BORDERS IP - Japan
You have a background in sales and marketing. How did you arrive at a career in intellectual property and what advice would you give anyone considering a similar career change?
I worked as a sales representative for a department store (trading section) for six years and helped companies to manufacture sales promotional kits and novelty items with their trademarks. That was the first time that I realised the importance of trademarks and their value in attracting customers, and the moment that I decided to enter this field to protect them. Although changing my career from sales to intellectual property was not easy – I needed to study after work for about five years to pass the qualification exam – it was undoubtedly rewarding. Working for the department store was not a waste of time for my current career. On the contrary, actual business experiences there have helped me to understand clients’ problems and find solutions from a business perspective. I also learned valuable people skills. All these things have provided me with strengths that are essential for working in the IP industry. My advice for those considering a career change is to take a small step towards your new goal, and this should guide you to the right place. Your previous career will help you to make a difference and stay competitive.
What led you to establish BORDERS IP and what advice would you give other practitioners looking to set up their own firm?
My goal was to own my own business and focus on clients in my own way. Before establishing the firm, I worked for one of the major IP firms in Tokyo for 13 years. Working there was comfortable and secure with my family of five, but I had aspired to become independent for a long time. When I entered my forties, I asked myself what I wanted from my career and realised that this was the last chance to take the risk. It took two years to make a decision, but many friends in the IP field encouraged me to go ahead. When I started my firm from scratch, I had no clients and no guarantee of success. However, my previous clients and overseas friends kindly gave me new cases, and I gradually got busier, forgetting all the fears. I would say to those in the same situation that things will get a lot easier and do not worry too much. There is no formula to finding clients, but you can do that in your own way.
As managing partner, what have you learned about effective management in a law firm environment over the years?
It might sound cliché, but I learned the importance of delegating authority in case management – which is
crucial to be effective and for further development. As the principal attorney and the founder of my own firm, I tend to feel a desire to commit myself to all cases at the firm, but I have learned that this would limit the firm’s development to my capacity. Delegation of authority gives team members more chances to enhance their skills and abilities, and motivates them to work and feel trusted. It also allows me to concentrate my energy on other important areas, including business planning. This all helps to satisfy the client.
BORDERS IP specialises in multi-jurisdictional trademark prosecution for large, Japanese corporations. What are your top three tips for ensuring a watertight cross-border IP strategy?
First, keeping close ties with foreign associates is essential for quality work. I always appreciate their hard work and contribution. They are extremely dedicated to our clients’ cases, offering quick and high-quality outcomes. If we did not have a friendly relationship with them, we could not offer our clients excellent services.
Second, understanding foreign trademark practice well is important for giving clients useful advice. For example, I have read through the examination manuals of the United States, the European Union, China and South Korea, among others. This has also cultivated my improved understanding of a comparative law approach.
Finally, my experiences handling more than 5,000 cases in over 100 jurisdictions have helped me a lot. I can anticipate what will happen next in each country’s practices and prepare for this beforehand. All these factors enable me to give clients proper advice at the right time, resulting in successful outcomes for their cross-border IP strategies.
What are the main differences in demands from domestic and foreign clients, and how do you adapt to these?
I think that our domestic clients need more detailed advice and consultations for their internal discussions, while foreign clients need concise advice for solutions. Our domestic clients are mostly legal departments in big corporations, and they often need to discuss with other departments (and sometimes have to persuade them) before making decisions. To help clients with their internal decision-making process, I give them a full suite of options and detailed advice with the accompanying advantages and disadvantages of each. Our foreign clients, meanwhile, are mostly IP practitioners. They always seek the best solutions for their clients. Since these foreign clients have the same level of knowledge as practitioners, lengthy explanations are not always necessary (and the clients are typically busy). I thus respond to them quickly with reasonable and concise advice. Email communications with these clients sometimes take the form of chat messages, but these are enjoyable.
