Japan

Postponing the Tokyo 2020 Olympic Games until 2021 may have left a massive dent in the trademark landscape – not to mention disappointing sports fans worldwide – but Japan remains focused on improving its IP protection system. With the number of trademark applications filed at the Japan Patent Office (JPO) rising while the number of trademark examiners has fallen, filings have begun to significantly exceed examinations, thus increasing total pendency – the period from application filing to final trademark grant or refusal – from six months in 2014 to 10.9 months in 2019. In response, the JPO has renewed efforts to improve the efficiency of examination practices and strengthen its examination system. At the same time, the office can breathe a sigh of relief as the world’s most prolific trademark filer, Ikuhiro Ueda, slowed down his filing activity to less than 100 applications between September and December 2019; Ueda had filed 108,000 applications since 2014. In addition, the JPO has launched an anti-counterfeiting awareness campaign to help domestic SMEs confront fake goods manufacturers.

Firms: enforcement and litigation

Firms: prosecution and strategy

Anderson Mori & Tomotsune

Adept in both contentious and non-contentious IP matters, full-service law firm Anderson Mori & Tomotsune runs a well-balanced IP practice. Already established throughout Asia, the set recently expanded with associated firms commencing practice in Hong Kong and Jakarta. Yasufumi Shiroyama takes the reins of the IP group, while prosecution expert Takahiro Kitaguchi files international and domestic trademark applications.

Aoyama & Partners

One of the largest IP firms in Osaka, Aoyama & Partners makes its sophomore appearance in the WTR 1000 this year. Foreign associates fully trust the team of 30 – including 10 trademark attorneys – to effectively prosecute trademarks and deal with anti-counterfeiting matters in Japan. Motohiro Katsumi, Yosuke Tanaka and Mayumi Kawamoto are the stars of the trademark department, representing brand owners in all sorts of matters. Where Katsumi excels in managing global trademark portfolios, Tanaka advises on anti-counterfeiting, unfair competition and domain name disputes, as Kawamoto takes charge of administrative litigation and licence negotiation.

Asamura Patent Office PC

Steeped in nearly 130 years of history, Asamura Patent Office lays claim to being the oldest IP firm in Japan. With a nimble team of 10 trademark professionals drawing on a wealth of expertise from former JPO examiners, the IP boutique excels at trademark prosecution. Kazutaka Otsuka is director of the trademark and design department.

Baker McKenzie

Clients calling on the trademark services of Baker McKenzie (Gaikokuho Joint Enterprise) can expect nothing less than an “excellent grasp of both Japanese and overseas law” from “a leading team of specialist lawyers and trademark attorneys”. The largest international law firm in Japan offers an A-to-Z of trademark services, ranging from prosecution to enforcement and IP commercialisation. “It is a one-stop shop that strives for excellence in its work and provides top-level advice. They are my go-to firm for trademark and IP matters.” Laser-focused on trademarks for more than two decades, Kensaku Takase captains the 18-strong IP and IT practice group. He recently assisted Amadeus Code, a Japanese company that creates music through AI, on its IP issues. “Besides being approachable and friendly, Ken has a deep knowledge of my company and our services, which is helpful for making communications straightforward and receiving the advice we need in a timely manner.” “Ken has an excellent grasp of trademark law in Japan and other Western countries, so he can focus on differences or surprises that a European lawyer might face with Japanese law. He offers a special service through his understanding of his clients’ businesses and knowledge of industry trends.” Meanwhile, Daisuke Tatsuno dispenses sage advice on anti-counterfeiting and contentious matters.

