abroad.
IP titan Nakamura & Partners enjoys a stellar reputation on the market. Servicing the needs of some of the world’s biggest names, the century-old patent and trademark group has long blazed a trail in the Japanese IP space. Its omnipresence in crucial trademark litigation is particularly noted. Pioneering lawyer Kazuko Matsuo steers the firm with a sure hand. With 30 years in the trademark game under his belt, Hiroyuki Itaki has seen and done it all. Yoshio Kumakura has been a formidable figure on the enforcement side for over half a century. Another potent weapon in Nakamura’s arsenal is Koichi Tsujii; the seasoned litigator has written extensively on soft IP in both English and his native tongue.
Smooth, effective portfolio management and incisive strategic advice are the calling cards of TMI Associates. A persuasive one-stop shop for trademarks, it looks beyond the letter of the law to address the commercial implications of each instruction. Gold-ranked all-rounder Mitsuko (Mimi) Miyagawa gives the red-carpet treatment to many leading fashion retailers. Talented strategist Shunji Sato excels at multi-jurisdictional brand management; he is also a prolific writer. Takeshi Hironaka has won fans near and far for his peerless commercial nous. Rounding out the group, co-founder Yoshiyuki Inaba ably straddles the contentious/non-contentious divide, handling both patent and trademark matters for a host of US entities.
Yuasa and Hara retains its elite position on the nation’s IP landscape. The agile, forward-thinking set provides a comprehensive offering, dispatching trademark briefs of all stripes with ease and alacrity. Unparalleled international expertise makes it a favourite among foreign companies seeking to tap into Far Eastern markets. Hiromichi Aoki earns effusive praise from peers; he is regarded as one of the foremost practitioners of his generation. Former Tokyo High Court judge Toshiaki Makino is a treasure trove of legal knowledge; WTR 1000 debutant Toshiaki Iimura is another former judge who affords invaluable insight into judicial thinking. Star litigator Kozo Yabe is also a silver-tongued negotiator of licensing agreements; while transactions doyen Osamu Suzuki likewise excels at shepherding complex deals to close.
Supported by an unrivalled worldwide network that covers close to every longitudinal coordinate, Baker & McKenzie Gaikokuho Joint Enterprise is a go-to destination for clients with global interests – or ambitions. While effortlessly processing prodigious high volumes of inbound instructions, it also partners with domestic entities to propel them onto the international stage. Meanwhile, its abundant resources and cosmopolitan perspective make light work of the most complex cross-border briefs. Anti-counterfeiting is a real forte of the group, although prosecution and litigation are also handled with flair.
“Simply outstanding”, Hogan Lovells is a prime pick for major brands that find themselves embroiled in challenging enforcement scenarios. The departure of long-time partner Eiichiro Kubota was undoubtedly a loss for the team, but a deep bench ensures that clients remain admirably catered for. Panasonic, Sony and Brother are just a small representative sample of its impressive client roster. The bilingual Lloyd Parker heads the thriving division; he is the architect behind many astute brand protection strategies.
The name Kyowa has long been synonymous with reliability and repute; for over a century it has been delighting clients with its efficient, flawlessly executed trademark services. The shrewd negotiation of transactions and licensing agreements for Chinese brands is an ace up its sleeve. Consistently positioned near the top of the filings leader board at the JPO, it is also known for its tried-and-tested enforcement campaigns for a diverse blend of clients.
Newly promoted SUGIMURA International Patent & Trademark Attorneys has a laser focus on international IP briefs. Trademarks are indelibly etched into its DNA; while an office in Palo Alto makes it ideally positioned to cater to the needs of dynamic US players. On the watch of former Baker & McKenzie head Kenichi Nakayama, the firm has gone from strength to strength on both the contentious and non-contentious fronts; under the stewardship of this sage strategist, it will doubtless continue on this upwards trajectory.
The A-to-Z trademark offering at full-service outfit Abe Wada & Watanabe has proved an attractive option for companies of all stripes in all sectors, although technology and consumer goods concerns feature particularly prominently on its client roster. Communicative and well connected, its practitioners are tireless in their defence of brands’ interests. The soft IP team dovetails neatly with the firm’s corporate divisions to provide cost-effective, value-adding counsel. Redoubtable enforcer Yoshiki Abe’s broad knowledge base and client-centric approach win praise from peers. Hiromi Watanabe is a staunch advocate of clients’ rights.
