Japan

Although Japan is one of the most mature trademark markets in the Asia-Pacific region, practitioners report that counterfeiting remains a significant problem due to the influx of infringing products entering the market via China. Since the registration of non-traditional marks received the green light four years ago, appetite for these unconventional marks has only gone up and the Japan Patent Office (JPO) issued its first sound mark in 2017. The WTR 1000 rankings for 2019 remain fairly consistent with the previous year, although several firms have earned promotions; Nishimura & Asahi moves up to gold and Anderson Mori & Tomotsune and Mori Hamada & Matsumoto ascend to silver. While KUBOTA makes its first appearance on the list.

Firms

Anderson Mori & Tomotsune

Anderson Mori & Tomotsune is going from strength to strength and has, in recent years expanded into key Southeast Asian markets. As one of the firm’s earliest practice groups, the trademark department is built on strong foundations and adds value for clients by making judicious use of the firm’s network of five bureaux dotted across China and the rest of Asia. Lately, the Singapore office proved to be instrumental when a Japanese TV company instructed the firm to conduct a pan-Asian licensing exercise. Possessing a nuanced understanding of the regulatory issues facing pharmaceutical and medical device companies, IP group chief Yasufumi Shiroyama advises around brands in those sectors holistically. A fresh face in the WTR 1000 this year, Takahiro Kitaguchi is a prosecution whizz with an incisive understanding of domestic and foreign filing strategies.

Asamura Patent Office PC

“One of the most renowned Tokyo firms,” clients of Asamura Patent Office enjoy access to a carefully cultivated network of foreign associates. With a nimble team of 10 trademark professionals, the firm comes recommended for its wealth of expertise in Japan Patent Office (JPO) procedures and proceedings thanks to the former JPO examiners in the team. Having led the Trademark International Classifications Management Office and Trademark Examination Standards Office, Hiroko Hirayama is a name for the contact book.

Baker McKenzie (Gaikokuho Joint Enterprise) 

Baker McKenzie’s Tokyo office “transcends cultural, language, time-zone and cross-jurisdictional legal barriers” to serve Japanese and foreign brand owners “in a highly strategic manner”. Underpinned by a sprawling international network, the firm excels in managing global portfolios and coordinating region-wide anti-counterfeiting programmes; in addition, the bilingual squad of trademark professionals are particularly good at coming up with and protecting new marks, which are specific to the Japanese market. IP and IT guru Kensaku Takase leads the illustrious practice. He is a fluent Japanese and English speaker, as is Daisuke Tatsuno whose expertise in personal information and export control adds further depth to the firm’s offering.

Fukami Patent Office

Prosecution-heavy Fukami Patent Office provides global brands with a seamless trademark service. It is well known for its representation of media and fashion clients, although the set covers a multitude of industries with poise. The licensing and contractual advice dispensed by the trademark and law division attorneys at law is a further boon to rights holders. Miki Tomii provides the division with watchful oversight. Having worked in Hong Kong and the United States, she is an excellent adviser who understand the needs of international brand owners. The firm is chaired by the pre-eminent Hisao Fukami.

Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo

Hogan Lovells is arguably the country’s most cosmopolitan trademark practice. The set’s team of lawyers are qualified in seven jurisdictions and never fail to “provide a top-notch service”. Recently, the side impressed with a series of innovative initiatives, for example, the launch of Total Brand Care – a global scheme aimed at maximising the value of brands – offers a wider scope of legal service and creative agency contacts for brand owners. The firm’s talent pool has also been enlarged with Akira Endo and Hiroshi Horie – who possess 67 years of combined in-house IP experience – joining the ranks of Wada & Watanabe-founder-turned-Lovells-consultant Yoshiki Abe. Total Brand Care was conceptualised in Tokyo by practice leader Lloyd Parker. “He is devoted to cutting-edge service standards. Armed with an incisive understanding of his clients’ businesses, he really understands what Japanese companies want in a trademark firm.” This also applies to Chikako Hashimoto, whose “pragmatic and concise advice and unfailing reliability” has earned her the trust of top-tier Japanese corporations. “Her extensive network of foreign associates gives clients a lot of flexibility too”. The set’s rising star is Tomoe Takahashi. Qualified as a Japanese bengoshi and a solicitor in England and Wales and New Zealand, she has recently concluded a secondment to the firm’s European offices. Like Parker, she “subscribes to the highest service standards and dispenses clear and commercial advice”. Frenchman Nicolas Hirt is the firm’s authority when it comes to EU trademark law.

Jones Day

Jones Day has a loyal following of marquee international clients who rely on the firm’s “consistently first-rate service”. The Tokyo office frequently collaborates with the firm’s global offices – particularly the China and Hong Kong outlets – to tackle multi-jurisdictional instructions with poise. Michiru Takahashi is “highly responsive to client  needs”. “The research she does is thorough, and she is resolutely committed to providing the best services to her clients.”