Borders IP 

In only a handful of years Borders IP has already taken the IP industry by storm. Founded in 2016 by Kumpei Kogure after leaving SOEI Patent & Law Firm, the IP boutique has made waves in the international IP community and foreign associates cannot help but sing its praises. “Borders IP is a refreshingly different Japanese firm, with one foot in traditional Japanese practice and one foot leaping into a more global approach to trademark practice,” states one supporter. “Not only did Kumpei train under several very experienced trademark attorneys early in his career, for the past decade, he has put his own practical and refreshing adaptation to the approach taken by most Japanese practitioners.” For US companies seeking responsive Japanese counsel, the set provides a solid grasp of international practices: “Kumpei commonly uses his familiarity with US law to explain and contrast aspects of Japanese practice that differ from the United States. As such, Borders IP is careful and thoughtful, yet extremely efficient, while Kumpei is energetic, funny, thorough and pragmatic in his approach to meet client goals.” With Kogure at the helm, it is little wonder that the group has already made such great strides. “When Kumpei started his own firm, I followed him because of his professionalism and multiple skills as a lawyer.” “He is very reliable and responsible, providing good quality work for reasonable fees.”

Fukami Patent Office

Celebrating 51 years since its establishment, Fukami Patent Office has blossomed into the second largest IP firm in Osaka, with branches in Nagoya and Tokyo as well. Trademark prosecution is the team’s forte, although the group also covers copyright and unfair competition issues. Miki Tomii oversees 12 attorneys and more than 20 paralegals in the trademark and law division.

Hogan Lovells

“What is special about Hogan Lovells Tokyo is that they are a hub office, so they can deal with all sorts of trademark matters through their worldwide network including the firm’s local offices and other associates.” Working as one entity worldwide, the 50-strong team of trademark specialists holds diverse qualifications spanning nine jurisdictions throughout Asia, Europe and the United States. In this way, the experienced professionals “provide proactive and helpful advice, as well as add their own professional touch to the local agent’s opinion and advice”. Going from strength to strength, the set recently added a Japan-qualified patent attorney and a German trademark lawyer to enhance its multi-jurisdictional trademark capabilities. Lloyd Parker steers the IP, media and technology group, advising major Japanese companies on a litany of trademark issues from prosecution and branding to anti-counterfeiting strategies and recordal of licences. Meanwhile, polyglot Nicolas Hirt is an expert on trademark issues in the European Union. Recently promoted to partner, native Japanese Tomoe Takahashi is a “very helpful, friendly and professional” lawyer who is qualified in New Zealand, the United Kingdom and, most recently, Ireland. “Tomoe is talented. She meets all my criteria – quick responses; helpful, proper and accurate legal advice; and something extra useful that can be provided by a counsel.”

Jones Day

Jones Day has become an indispensable partner in global trademark strategies for some of the most well-known multinationals. From Dell and Micro Matic to NEP Group and Kiss Nail Products, clients of all stripes flock to the full-service law firm for its comprehensive services in prosecuting and enforcing trademarks. Moreover, the team has been advising Sunkist Growers for over a decade since it transferred its entire trademark portfolio to the side in Japan in 2009. Michiru Takahashi is a favourite among global giants. “Michiru is thorough and knows our portfolio and risk tolerance. She anticipates follow-up questions we may ask and includes that information in her reports.” “Extremely thoughtful and detail-oriented, she goes above and beyond to cater to our needs.”

