Thomson Reuters IP & Science
IPBC Asia 2014
IAM

Japan

The Japanese market is in good health, with practitioners reporting an increase in trademark filings and a more assertive approach to enforcement among domestic brand owners. At the time of writing, the country was awaiting formal confirmation of proposed amendments to the laws governing non-traditional marks. If these are enacted as expected, trademark protection will be extended to motion, hologram, colour, position and sound marks. Although litigation is the rise, court cases are still few and far between. The firms that thrive in Japan are those which can offer a broad range of services.

Firms

1
Nakamura & Partners
TMI Associates
2
Baker & McKenzie Gaikokuho Joint Enterprise
Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
3
Abe Wada & Watanabe
Anderson Mori & Tomotsune
Asamura Patent Office pc
Fukami Patent Office
Matsubara, Muraki & Associates
Mori Hamada & Matsumoto
Nishimura & Asahi
Seiwa Patent & Law

Gold 

Nakamura & Partners

“Nakamura & Partners is the firm to beat for trademarks.” The renowned boutique blends deep domestic insight with impressive international capabilities to produce one of the most cosmopolitan services around. Its vast cadre of “detail-focused experts” shines on prosecution matters, while the “relentlessly hardworking and effective” dispute resolution team ensures there is no let-up in quality in the contentious sphere either. “True authority” Kazuko Matsuo is “quite simply one of Japan’s sharpest legal minds”. Trademark chief Hiroyuki Itaki is a “fine strategist who has heavyweight knowledge of both contentious and non-contentious issues”. Courtroom maestro Yoshio Kumakura is a go-to reference for tricky disputes.

TMI Associates

Full-service ensemble TMI Associates boasts a “top-class” commercial understanding of intellectual property and its portfolio managers excel at creating value for companies. The firm’s general dispute resolution prowess translates well to the contentious trademark sphere, and trial lawyers team up with trademark specialists to offer robust litigation and enforcement services. Mitsuko Miyagawa is a “significant courtroom presence” and is especially known for her work with companies in the luxury goods sector. The “responsive and attentive” Takeshi Hironaka is another seasoned litigator.

Yuasa and Hara is one of the oldest and most renowned IP outfits in Japan and its trademark division continues to attract a slew of foreign and local clients. Prosecution and portfolio management comprise the greater part of the team’s workload, with peers praising its ability to “take on the largest portfolios with efficiency”. “Well-regarded all-rounder” Kozo Yabe is feted for his “meticulous manner and detail-oriented approach”. Osamu Suzuki and Yukio Yagyu are both “determined and agile lawyers, focused on delivering expedient solutions”. Hiromichi Aoki draws glowing notices for his “truly excellent technical knowledge”.

Silver 

Baker & McKenzie Gaikokuho Joint Enterprise

The Tokyo outpost of international powerhouse Baker & McKenzie is a respected name in brand protection. With a proven ability to coordinate seamlessly across its extensive worldwide network, it is a real favourite among international household names. As well as tending to the needs of prestigious multinationals, the redoubtable team helps Japanese companies to exploit their portfolios abroad and also runs effective enforcement operations across the Asia-Pacific region. Key IP partner Kenichi Nakayama secures unanimous praise for his trademark know-how and “razor-sharp legal mind”.

Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo

Hogan Lovells’ Japanese office “stands toe to toe with any other domestic practice and offers truly excellent trademark services”. One of the most well-established foreign firms on the market, it has over 20 years of experience advising clients on local trademark protection and enforcement. Its cultured team is staffed by practitioners with extensive experience in key business centres in the Middle East, Europe and the United States – a great boon to its international clientele. “Multitalented litigator” Eiichiro Kubota combines “keen local insight with an international outlook”, while managing partner Lloyd Parker “offers precise strategic advice that always takes into account his clients’ diverse business needs”.

Bronze 

Abe Wada & Watanabe

Abe Wada & Watanabe is an enduring fixture on the trademark landscape. It excels across the spectrum of commercial law and brings this insight to bear on critical trademark litigations and cross-border transactions. Respected IP practitioners Yoshiki Abe and Hiromi Watanabe between them have decades of experience. Their sage counsel encompasses the full range of brand protection issues, though commentators particularly highlight their finely honed conflict resolution skills.

Anderson Mori & Tomotsune

One of Japan’s leading general practice firms, Anderson Mori & Tomotsune is a “seriously strong contender” in the trademark space. The team has attracted an array of high-end brand owners thanks to the efficiency of its prosecution operation and the “shrewd strategic insight” it can supply on portfolio development questions. Satoshi Miyagaki is a partner within the intellectual property, life sciences and TMT division and a key contact for rights holders.

Asamura Patent Office pc

The “remarkably consistent” Asamura Patent Office has a “distinguished pedigree” when it comes to trademark practice. Domestic filings are meat and drink for the group, although its doughty legal affairs department has also proved its mettle in licensing negotiations and infringement litigation. Vice president Hajime Asamura is a valuable contact for clients.