KUBOTA

Having dissolved its partnership with Hogan Lovells in 2015, the independent KUBOTA debuts in this year’s WTR 1000. Foreign associates cannot get enough of the firm’s “superb work products”, to which Lovells alumnus and KUBOTA founder Eiichiro Kubota is resolutely committed; while his colleague Rika Yamazaki attracts effusive praise as a result of her prosecution prowess.

Kyowa Patent and Law Office

Kyowa Patent and Law Office serves up a comprehensive trademark service to concerns of all stripes but is particularly well-equipped to advise those with interests in China – the trademark team includes a Chinese lawyer and the firm has a dedicated China department to boot.

Matsubara, Muraki & Associates, PC

With a laser focus on trademark work, Matsubara, Muraki & Associates offers a plethora of soft IP capabilities covering trademark, domain name, designs and copyright mandates; anti-counterfeiting and unfair competition matters are also within the purview of this Tokyo-based firm. Kiyoshi Muraki is a key contact.

Mori Hamada & Matsumoto

“Most distinguished for its copyright and patent work,” full-service law firm Mori Hamada & Matsumoto established its trademark and design practice in 2014. Despite being in its nascent stages, the practice has recently been beefed up as a result of a merger with Naofumi Tanaka’s former trademark practice at Okabe International Patent Office. He brought along a long list of marquee domestic brands when he moved over to the firm, including Shiseido. The fact is has six Asian branches is particularly useful for forward-looking Japanese companies. Yoshifumi Onodera had a stint in Beijing as the head of the Chinese office in 2014, and thus knows about enforcing trademark rights in the People’s Republic. Contentious and transactional maven Yutaka Miyoshi leads the trademark and design group.

Nakamura & Partners 

“A substantial and stable team is a key consideration for Japanese companies when it comes to portfolio management. Nakamura & Partners fits the bill as its lawyers and non-legal staff all have the experience and expertise to promote their clients’ interests. Over the years it has also made sizable investments to upgrade its docketing systems for maximum efficiency.” Clients are spoiled for choice when it comes to Nakamura trademark counsels, with sources singling out Kazuko Matsuo as “one of the vanguards in Japanese intellectual property”. Fluent English and German speaker Shinichiro Tanaka is a boon to international rights holders, while former banker Yoshio Kumakura has several successful Supreme Court appeals to his name. Qualified in both jurisdictions, Koichi Tsujii is an authority on US-Japan IP affairs. Finally, managing partner Hiroyuki Itaki stands out for his in-depth understanding of the Madrid Protocol.

Nishimura & Asahi

Nishimura & Asahi gathers glowing feedback from high-ranking foreign associates and sits at the apex of the WTR 1000 rankings for Japan. “Always striving to maximise clients’ interests, Nishimura & Asahi is far superior to the ordinary Japanese firm in the quality of advice, clarity of communications and fee arrangements. Things always get done in the right way and its impressive responsiveness means that clients can count on it to complete urgent projects.” With 10 attorneys and 15 staff devoted to trademark work, the firm can tackle instructions of all stripes with verve. Branches in Asia, the Middle East and most recently New York, mean that the firm’s sphere of influence extends into Africa and Latin America, providing truly global coverage for Japanese companies flexing their trademark muscles in far-flung markets, especially when it comes to enforcement. Hitomi Iwase is the set’s foremost authority on contentious and transactional IP and IT issues. She stands out particularly for her work in the food, cosmetic and apparel sectors. “Exhibiting a high degree of professionalism and responsiveness,” Makoto Shiotani is a source of “reliable, high-quality legal opinion”. Chairing numerous industry associations – including the Institute of Intellectual Property – of counsel Nobuhiro Nakayama knows all about cutting-edge developments in Japanese intellectual property.

Seiwa Patent & Law 

“Seiwa Patent & Law provides a reasonably priced and thorough trademark service to a collection of large multinational clients.” Comprising 15 dedicated professionals – half of whom are dual-qualified as patent attorneys and attorneys at law – the firm’s trademark offering is comprehensive. The “highly respected and responsive” Nami Togawa draws on her in-house experience to provide “skilful and practical advice”.

SOEI Patent & Law Firm

Foreign associates recommend SOEI Patent & Law Firm for its ability to “resolve complex trademark cases in a highly efficient manner”. The set is also celebrated for its ability to “provide comprehensive infringement opinions in rapid turnaround times”. Although headquartered in Tokyo, branches in Kyoto and Fukuoka ensure that Kansai and Kyushu-based brand owners are well served. Ai Kato is a key contact.

