What has been your most memorable case to date and why?
It is very difficult for me to pick out only one among various memorable trademark cases I have been involved with during my 30 years of practice. However, I gained valuable experience in a team drafting Japanese domain-name dispute-resolution policy in the early days of cybersquatting, which around 2000 was causing many trademark and unfair competition disputes in Japan. As a private-practice lawyer, I learned about contentious issues surrounding the establishment of rules for public stakeholders, including internet users, service providers and IP owners.
Claims by brands that they are environmentally sustainable are coming under increased scrutiny. What steps can they – and their advisors – take to stay clear of accusations of greenwashing?
I recommend that my clients be careful, not only about trademark law, but also consumer/eco-friendly service user protection in Japan, because the legal effect of trademark rights provides a narrow justification for escaping from strong criticism of their trademark registration and use from the viewpoint of greenwashing. Unfortunately, no clear guidelines for trademark prosecution and consumer protection have been created yet on this subject matter. But the Financial Service Agency and the Ministry of the Environment have already provided some guidance for financial service providers and investors of eco-friendly businesses. In the case of green bonds and loans, the Financial Service Agency has tried to build a scheme of fair advertisement and disclosure in the market in cooperation with the Tokyo Stock Exchange Market. The Ministry of the Environment is preparing some guidelines regarding green bonds and loans, and sustainability-linked bonds and loans. The ministry called for public opinions on their draft guidelines in April 2022.
The current legal-services landscape is competitive and high-quality legal work is considered a minimum. How do you add value for clients in such an environment?
Legal services are always under the pressure of speed and quality as required by clients. In order to balance both, a lawyer should use advanced digital and data technologies in legal research and writing. In addition, e-mail communications, utilising web-based messenger connections and conferencing via the worldwide web are essential for serving clients all over the world. Even augmented and virtual reality technologies will gradually become more widespread in competitive legal services, helping to provide personal-touch advice with thoughtful attention to each client’s needs, which should increase the value of legal services.
Which recent decisions or legislative developments have had the biggest impact on IP strategy in Japan in the past few years?
According to the 2021 amendments of the Trademark Act, the Design Act and the Customs Act in Japan, the import of counterfeit goods from a foreign business via a third party should cause an infringement of trademark and design rights, even if the importer intends to use such goods for his/her personal use. These amendments intend to make Customs cease the import of such counterfeits at the border. This is a significant policy change against the traditional safe harbour for an individual importer’s personal use of counterfeit goods. We should monitor the situation to see how it will work to protect trademark owners’ rights in balance with the freedom of personal trade.
As we hopefully emerge from the pandemic, what changes to the industry and/or working practice do you think are here to stay?
The working style of lawyers must be changed after the covid-19 pandemic. A lawyer needs the flexibility to be able to work from any location more than ever. On the other hand, reliable and secure communication and data environments are required to maintain excellent services for clients. Therefore, it is only natural for a lawyer’s practice to be supported by the legal tech industry no matter what the size. On the other hand, for our clients, virtual and augmented reality are developing rapidly and becoming more widespread. In such a situation, the locality/local jurisdiction of trademark law and practice may gradually come to have less meaning in the future.
Kozo Yabe is a partner at Midosuji LPC’s IP and international corporate practice groups. He graduated with an LLB from Chuo University in Tokyo and with an LLM from the University of Illinois at Urbana-Champaign College of Law in the United States. Along with handling international corporate transactions, including M&A, Mr Yabe deals with IP dispute resolutions and transactions and corporate compliance. His areas of practice also cover data regulations for various industries.