Fukami Patent Office

With bases in Osaka and Tokyo, “venerable institution” Fukami Patent Office services the needs of a client base drawn in large part from the domestic electronics market. The technically adept group bests the competition when it comes to filing and prosecution, and is renowned for its insight into international brand protection. Kozo Takeuchi wins praise from for the “superb quality and profound effectiveness of his overall advice”. Patent attorney and infringement litigator Hisao Fukami is an “influential and much-valued figure”.

International pace setter Jones Day maintains a versatile Japanese operation. The Tokyo contingent provides customised solutions to brand owners, particularly within the context of global enforcement programmes. Its strength in depth also enables it to offer quality – and competitively priced – prosecution services. At the helm of this “commercially focused and legally astute” group is Michiru Takahashi, a “consistently brilliant” practitioner who provides “unfailingly thoughtful counsel on all issues”.

Matsubara, Muraki & Associates

The “consistently outstanding” Matsubara Muraki & Associates has been at the forefront of the IP market since its inception in 1973. The boutique guides clients through domestic issues with a steady hand, while a carefully cultivated network of foreign correspondents makes it a popular choice for the management of international affairs. Prosecution is a mainstay of the practice,  though the group has extended its services into areas such as anti-counterfeiting, domain name dispute resolution and licensing. Founding partner Kiyoshi Muraki is lauded for his “determination and resolve” in safeguarding clients’ rights.

Mori Hamada & Matsumoto

Mori Hamada & Matsumoto operates in the upper echelons of corporate Japan and instructing it on IP matters “yields outstanding results”. While the group garners the most vocal praise for its patent capabilities, it also shines in the trademark area, where brand licensing and other transactional matters are a forte. Its litigation division is frequently sought out by both domestic and international companies embroiled in high-stakes disputes. Masayuki Matsuda is a useful first point of contact.

Nishimura & Asahi

General commercial outfit Nishimura & Asahi operates across borders from regional outposts strategically located throughout Asia. Its comprehensive trademark offering is bolstered by its assured corporate practice, with clients extolling its “ability to cover all bases and legal needs”. Of counsel Nobuhiro Nakayama is a “true pioneer when it comes to trademark work”, while former judge Eiichi Fukushima is “a veteran disputes expert who always provides first-rate advice”.   

Seiwa Patent & Law

The deeply experienced practitioners at Seiwa Patent & Law specialise in the management of large-scale trademark portfolios. With the assistance of the firm’s acclaimed squad of litigators, it also proves formidable on the enforcement side. The team has a special affinity with foreign clients and associates and is a favoured destination for inbound referral work. Esteemed partner Nami Togawa “bridges the gap between the foreign and domestic markets excellently” and is greatly valued by his top-end client base.

Founded over a century ago as part of a cooperative of legal and tax professionals, Sonderhoff & Einsel remains “a real institution on the IP scene”. The illustrious group maintains this diversity today and, alongside tax and business law consultation, it offers “insightful and intimate knowledge of a host of trademark issues”. “Worldly and perspicacious practitioner” Felix Einsel has strong ties with European companies and is renowned for assisting them across Asia-Pacific.

Sugimura International Patent and Trademark Attorneys was established in 1923 and is one of the most storied IP outfits on the market. It is best known for its prodigious filing output, though it also advises on contentious matters while winning plaudits for its commercial acumen at the transactional negotiating table. With offices in both Japan and the United States, it is well placed to advise domestic and foreign brand owners. Firm president Kenji Sugimura is the first port of call for clients.

Individuals: enforcement and litigation

Kazuko Matsuo - Nakamura & Partners
Mitsuko Miyagawa - TMI Associates
Kozo Yabe - Yuasa and Hara
Eiichi Fukushima - Nishimura & Asahi
Eiichiro Kubota - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
Wataru Sueyoshi - STW & Partners

Individuals: prosecution and strategy

Yoshiki Abe - Abe Wada & Watanabe (Tokyo)
Hiromichi Aoki - Yuasa and Hara (Tokyo)
Felix Einsel - Sonderhoff & Einsel (Tokyo)
Hisao Fukami - Fukami Patent Office (Osaka)
Takeshi Hironaka - TMI Associates (Tokyo)
Hiroyuki Itaki - Nakamura & Partners (Tokyo)
Ai Kato - SOEI Patent & Law Firm (Tokyo)
Yoshio Kumakura - Nakamura & Partners (Tokyo)
Kazuko Matsuo - Nakamura & Partners (Tokyo)
Mitsuko Miyagawa - TMI Associates (Tokyo)
Kiyoshi Muraki - Matsubara, Muraki & Associates (Tokyo)
Kenichi Nakayama - Baker & McKenzie Gaikokuho Joint Enterprise (Tokyo)
Nobuhiro Nakayama - Nishimura & Asahi (Tokyo)
Lloyd Parker - Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo (Tokyo)
Osamu Suzuki - Yuasa and Hara (Tokyo)
Michiru Takahashi - Jones Day (Tokyo)
Kozo Takeuchi - Fukami Patent Office (Osaka)
Nami Togawa - Seiwa Patent & Law (Tokyo)
Hiromi Watanabe - Abe Wada & Watanabe (Tokyo)
Yukio Yagyu - Yuasa and Hara (Tokyo)
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