Christian Louboutin Failed To Register Red Sole Trademark in Japan10 August 2022
The Appeal Board of the Japan Patent Office (JPO) rejected the trademark registration by French luxury shoemaker Christian Louboutin for its signature red soles. Louboutin filed the colour mark application for high heel soles coloured in red (Pantone 18-1663TP) back in 2015, which was refused by the JPO examiner. Louboutin filed an appeal against the refusal, and in June 2022 the Appeal Board of JPO refused the registration again.
Global document solutions provider taps Anaqua platform for patent portfolio29 June 2022
Osaka-based global document solutions provider Kyocera Document Solutions Inc. has selected Anaqua’s AQX Corporate platform for integrated management of its extensive patent portfolio.
Hong Kong joins hands with Japan and South Korea to combat IP rights infringement02 June 2022
As Hong Kong witnesses a growing popularity of Japanese and South Korean IP contents, as well as rapid technological developments in recent years, it is crucial to strengthen the mutual cooperation among the organizations protecting IP rights in these jurisdictions. Thus recently Hong Kong Customs has signed a Memorandum of Understanding (MoU) with the Content Overseas Distribution Association (CODA) in Japan and the Copyright Overseas Promotion Association (COA) in South Korea respectively to pledge further collaboration in combating IP rights infringement.
Vink, Tang urge INTA attendees to seek out innovation02 May 2022
Brands are always big business at the International Trademark Association’s Annual Meeting Live+, so it was no surprise when much of the meeting’s open ceremonies were devoted to what brands can do in today’s world.
IPOPHL and Japanese Organization Team Up To Fight Piracy09 February 2022
With the recent signing of a Memorandum of Understanding (MOU) with the Content Overseas Distribution Association (CODA), a Japanese organization tasked with combating content piracy and promoting international content distribution, the Intellectual Property Office of the Philippines (IPOPHL) has bolstered its efforts to combat piracy.
CNIPA commissioner proposes ways to tackle post-pandemic IP protection challenges04 November 2021
Dr. Shen Changyu, commissioner of the China National Intellectual Property Administration (CNIPA) proposed three actions for IP offices to address IP protection challenges under the post-Covid 19 era: coordinate the top-level design of IP, constantly optimize IP administration and services and speed up the development of IP global governance.
Japanese Patent Office Refuses Request To Register Demon Slayer Costume26 October 2021
The Japanese Patent Office issued a "Notice of Reasons for Refusal," stating that the trademark could not be registered because the Tanjirou Kamado design resembles a "checkerboard pattern." Shueisha (Demon Slayer manga publisher) responded in writing, but the ruling was not overturned.
Sharp and OPPO sign a cross-licensing agreement19 October 2021
Sharp and OPPO have announced that they have struck a deal on worldwide cross patent licensing, which covers both parties' terminal devices and include patents for communication technologies.
BTS’ Butter commits no copyright infringement, the group’s label claims23 August 2021
While the ARMY is busy taking the “Permission To Dance” challenge like Elton John recently did, they should be aware of this news as it is not about plagiarism but rather, fake news and dual contract committed by others.
JPO dismisses Mary Poppins19 August 2021
Disney Enterprises, Inc. filed an invalidation petition against Japanese TM Reg no. 5710595 for the wordmark "Mary Poppins" with the Japan Patent Office (JPO), which found that "Mary Poppins" was not generally known as a source identifier of the enterprises.
2021 Asia IP Profiles: Tell us about your firm!31 May 2021
Later this year, Asia IP will publish the 2021 edition of Asia IP Profiles. This guide is the definitive resource for companies trying to identify the best IP practices in the region, and is based on editorial research, and surveys submitted by leading law firms.
People and places
Digitalization has been a major trend for sectors from business management to government administration, and Japan, having been a pioneer in ad-vanced technologies, is not excluded from the digital shift. While the Japa-nese government has plans to adopt an “e-court” programme, the emergence of Covid-19 also expedited the adoption of an electronic filing of court documents, as well as a remote session of preliminary hearing for the IP cases and other civil litigations.
Apart from digitalization, the IP laws of Japan have also gone through some reforms, such as the Patent Act. In April 2022, the main provisions of the Act for Partial Amendment of the Patent Act came into effect, including an introduction of a third-party opinion solicitation system for patent infringement lawsuits, and tightened regulations on the influx of counterfeit products for overseas. This year the revised Copyright Act also came into effect, covering amendment to make simultaneous online distribution of broadcast programmes easier.
Abe, Ikubo & Katayama is one of the few Japanese firms that has both extensive experience in IP infringement litigations and strength in IP procurements. Its team of experienced litigators and patent lawyers are specialized in a wide variety of technical fields, such as chemical, biotech, life science, software, telecommunication, electronics and mechanicals. The firm’s work is frequently cross-border in nature, and members have extensive experience as examiners at the patent office.
With broad experience in IP, life sciences and IT, Anderson Mori & Tomotsune provides services in relation to international and domestic disputes, transactions, filings and regulatory matters. The firm is headquartered in Tokyo with branch offices in Osaka and Nagoya. Outside Japan, it has offices in Beijing, Shanghai, Singapore, Ho Chi Minh City and Bangkok. It also has associated firms in Hong Kong, Jakarta and Singapore. Partner Hideto Ishida is a key contact.
One of the largest Japanese IP firms and founded in 1965, Aoyama & Partners has its main office in Osaka, with a branch in Tokyo. With a total staff of about 300 professionals, the firm has over 100 patent attorneys, who are specialists in a range of technical areas, including mechanical, electrical, chemical and life sciences, as well as in the design and trademark fields. They provide strategic counselling, prosecutions and litigations for domestic and international patent, design, trademark and other IP related matters. The firm was named Japan patent firm of the year at the 2021 Asia IP Awards. Senior counsel Mutsumi Samejima is a key contact.
Located in Tokyo, Asamura IP is overseen by senior managing partner Masahiro Asamura. The firm prosecutes cases regarding patents, utility models, designs and trademarks. It is involved in various proceedings at JPO and other jurisdictions. Cases from clients abroad and requests for filing applications in foreign countries make up more than 90 percent of the firm’s work.
Atsumi & