Japan

Japanese companies understand that expansion in the mature domestic market is increasingly hard to bring about and, therefore, to increase revenues they are investing more in their overseas operations. Home-grown brand owners appear to be more willing to enforce their rights, while companies that traditionally filed a lot of IP applications simply for the sake of ownership and to exclude others are now looking to do more with their intellectual property in order to develop commercial advantages. To service the heightened demand for overseas and enforcement work, Japanese IP boutiques and full-service firms have been broadening their horizons; for example, SUGIMURA became a legal services firm in 2017. The market is also changing as a result of the retirement of a generation of lawyers who were the founders of many of the country’s IP boutiques. However, the impact of such moves is, as yet, unclear.

Firms

1
Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
2
Baker McKenzie Gaikokuho Joint Enterprise
Kyowa Patent and Law Office
Nishimura & Asahi
3
Anderson Mori & Tomotsune
Asamura Patent Office PC
Fukami Patent Office
Jones Day
Matsubara, Muraki & Associates, PC
Mori Hamada & Matsumoto
SOEI Patent & Law Firm
Anderson Mori & Tomotsune
Fabled full-service firm Anderson Mori & Tomotsune is rich in resources when it comes to intellectual property; it has a sizeable set of expert professionals, who shine with particular lustre on the litigation and transactional sides of the practice. By sharing expertise across different departments, the set advises brand owners holistically and can put together tailor-made strike forces for its clients. Taking the reins of the IP group, Yasufumi Shiroyama delivers exceptional results on both contentious and non-contentious files while keeping his department running smoothly.
Asamura Patent Office PC
Asamura is widely endorsed by contemporaries for its robust patent practice but, with its intimate knowledge of the Japan Patent Office’s inner workings, it garners plenty of positive recognition from brand owners too. Its precision-engineered trademark filing practice is utilised by domestic and foreign clients who are looking to secure protection in Japan and overseas. Ken Kanai is the firm’s senior managing partner.
Baker McKenzie Gaikokuho Joint Enterprise
Among international law firms with a presence in Japan, Baker McKenzie runs one of the strongest IP practices. Its sturdy, bilingual English and Japanese 13-attorney team “provides quality and timely advice” on all aspects of the protection and enforcement of trademark rights, exploiting the global firm’s resources judiciously. The group’s two partners both make their debuts in the WTR 1000 this year thanks to excellent client feedback. Division leader Kensaku Takase “has a good understanding of the differences between Western legal systems and the Japanese system, because of his professional experience in the United Kingdom and New Zealand”. “His work is of a consistently high standard and he’s a practical and reasonably priced representative.” “He has an impressive ability to navigate the issues thrown up by language, time zone and cultural differences and is an essential ally for those looking for continued business success in Japan.” A transactional maven, Takase recently assisted Rosetta Stone in connection with its $19.5 million strategic partnership in Japan. Anti-counterfeiting and litigation ace Daisuke Tatsuno “provides an excellent service and sees cases through to a successful conclusion”. “He is extremely knowledgeable and is always happy to go the extra mile.”
Fukami Patent Office
Fukami Patent Office is a key ally for innovative companies seeking patent protection in Japan and abroad. However, the firm has a fine-tuned understanding of the commercial significance of brands and has a specialised trademark team that dispatches filing instructions assuredly. Miki Tomii oversees the trademark and law division and is hailed as a “thorough, conscientious practitioner who provides an excellent service to a large client portfolio”. The firm’s esteemed chairman is Hisao Fukami.
Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
With over 40 highly specialised lawyers, Hogan Lovells maintains one of the largest, if not the largest trademark group in the country. It has a uniquely cosmopolitan squad and includes eight bengoshi and benrishi, eight lawyers with US or UK qualifications and members with experience working in Australia, New Zealand and France. Setting trademark protection and enforcement benchmarks that others can only aspire to, the set acts on behalf of a panoply of world-leading brands. Head of the IP, media and technology group for Asia-Pacific and the Middle East, Lloyd Parker is a repository of trust for many household names, including a number domiciled in Japan; for example, he manages the global portfolios of Asahi Group Holdings and Rakuten. The dedicated lawyer “understands Japanese companies well – what they need and how they want their services delivered”. He and Frenchman Nicolas Hirt frequently work together, Hirt supplying abundant expertise on European IP protection; Kao Group and Panasonic are two clients they serve together. In recognition of the vital support she provides to both, rising star Tomoe Takahashi debuts in the WTR 1000 this year. The Japanese national speaks English fluently and has a wealth of overseas experience on her résumé. However, some of the best feedback for the firm is reserved for benrishi Chikako Hashimoto, a seasoned trademark and designs portfolio manager and litigator. “She is very experienced and reliable, her responses are fast and concise and she understands her clients’ business well. She also has a tremendous network of attorneys abroad and is able to select the best agent for the matter.” As one respondent comments, “she has never failed us”. Serving as a consultant to the group is Yoshiki Abe, a veteran campaigner in multi-jurisdictional litigation whose negotiations skills have been honed to a keen point.
Jones Day
Testament to the quality it offers, Jones Day nurtures close and longstanding relationships with the many famous international brands it represents. Dell is a prime example; practice head Michiru Takahashi has represented the company on clearance, prosecution and trademark maintenance for over 15 years and knows its portfolio and business inside out. “Takahashi delivers a consistently first-rate service and provides outstanding advice. She is clearly an authority in her field and is reliable, responsive, thorough and committed.” On the contentious side, she plays the role of enforcer expertly. Jones Day has acted for Starbucks against infringers since it first launched in Japan in the mid-1990s and Takahashi has taken the lead on all cases for the coffeehouse giant. She works well with her colleagues in the firm’s US offices – particularly DC litigator Susan Kayser – to provide clients with an international perspective.
Kyowa Patent and Law Office
Celebrating 110 years of excellence this year, Kyowa Patent and Law Office is a byword for quality when it comes to IP prosecution. The forward-looking firm reorganised its structure into a partnership in 2015 and its resolute management team has kept the trademark practice in prime condition since. With a dedicated China team, the firm is well placed to represent those with interests in the People’s Republic.
Matsubara, Muraki & Associates, PC