You have received significant praise from satisfied clients over the years. What is the secret to building these long-lasting relationships?
I would say two things: dedication and business perspective. Working at a department store that has been running for more than 200 years, I learned to put loyalty and dedication to customers before profits. This concept has become part of my DNA and I always stand by it. The work may take time, but eventually, it bears fruits in the form of strong ties with clients. Once a relationship is established, everything will go smoothly and end in success, making the ties even stronger. I follow this circular notion; there is no magic involved. At the same time, I always try to commit to clients’ cases and provide solutions beyond the trademark perspective. By this I mean that we should not stick to legal analysis, although it is undoubtedly the starting point. Clients do not always want to listen to academic legal analysis. Instead, they seek practical solutions to ongoing problems. Sometimes solutions can be found beyond legal analysis. For example, especially in Japan, the emotional approach often works to solve problems better than the legal approach, and this is true from my experience working for a large company. Although the chance of success from a legal perspective is poor, we still have an opportunity to settle issues with flexible and comprehensive strategies. Some of our clients first came to us for a second opinion, and when we achieved a successful outcome with this approach, they ended up becoming long-term patrons.
You are a member of the Japan Patent Attorneys Association, the Asian Patent Attorneys Association and INTA. Why is membership of IP organisations important for professional development?
These organisations offer many opportunities to expand your social network and make friends all over the world. This not only benefits the business but also enriches our personal lives. These organisations are also essential to keep up with worldwide trends and developments in the trademark field. They regularly provide us with up-to-date information in a well-organised manner. Without them, my current success would never have materialised. To contribute to these associations, I am now serving as a member of INTA’s committee on non-traditional trademarks based on my experiences with this type of registration, including colour marks, motion marks, position marks and even scent marks in more than 60 jurisdictions.
Almost every industry around the world has faced significant disruption in recent months. In what ways has your practice had to adapt to this and other unexpected changes?
So far, I have been emphasising the importance of non-verbal communication to understand the client’s hidden needs. However, face-to-face meetings are currently restricted due to the risk of infection posed by covid-19, and we must now communicate via digital platforms, which makes it difficult to see the client’s expressions and gestures clearly. I am getting used to it and trying to find ways to maintain the same level of communication as before.
What growing trends do you expect to see shaping trademark protection efforts – both in Japan and internationally – in the next few years?
In Japan, some firms have started to develop new trademark search systems using AI technologies. Their evaluation of trademark similarities is said to be generated automatically by deep learning based on past appeal decisions. I am still sceptical that they can do that on the same level as humans, especially when searched trademarks contain descriptive terms or difficult-to-assign proper pronunciation (our language has three different characters!). However, although its quality is not yet perfect, we can at least use the technology as a support tool for manual searches to save time and reduce human errors. Some people say that AI technologies are a threat to our industry, but we cannot stop them and must find ways to take advantage of them with a view towards improving quality.
Finally, if you could change one thing about the way that intellectual property is recognised or protected in your region, what would it be?
I believe that intellectual property is well protected in Japan and I have no complaints about it. The Japan Patent Office is efficient and strives to help users of the trademark registration system. For example, it recently started to disclose file wrappers at the online database for free, and credit card payments are now accepted for official fees. Overall, everything seems to be improved. One exception, however, is that we are now seeing delays in trademark examinations, which currently take 12 to 13 months (it took roughly five to six months until about two years ago). These delays are mostly due to the steady increase in new applications from abroad. While this increase is a good sign for our economy, such delays may prevent companies from carrying out new brand strategies. I hope, therefore, that the government will take the issue seriously and improve it as soon as possible.
Kumpei Kogure is the founder of BORDERS IP. He started his career as a sales representative for external customers (companies) at a major department store in Japan before entering the IP field as a patent and trademark attorney. He has 15 years’ experience in all aspects of trademark practice, including trademark search, prosecution, opposition, cancellation and negotiation for domestic and foreign clients.