The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.
Silver - Firms: prosecution and strategy
“Saegusa has a group of well-established professionals with in-depth knowledge about their subject domains. They have an excellent track record and work ethic, are prompt and clear in their responses, cost-effective, and provide good value for money.” IP boutique Saegusa & Partners offers quality holistic services to clientele ranging from SMEs to leading multinationals. Aside from branches in Osaka and Tokyo, the ensemble also boasts a liaison office in Guangzhou, to better answer the growing demand from Chinese entities. Under the capable leadership of business-savvy Tomoko Iwai, the trademark practice has been expanding on both the employee and patron fronts. A partner since 2022, Tsuyoshi Nakamura is adept at deftly handling complex matters on behalf of high-profile domestic players, while Eiji Tanoue has extensive experience assisting Japanese multinationals and foreign companies.“Eiji is quick to grasp the commercial aims of any client and tailor his advice accordingly. He goes above and beyond in providing effective, results-oriented legal solutions,” says a foreign counsel. Meanwhile, seasoned Yasunobu Matsumoto expertly watches over the Osaka group.
SAEGUSA & Partners, founded in 1946, is one of the leading IP firms in Japan. Their trademark department, consisting of 46 members, including 9 attorneys, offers comprehensive and extensive services in all aspects of trademark matters. In addition to proficiency in English, the department has stuff fluent in Chinese, which enables them to ensure smooth communication with their oversea clients. Some attorneys in their trademark department have been practicing trademark law over the decades and are regularly invited as guest speakers in seminars and lectures held by various entities which include JPAA (Japan Patent Attorney Association), JTA (Japan Trademark Association), JIPA (Japan Intellectual Property Association) etc. as well as their clients. The firm frequently sends attorneys to international meetings, such as INTA, AIPPI and APAA, to network with IP professionals around the world and strengthen relationships with oversea associates. Some of their attorneys have studied in foreign countries, which enables them to provide advice on Japanese trademark matters while understanding the perspectives of international clients. The firm’s attorneys possess a profound comprehension of the distinctions between the Japanese trademark system and other local practices, which allows them to provide superior services and consequently ensure utmost satisfaction for clients. The trademark team at SAEGUSA & Partners has been experiencing steady growth over the years, with a new members joining annually. Furthermore, the firm also plans to expand their trademark team this year in order to manage the anticipated increase in their workload, and ensure the high-quality of service for their clients.
SAEGUSA & Partners works closely with a diverse range of clients, including leading multi-national companies and small-to-medium enterprises across various industries including chemicals, cosmetics, pharmaceutical, iron and steel, construction machines, electronic devices, clothing, food items, etc. The firm handles a large number of cases spanning over 140 jurisdictions. In 2022, according to a Japanese private institution ranking, the firm ranked 9th for the number of Japanese trademark applications published in the Official Gazette. Additionally, SAEGUSA & Partners is one of the top filers in terms of the number of international applications filed through the JPO, as confirmed by an informal conversation with a JPO’s official. The firm's expertise was recognized by WIPO, who invited them as a guest speaker for a session titled "Madrid System Users' Meeting" during the INTA Annual Conference in Boston in 2019. In 2022, the firm handled a total of 92 international trademark applications via the Madrid Route, and 1,376 outbound applications via the national route.
Other Strong Points
Saegusa has two offices in Japan, with its head office in Osaka, Japan’s second-largest industrial and commercial city, and a branch office is in Tokyo. In addition, they opened up a liaison office in Guangzhou, China in 2018 to better serve their Chinese clients and further expand their business. This new challenge has been quite successful, resulting in a significant increase in the number of new Chinese clients. In 2022 alone, they represented 523 new trademark applications for Chinese clients. Moreover, the firm is also keen on automating their docketing system by utilizing IT technology including RPA, to improve the efficiency and accuracy of their back-office tasks, ultimately benefiting their clients. Their effort in this area have already seen success, with various clerical already automated. Their in-house IT team and the trademark team are working closely to further automate tasks.