SUGIMURA & Partners 

Koji Sugimura’s arrival in 2014 injected new life into the “well-established” trademark practice at SUGIMURA & Partners. Under the stewardship of the Nishimura & Asahi alumnus, the family firm has branched out with a new legal division and doubled its trademark caseload. The firm is especially adept at assisting Japanese companies when expanding into overseas markets and lately it has been doing so for a selection of domestic heavyweights in over 180 countries. Taking the reins of the trademark and design practice is Kenichi Nakayama, a popular Japanese contact among top-ranking foreign associates who laud his “impressive responsiveness and turnaround times”. “Extremely skilful and knowledgeable about Japanese trademark law and his clients’ industries, Ken adds a lot of value with his highly pragmatic perspective and crystal-clear advice.”

TMI Associates 

One of the most internationally attuned players in Japan, TMI Associates operates 10 overseas offices across Asia, Europe and the United States and runs dedicated Chinese, French and Indian desks; clients of the firm also have access to four Japanese joint ventures operating in conjunction with foreign law firms. Renowned for her work in the fashion industry, Mitsuko (Mimi) Miyagawa garners glowing feedback from domestic peers and foreign associates alike. The courtroom sharpshooter has recently taken on directorship of the Japan Association of Arbitrators. Having served as in-house counsel at Sogo, Takeshi Hironaka sees branding issues from the client’s perspective and has a wealth of experience in avoiding the pitfalls that are associated with the overseas expansion of Japanese enterprises. One of the firm’s founding partners, Yoshiyuki Inaba is a sagacious adviser when it comes to any patent and trademark issue. Shunji Sato is another patent attorney who specialises in trademarks; he is the only Japanese member currently on the board of INTA.

YUASA and HARA 

Boutique law firm YUASA and HARA was founded 110 years ago and has developed and evolved alongside the country’s legal system. Part of the reason for the firm’s success lies in its steadfast commitment to the use of “efficient internal systems and maintaining a sizable team with client-orientated expertise”; its membership of the TerraLex and Unilaw alliances affords clients access to trademark counsels worldwide. Hiromichi Aoki offers up distilled insight into the world of non-traditional marks, having authored a book and given seminars on the topic. Erstwhile patent attorney examiner Kozo Yabe is a domain name, e-commerce and licensing guru. Litigants would do well to have Toshiaki Iimura and Toshiaki Makino on their side; the two have close to eight decades experience on the bench and know how to craft winning arguments. Corporate and IP lawyer Osamu Suzuki is a cogent choice for cross-border transactions and litigations.

Other recommended experts

Motohiro Katsumi of Aoyama & Partners is a particular specialist when it comes to trademark and unfair competition matters. Kumpei Kogure has brought over invaluable experience as head of trademarks at SOEI Patent and Law Firm to Borders IP. Kurose IP Management’s Masashi Kurose is an outside adviser for Nishimura & Asahi; his guidance on brand strategy in Asia and Russia is particularly illuminating, although he also has “a great deal of knowledge advising on Japanese matters”. At LEXIA Partners, Hiroki Matsui combines knowledge on Asian, European and US trademark matters to provide clients with “practical as opposed to purely legal advice in excellent English”. With a practice covering all forms of intellectual property, Yukei Mizuno of CoTech International ably prosecutes patents, trademarks, utility models and designs. Chikako Mori heads up the trademark team at Sun East IP Firm where she comes highly recommended for her trademark counselling and protection services. Intellectual Property Lawyers Network Japan president Wataru Sueyoshi is a prolific writer on soft IP law. He operates out of STW & Partners. Hirohisa Suzuki is Shiga International Patent Office’s licensing maestro. Over at Osaka firm Takeuchi IP Office, Kozo Takeuchi straddles the contentious/non-contentious divide with alacrity. Trademark and unfair competition expert Reiko Toyosaki plies her trade at Toyosaki & Associates in Tokyo. Before joining OHNO & PARTNERS, Kimiko Yano racked up experience at Dupont Japan, Yamaha Corporation and numerous other impressive patent and trademark firms.

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
  • Yoshifumi Onodera - 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
  • Motohiro Katsumi - Aoyama & Partners
  • Takahiro Kitaguchi - Anderson Mori & Tomotsune
  • Kumpei Kogure - Borders IP
  • Masashi Kurose - Kurose IP Management
  • Hiroki Matsui - LEXIA Partners
  • 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
  • Hiroshisa Suzuki - Shiga International Patent Office
  • 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
  • Naofumi Tanaka - Mori Hamada & Matsumoto
  • Daisuke Tatsuno - Baker McKenzie (Gaikokuho Joint Enterprise)
  • Nami Togawa - Seiwa Patent & Law
  • Miki Tomii - Fukami Patent Office
  • Reiko Toyosaki - Toyosaki & Associates
  • Rika Yamazaki - KUBOTA
  • Kimiko Yano - OHNO & PARTNERS

Luminaries

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