Acting in Japan and overseas, IP boutique Matsubara, Muraki & Associates supports business development by providing legal certainty to its clients. Unlike many of the Japanese boutiques listed in the WTR 1000, which are more patent-oriented, Matsubara focuses on trademark law and unfair competition. The set resolves infringements with a minimum of fuss and showcases a particularly deft touch when it comes to anti-counterfeiting and enforcement on the Internet. Kiyoshi Muraki, a former president of the Japan Patent Attorneys Association, is a key contact for interested parties.
Mori Hamada & Matsumoto
A full-service firm with an all-encompassing understanding of intellectual property, Mori Hamada & Matsumoto is distinguished among domestic firms for its cross-border capabilities; leveraging the presence it has on the ground in Bangkok, Beijing, Jakarta, Shanghai, Singapore and Yangon, it protects, enforces and commercialises trademark rights efficaciously across the region. Invigorated by the arrival of former chief judge of the IP High Court, Ryuichi Shitara, the IP group counts litigation as a strong suit. In recent highlights, chief of the watch Yutaka Miyoshi won a substantial trade dress infringement case at the Tokyo District Court acting on behalf of a large commodity goods client. Miyoshi is an experienced transactional lawyer and litigator with international expertise that extends beyond Southeast Asia to Europe and the United States. Hailed for its “practical thinking” and “high-quality work”, Nakamura & Partners is “a long-established boutique” and a “strong player in Japanese intellectual property”. The firm is a touchpoint for foreign brands, but has lately been increasing its activities for domestic companies looking to expand abroad and file in other Asian jurisdictions. As a result of the collaborative approach taken by the patent, trademark and legal divisions, no aspect of IP prosecution, counselling, transactions or enforcement falls outside the firm’s ambit. With five individuals featuring in the WTR 1000 this year – more than any other firm in Japan – it deploys an incredibly strong bench for its clients. Koichi Tsujii is the first among equals, standing out for his expertise on US-Japan IP issues. In terms of deep trademark specialisation Hiroyuki Itaki is a key name to note. Shinichiro Tanaka has broad horizons and a healthy practice in IP, entertainment and media and unfair competition law. Yoshio Kumakura is also a polyglot, but is best known for his litigation and alternative dispute resolution dexterity. Kazuko Matsuo has a flair for IP-rich transactions but is also a hugely experienced advocate.
Nishimura & Asahi
Nishimura & Asahi is home to more than 500 lawyers, making it the largest commercial law firm in Japan. Running a highly sophisticated IP practice designed to meet the needs of discerning international clients, it can navigate complex transactional and litigation matters with poise. Also adroit in prosecution, it handles trademark and design filings, as well as domain name registrations, swiftly and in line with clients’ commercial goals. Makoto Shiotani is a key point of contact for non-contentious matters and is a savvy portfolio manager who can also enforce at a high level. An experienced law professor, of counsel Nobuhiro Nakayama is on hand for high-level strategic guidance on IP litigation and transactions. Litigations and transactions maven Hitomi Iwase leads the group with style. Seiwa Patent & Law has 100 qualified patent attorneys; a fifth of which work in the side’s world-class trademark practice which shines brightest on filing and registration. Able to handle large volume projects without sacrificing on quality, the Seiwa practitioners prosecute trademark applications with commercial savvy at home and abroad. With a number of lawyers in its ranks, the team is eminently comfortable when running litigation. Nami Togawa is an experienced trademark all-rounder who manifests a rare faculty for anti-counterfeiting and enforcement in the digital realm.
SOEI Patent & Law Firm
Praised by foreign associates for its “smart handling of even the most difficult trademark cases”, SOEI makes its sophomore appearance in the WTR 1000 this year. The forward-thinking ensemble is home to a team dedicated to serving international clients. All SOEI’s professionals are fluent in English and are popular with well-known international brands looking to establish safeguards in Japan. One of the roster’s leading trademark specialists, Ai Kato devotes her time and energy to securing the right results for her clients and implements future-proof brand protection strategies. No longer just a patent agency, SUGIMURA reinvented itself as a boutique IP law firm in 2017. It is now in a position to offer litigation and a selection of other legal services to brand owners, but has not taken its eye off prosecution by any means and maintains the high-level patent and trademark filing expertise it has developed over decades. The team understands the culture and workings of the Japanese Patent Office and knows how to operate optimally within the system. Kenichi Nakayama provides resolute leadership to the trademark and designs section and is an authority on rights protection and enforcement; his alternative dispute resolution prowess is something special to note. Perennial gold-tier member TMI Associates has expanded its trademark team with new attorneys and paralegals, such is the demand for its commercially attuned counsel on everything brands related. The full-service firm’s IP contingent is a repository of trust for blue-chip IP owners in the fashion and luxury goods sectors, who appreciate its ability to identify and execute creative solutions to trademark conundrums that leave others scratching their heads. Some of the most glowing feedback is reserved for partner Takeshi Hironaka, an IP strategist who “presents incredibly thoughtful opinions, expert analyses and extremely clear summaries and recommendations”. Mitsuko Mimi Miyagawa has broad horizons both in terms of practices and the geographic scope of her activities; she handles trademarks, designs and copyright matters with equal dexterity, is a master of commercial and IP litigation and is a member of the firm’s France and China practice groups. Another multi-talented lawyer, Yoshiyuki Inaba is steeped in patent and trademark practice. Bringing US experience into the mix, Shunji Sato currently serves on the board of the International Trademark Association. Storied multi-disciplinary law firm YUASA and HARA has accomplished legal, patent and accounting arms, which work together in perfect harmony. This structure is unique among WTR 1000­-ranked Japanese firms and provides clients with boutique-like, highly specialised services, in addition to access to a limitless cache of resources. On the trademark side, YUASA and HARA dishes out holistic advice utilising the extensive experience of its practitioners and acts as a commercial collaborator with patrons at every stage of a brand’s lifecycle. Hiromichi Aoki is oft-cited as one of the best in the business of brands, earning plaudits for his “top quality prosecution work” and “incredible experience”. Other names to note on a deep bench are law division directors Toshiaki Iimura, Toshiaki Makino and Osamu Suzuki, all great options for companies that want a single point of contact for their corporate and IP affairs. Top-tier professional Kozo Yabe has helped to refine the Japanese IP environment and is an authority on e-commerce and licensing, among other subjects.

Luminaries

Hisao Fukami - Fukami Patent Office
Yoshio Kumakura - Nakamura & Partners
Toshiaki Makino - YUASA and HARA
Kazuko Matsuo - Nakamura & Partners

Individuals: enforcement and litigation

Mitsuko Mimi Miyagawa - TMI Associates
Lloyd Parker - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Kozo Yabe - YUASA and HARA
Chikako Hashimoto - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Hitomi Iwase - Nishimura & Asahi
Eiichiro Kubota - KUBOTA
Nobuhiro Nakayama - Nishimura & Asahi
Wataru Sueyoshi - STW & Partners
Michiru Takahashi - Jones Day
Koichi Tsujii - Nakamura & Partners
Yoshiki Abe - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Toshiaki Iimura - YUASA and HARA
Yutaka Miyoshi - Mori Hamada & Matsumoto
Yasufumi Shiroyama - Anderson Mori & Tomotsune
Osamu Suzuki - YUASA and HARA
Kensaku Takase - Baker McKenzie Gaikokuho Joint Enterprise
Shinichiro Tanaka - Nakamura & Partners
Daisuke Tatsuno - Baker McKenzie Gaikokuho Joint Enterprise

Individuals: prosecution and strategy

Yoshiki Abe - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Hiromichi Aoki - YUASA and HARA
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
Hitomi Iwase - Nishimura & Asahi
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, PC
Kenichi Nakayama - SUGIMURA & Partners
Lloyd Parker - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Shunji Sato - TMI Associates
Makoto Shiotani - Nishimura & Asahi
Michiru Takahashi - Jones Day
Tomoe Takahashi - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Kensaku Takase - Baker McKenzie Gaikokuho Joint Enterprise
Kozo Takeuchi - Takeuchi IP Office
Daisuke Tatsuno - Baker McKenzie Gaikokuho Joint Enterprise
Nami Togawa - Seiwa Patent & Law
Miki Tomii - Fukami Patent Office
Reiko Toyosaki - Toyosaki & Associates
Close

Register for more free content

  • Read more World Trademark Review blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 74