15 Jul
2021

Shunji Sato

 

What led you to a career in intellectual property and what advice would you offer anyone considering a similar route?

It all started when I was a university student majoring in US politics. I was preparing a debate on Japan-US framework talks and was curious as to why intellectual property was part of the discussion. I later decided that my graduation thesis would be on US policies to strengthen the protection of intellectual property in the 1980s and the more I learned about US IP policy, the more I felt that intellectual property should be strongly protected in Japan as well.

At the same time, I was thinking about my future career; I wanted to be a professional who was relied on as an individual, rather than belonging to a company. Therefore, it was natural for me to pursue a career as a trademark attorney. My advice to anyone considering a career in trademark law is: You will never get tired of practising trademarks. You will learn something new every day because trademarks have a life of their own.

What are the biggest enforcement challenges facing rights holders in Japan and how can these be overcome?

China's amended Trademark Law has made it easier for Japanese rights holders to challenge bad-faith applications based on new grounds for opposition and invalidation actions. However, it has yet to curb the substantial number of bad-faith filings in China. Because of these, Japanese rights holders incur the costs of re-filing, filing an appeal with the Trademark Review and Adjudication Board or before the courts, and/or filing a copyright registration, among other things. Actively working with governments, IP associations and platforms is vital to combatting this.

What emerging trends or technologies are having the biggest impact on your clients' IP strategies?

The covid-19 pandemic has significantly affected clients' filing budgets yet their demands for the use of technology in the legal and IP industry are increasing. Smaller companies are increasingly choosing trademark firms that provide cloud-based online filing services at lower prices. On the other hand, the sale of counterfeit goods online is making it more difficult for brand owners to uncover infringements. Therefore, they are seeking effective online brand monitoring and enforcement systems that use new technologies such as AI. Law firms need to develop their own technology to meet client demands for efficiency. For example, our firm set up a venture capital to invest in entrepreneurship by having lawyers utilise the latest technology to support their legal services and a consulting firm to support clients' digital transformation and provide advanced, flexible services that meet the diverse needs of data utilisation and security as the first investment project.

How has your involvement with INTA helped your professional development and why is engagement with national and international IP associations important?

My involvement with INTA has been exciting and rewarding. When I joined, my main goal was to network and develop client relationships. Over time, I was lucky enough to make many good friends and they strongly recommended that I participate in the committees. Through these activities – including chairing a sub-committee, co-chairing INTA's first-ever Tokyo conference and serving on the board of directors and as a member of the Asia-Pacific Global Advisory Council and the Presidential Task Force – I have worked closely with brilliant trademark attorneys around the globe. It is an experience like no other. An international association like INTA can influence global trademark legislation. Engagement with IP associations – whether international, regional or local – can offer tremendous opportunities to expand your professional and personal development.

What key Japanese legislative or judicial developments should international rights holders be monitoring?

Under the recent revisions of the Trademark Act and the Design Act, protection for all subject matter has been expanded. For example, following the introduction of trade dress protection last year, the appearance and interior decoration of a building can now be protected as both a design and a 3D trademark, provided that it meets the respective legal requirements.

In addition, the protection of graphical user interfaces under the revised Design Act may overlap with trademark protection for a 2D icon trademark. Some geographical indications (GIs) may also be protected as regionally based collective trademarks or under GI law. Thus, it is becoming more important for trademark practitioners to determine the most appropriate protection under the Design Act and the Trademark Act, as well as under the Copyright Act and the Unfair Competition Prevention Act, depending on the subject matter and the shape of the article.

Shunji Sato

Partner
[email protected]

Shunji Sato is a partner at TMI Associates, one of the top five international law firms in Japan. With over 24 years’ experience in all aspects of trademarks and designs, Mr Sato has vast experience in trademark searching, prosecution, portfolio management, oppositions, invalidation actions and complex IP litigation. Mr Sato served on the INTA board of directors and Asia-Pacific Global Advisory Council and is now on the Trademark Office Practices Committee.