KUBOTA

“Put simply, KUBOTA is the go-to trademark boutique in Japan. Not only are they responsive, they can advise clearly on strategy, cutting through complex matters easily and adeptly, which is not typical of Japanese counsel across the board. Furthermore, despite their compact size, they have big firm thinking that they deliver to their client’s advantage.” The team of 10 provides solid advice on trademark issues to deliver results for a range of brand owners, including clothing companies such as Patagonia, H&M and Nike. Among its enviable client list are Apple, Mercedes Benz, Nissan Chemicals and Starbucks too. “An elder statesman of the Japanese IP industry, extremely well connected, thorough and very commercial,” Eiichiro Kubota leads the outfit, working closely with WTR 1000 debutante Tomoko Honami on trademark prosecution and IP litigation. “Eiichiro and Tomoko are among our favourite counsel. We highly appreciate and value their expert advice and partnership. They are great communicators who always take the time to meet us and participate in phone calls to make sure our concerns and needs are addressed.” “Acting quickly and effectively, they not only employ creative strategies to achieve the desired results, they provide outstanding service.” Honami in particular is praised for her anti-counterfeiting efforts, which include providing periodic training to customs officials and working closely with them in customs identification and seizure proceedings. “Tomoko is very responsive and provides advice that is clear and practicable even to a non-Asian lawyer. She drafts very clear submissions, and she is very nice as a person!” “An absolute delight to work with,” Rika Yamazaki handles Fast Retailing’s trademark portfolio worldwide, including brands Uniqlo and GU. “She adeptly manages matters with ease. Her laser-like analysis of issues and thorough questioning keep foreign counsel on their toes.” “Well known in the IP world for her remarkable work and experience, Rika’s trademark practice is outstanding, professional and accessible. Her services are of the highest quality in Japan as she gives complete opinions and always provides excellent results. She is exceptionally dedicated and committed to her clients to help them achieve their goals too, for she always finds a way to overcome difficulties.” “A great addition to the team,” newly promoted partner Yusuke Inui deserves a mention as well.

Kyowa Patent & Law Office

Kyowa Patent & Law Office not only prosecutes trademarks for Japanese companies, it also recently obtained IP High Court approval for Daimler to register the trademark for its electric vehicle brand EQ. What is more, the firm boasts a dedicated China department of one Chinese lawyer supported by four employees, who have begun to work on rights acquisition and anti-counterfeiting strategies. Partner Manabu Miyajima is a key contact for the address book.

Matsubara, Muraki & Associates, PC

Deeply focused on trademark matters, Matsubara, Muraki & Associates has been covering all sorts of soft IP rights, from trademarks and domain names to designs and copyrights, for nearly half a century. The Tokyo-based firm also handles anti-counterfeiting and unfair competition matters. Founding partner Kiyoshi Muraki is the first port of call.

Mori Hamada & Matsumoto

Since establishing its trademark and design practice in 2014, Mori Hamada & Matsumoto has beefed up its prosecution side substantially through a merger with Naofumi Tanaka’s team. Shiseido is among the global operators that the full-service law firm assists for trademark matters – handling more than 1,000 new applications and another 1,000 renewals around the world for the cosmetics company in 2018. The outfit also has a strong regional footprint with seven overseas offices, including in China, Myanmar, Singapore and Thailand. Yutaka Miyoshi is an expert on contentious trademark matters and IP-related transactions, while representative partner for the Beijing office Yoshifumi Onodera sets his sights on dispute resolution.

Nakamura & Partners 

For the past 11 years Nakamura & Partners has topped both the enforcement and prosecution tables of the WTR 1000. Tending to the IP needs of Japanese companies and multinationals since 1914, the IP boutique handles everything from filing trademark applications to managing oppositions and trials through a group of 10 experienced trademark attorneys. The side also collaborates closely with the legal team – led by Shinichiro Tanaka – to enforce clients’ valuable IP rights. Managing partner Hiroyuki Itaki is a fan favourite of foreign associates, while Koichi Tsujii is currently serving as the president of the International Association for the Protection of Intellectual Property, Japan.

Nishimura & Asahi

“Prompt, reliable, thorough and good quality” is the best way to describe gold-ranked Nishimura & Asahi, one of the Big Four law firms in Japan. “I would recommend Nishimura & Asahi for their trademark work without a doubt,” says one contact. “Their advice can always be passed straight on to the client without any changes – it is invariably clear and precise. It is also always commercial whilst taking account of the legal position. The team responds very quickly and within very short deadlines.” Taking charge of the trademark department, Hitomi Iwase leads IP litigation and transaction cases with the support of Naoko Omukai in Japan and more complex jurisdictions such as Pakistan and Saudi Arabia. Meanwhile, Makoto Shiotani covers trademark prosecution and enforcement. Former law professor Nobuhiro Nakayama dishes valuable advice to the outfit, as well as serving on government councils such as the Strategic Council on Intellectual Property. Patent and trademark attorney Chisako Yagi receives high praise from one satisfied customer: “Our clients require and are willing to pay for service from the best lawyers and Chisako meets that criteria. Besides providing top-level service with next-day delivery, her knowledge of the law is both broad and deep. She never loses sight of the big picture and client objectives. She is a valued partner for our trademark work in Japan.”