Traditionally a favourite among US brand owners, Big Four giant Anderson Mori & Tomotsune has lately been making ardent fans of Chinese and Japanese enterprises. The full-service group is home to a number of talented trademark specialists, but its real USP is its knack for putting together tailored teams with diverse expertise that cover all angles of a brief. Sharp and resourceful litigator Yasufumi Shiroyama captains the squad.
Famed patent agency Asamura Patent Office also retains a healthy soft IP practice – an appealing proposition for clients with multi-faceted portfolios. Companies both foreign and domestic look to the long-standing institution for assistance with prosecution and strategy; while the contentious arm can also hammer out the right result in high-stakes litigation. Kiyoshi Asamura leads the set and is a good first port of call.
With a deep bench of of dedicated trademark attorneys and lawyers, traditional filing shop Fukami Patent Office consistently turns out pertinent, precision work product in even the most complicated scenarios. Peers and clients alike appreciate its clear and concise counsel. Elder statesman Hisao Fukami’s peerless wisdom has inspired the next generation of patent and trademark practitioners. The responsive and practical Kozo Takeuchi enjoys the patronage of a number of prestigious brand owners.
The Tokyo outpost of global titan Jones Day is a serious contender on both sides of the contentious and non-contentious divide. With over five native Japanese lawyers on the IP team, it is unique among its international rivals for its commitment to partnering with domestic enterprises; but it also proves a popular choice for global marques such as Dell, Sunkist and Wikimedia Foundation. Group head Michiru Takahashi deploys innovative, commercially attuned tactics to come out on top in trademark disputes.
For over four decades, Matsubara, Muraki & Associates has been a trusted ally of household-name brands. Anti-counterfeiting is a stronghold – as reflected by the numerous customs seizures and raids it has masterminded; meanwhile, its business-focused approach to prosecution provides local concerns with a springboard from which to launch themselves into new markets. Domain name disputes are another specialty of the nimble set. An engine of the firm’s success, Kiyoshi Muraki also boasts useful ancillary expertise in unfair competition law.
The holistic package on offer at Mori Hamada & Matsumoto chimes with discerning patrons seeking an efficient one-stop shop. A robust litigation and transactions group provides seamless support to its burgeoning trademark prosecution practice. The smooth coordination of portfolios across Southeast Asia is assured, thanks to its additional offices in Myanmar and Thailand. Recent highlights for the firm include the representation of restaurant search site Gurunavi in infringement battles at the IP High Court. Dispute resolution doyen Yutaka Miyoshi is a globe-trotting litigator with a finger firmly on the pulse of IP law.
Japan’s largest general law firm is home to a dedicated trademark team that can pack a killer punch in litigation – although its bengoshi are also refined negotiators of transactions and licensing deals. Extensive international reach and intramural expertise across the corporate spectrum translate into game-changing advice on a variety of trademark matters. Born litigator Eiichi Fukushima has unerring commercial instincts; while erudite colleague Nobuhiro Nakayama knows the law cold. Peers also hail the brilliant technical thinking of former High Court judge Mitsuru Shishido.
One of Japan’s largest patent and trademark agencies, Seiwa Patent & Law is home to serried ranks of experts in the field. It has the muscle to handle even the largest briefs with consummate ease; when instructing the firm, IP-rich entities can be confident that their brands will receive unwavering all-round protection. Inbound and outbound mandates are dexterously handled across continents. Nami Togawa is an affable practitioner with shrewd judgement.
European clients flock to the doors of Sonderhoof & Einsel Law and Patent Office for its tailored service. Tracing its roots back to Germany, the set speaks the language of western companies when it comes to strategic consulting. Adept at both enforcement and prosecution, the multilingual firm is also an indefatigable combatant in the fight against fakes. Firm leader Felix-Reinhard Einsel guides clients by the hand at each stage of the trademark lifecycle; his technical know-how is surpassed only by his affability.
Other recommended experts
Ai Kato of SOEI Patent & Law Firm is a master draftsman of unassailable rights. At his own eponymous shop, former Hogan Lovells partner Eiichiro Kubota knows how to engage with foreign concerns and how best to promote their interests. Anti-counterfeiting maven Mashashi Kurose, of Kurose IP Management, takes a resolutely pragmatic approach to complex infringement scenarios. STW & Partners’ Wataru Sueyoshi is a star litigator with a sparkling track record in the courtroom.
Individuals: enforcement and litigation
Individuals: prosecution and strategy
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