Saegusa & Partners

Osaka-based Saegusa & Partners makes its sophomore appearance in the WTR 1000 for 2021. Japanese companies make up the bulk of its clientele, but foreign associates also have nothing short of high praise for the firm. “They are always my first port of call for trademark issues in Japan.” “Over the years, I have found all their staff, from the most senior attorneys to administrative assistants, to be consummate professionals who provide excellent service. Their written English is exceptionally good and they are responsive, without requiring follow-ups from our end.” Always professional and effective, the firm builds long-lasting partnerships, never failing to deliver comprehensive and detailed analysis – even in complex cases. “The firm’s reliability and ability to see the crux of the matter are the keys to their service. We have a friendly relationship with them, which contributes greatly to their quality of work and responsiveness. Their attorneys are highly professional, personable and efficient with a deep understanding of not only Japanese trademark law but international standards.” The commendations continue: “Work is always efficient and communication is clear and concise. They also take the time to understand the client’s business so they can take into account their commercial needs, rather than simply acting on instructions. They always clearly communicate any issues that arise with well-thought-out solutions, which represents excellent value for money as they understand and truly represent my clients.” As well as having Chinese personnel on hand to ensure that operations run smoothly, Tomoko Iwai captains the “group of well-established professionals with in-depth knowledge about their subject domains”. Iwai is “a very capable and sharp trademark practitioner who is innovative and always ready to accept challenges”. Meanwhile, exceptional practitioner Eiji Tanoue is “quick to grasp the needs of clients, while also taking the time to understand the commercial goals and provide tailored advice to achieve the best result possible”. Mami Yoshikawa similarly provides an outstanding level of service. The main contact for Chinese patrons, Feifei Li is highly regarded by peers in China: “Feifei is always ready to respond to our numerous and often urgent enquiries via WeChat with great patience and constant professionalism.”

Seiwa Patent & Law 

With 15 patent attorneys, including eight attorneys at law, Seiwa Patent & Law guides trademarks through all stages of their lifecycle from filing and registration to opposition and litigation. Domestic giants Denso Corporation and FamilyMart, as well as foreign entities such as IKEA and LG Electronics, are among those that have come to depend on the IP boutique to manage their trademark portfolios. Senior partner Nami Togawa takes charge of the trademark and design departments.

Shiga International Patent Office

The largest patent firm in Japan is not to be trifled with in the trademark space. After years of close collaboration with such a “valuable and reliable partner”, foreign associates have come to expect nothing less than exemplary services from Shiga International Patent Office. With work that is “top-notch, timely and meticulous to a fault”, the team is admired for its dynamic approach. “No matter how complex and/or urgent, they provide excellent guidance.” “The lawyers respond promptly to questions and provide strategic advice based on the intricacies of Japanese practice that a foreign IP lawyer would not know about. Their work is conducted efficiently and accurately according to our instruction. We always highly recommend their superior expertise in Japanese IP law.” “I have never had to chase or remind them about a piece of work, and rarely do I have follow-up questions or require any clarification because what is sent out is clear and complete. They truly walk the walk and are simply a joy to work with.” Vice president Hirohisa Suzuki first established the trademark practice over 25 years ago. “A leading expert in trademark and designs, Hirohisa has extensive experience and outstanding expertise in international brand and designs portfolio management, as well as trademark prosecution and anti-counterfeiting.” Always dedicated and on hand, patrons can “rely on him to provide innovative solutions and strategic advice through the best service to secure and exploit trademark rights without having to supervise his work”. “Having met Hirohisa in person, I’ve observed that his amiable and easy-going disposition belies his strong work ethic. He is someone who values his clients and demonstrates that through his actions at every turn.” Making his first appearance in the WTR 1000 this year is Ryuichiro Mashima. As director of the trademarks and designs division, he oversees 19 patent and trademark attorneys while also handling domestic matters.

SOEI Patent & Law Firm

Since 1988 SOEI Patent & Law Firm has had its sights set on resolving the full spectrum of IP issues. The IP boutique has seven and 15 patent attorneys dedicated to design and trademark cases, respectively, as well as a special IT management department to ensure that client needs are met efficiently and effectively. Six attorneys at law are also on hand to tackle contentious matters. Ai Kato leads the trademark department.

SUGIMURA & Partners 

Founded in 1923, SUGIMURA & Partners reinvented itself as a boutique IP law firm in 2017 with the addition of litigation services to its well-established IP prosecution capabilities. Through an expansive global network including lawyers in Silicon Valley, the ensemble assists foreign and domestic companies alike with watertight IP rights protection. Kenichi Nakayama is a US-qualified lawyer who has filed more than 4,000 trademarks in Japan.

TMI Associates 

Home to “a like-minded team of attorneys that offers reliable and consistent trademark assistance”, TMI Associates excels in all things intellectual property. The full-service outfit “offers very good solutions for trademark issues in Asia” through its excellent service and “careful, thoughtful analysis of complex issues”. “Very professional in all aspects of intellectual property, the firm has left a deep impression on us for communicating in a time and cost-efficient way.” With advice that is easy to understand, “not only are they diligent in their work, responsive and reliable, their legal knowledge is sound and their work meticulous”. “The team is cooperative and collaborative as well, which makes for a very pleasant working experience.” Shunji Sato is the go-to attorney for trademarks in Japan. “In addition to being responsive and providing clear advice, his billing rates correlate with the complexity of the work.” “An expert on Japanese IP law and practices, Shunji does not compromise on legal accuracy. He has an international mindset too, while providing commercially sound advice. He is very approachable as well.” With more than three decades of IP experience under her belt, Mitsuko (Mimi) Miyagawa recently received government recognition for her notable achievements in, and contributions to, the IP space. A brand protection specialist, she is currently a member of the Customs Dissatisfaction Review Committee. Japan-qualified patent and trademark attorney Takeshi Hironaka works closely with Miyagawa to serve global brands in a host of trademark matters ranging from prosecution to enforcement. Armed with “exemplary legal ability”, luminary Yoshiyuki Inaba’s grasp of English and Japanese make communication simple. “He is an excellent lawyer, very professional and familiar with local IP laws and regulations.” Inaba also acts as a mentor for younger lawyers who benefit from his counsel. “When the occasion arises, I know that I can count on Yoshi and his colleagues to give excellent advice.”

YUASA and HARA

As one of the oldest general law firms in Japan, with almost 120 years of history, YUASA and HARA dominates both the prosecution and enforcement tables. Having evolved alongside the country’s legal and IP systems, the IP boutique has a firm grasp on the domestic market while securing ties with associates worldwide through international networks and associations. Prosecution expert Hiromichi Aoki leads the trademark and design department, calling on seasoned litigators Kozo Yabe and Osamu Suzuki to assist with contentious matters.

Other recommended experts

From his office in Nagoya, CoTech International Inc’s Yukei Mizuno prosecutes trademarks, utility models and designs with aplomb. The founder of the eponymous Hiroe & Associates, Gifu-based Takenori Hiroe works closely with Masanori Hiroe to prosecute trademarks for foreign and domestic companies alike. Noritaka Harashima captains the trademark team at Isshiki & Co. With five other trademark attorneys at Osaka-based LEXIA Partners, Hiroki Matsui specialises in prosecuting design and trademark applications for a predominantly Japanese clientele. Miyama Shunji – a prolific writer on IP law and antitrust issues – is a patent attorney and a lawyer practising at Nakanoshima City Law Firm. Wataru Sueyoshi left STW & Partners to set up shop at Sueyoshi & Sato in January 2020. Trademark counselling and protection expert Chikako Mori plies her trade at Sun East IP Firm. Within a year of setting up camp at Takeuchi IP, Kozo Takeuchi has grown his practice and added three leading Japanese companies to his client base, filing trademarks on their behalf in more than 60 countries. Reiko Toyosaki is often found managing regional portfolios for Japanese companies at Toyosaki & Associates. After nearly six years at Hogan Lovells, Chikako Hashimoto now leads the trademark department at Sakai International Patent Office.

Individuals: enforcement and litigation

  • Mitsuko (Mimi) Miyagawa - TMI Associates 
  • Kozo Yabe - YUASA and HARA
  • Chikako Hashimoto - Hogan Lovells
  • Hitomi Iwase - Nishimura & Asahi
  • Eiichiro Kubota - KUBOTA
  • Yutaka Miyoshi - Mori Hamada & Matsumoto
  • Wataru Sueyoshi - Sueyoshi & Sato
  • Michiru Takahashi - Jones Day
  • Kensaku Takase - Baker McKenzie
  • Koichi Tsujii - Nakamura & Partners
  • Tomoko Honami - KUBOTA
  • Motohiro Katsumi - Aoyama & Partners
  • Naoko Omukai - Nishimura & Asahi
  • Yoshifumi Onodera - Mori Hamada & Matsumoto
  • Yasufumi Shiroyama - Anderson Mōri & Tomotsune
  • Miyama Shunji - Nakanoshima City Law Firm
  • Osamu Suzuki - YUASA and HARA
  • Shinichiro Tanaka - Nakamura & Partners
  • Daisuke Tatsuno - Baker McKenzie

Individuals: prosecution and strategy

  • Hiromichi Aoki - YUASA and HARA
  • Hiroyuki Itaki - Nakamura & Partners
  • Hitomi Iwase - Nishimura & Asahi
  • Kumpei Kogure - Borders IP
  • Lloyd Parker - Hogan Lovells
  • Shunji Sato - TMI Associates 
  • Kensaku Takase - Baker McKenzie
  • Chikako Hashimoto - Hogan Lovells
  • Takeshi Hironaka - TMI Associates
  • Nicolas Hirt - Hogan Lovells
  • Tomoko Iwai - Saegusa & Partners
  • Ai Kato - SOEI Patent & Law Firm
  • Motohiro Katsumi - Aoyama & Partners
  • Eiichiro Kubota - KUBOTA
  • Kenichi Nakayama - SUGIMURA & Partners
  • Makoto Shiotani - Nishimura & Asahi
  • Hirohisa Suzuki - Shiga International Patent Office
  • Michiru Takahashi - Jones Day
  • Tomoe Takahashi - Hogan Lovells
  • Kozo Takeuchi - Takeuchi IP
  • Naofumi Tanaka - Mori Hamada & Matsumoto
  • Eiji Tanoue - Saegusa & Partners
  • Daisuke Tatsuno - Baker McKenzie
  • Nami Togawa - Seiwa Patent & Law
  • Miki Tomii - Fukami Patent Office
  • Noritaka Harashima - Isshiki & Co
  • Masanori Hiroe - Hiroe & Associates 
  • Mayumi Kawamoto - Aoyama & Partners
  • Takahiro Kitaguchi - Anderson Mōri & Tomotsune
  • Ryuichiro Mashima - Shiga International Patent Office
  • Hiroki Matsui - LEXIA Partners
  • Yukei Mizuno - CoTech International
  • Chikako Mori - Sun East IP Firm
  • Yosuke Tanaka - Aoyama & Partners
  • Reiko Toyosaki - Toyosaki & Associates
  • Rika Yamazaki - KUBOTA

Luminaries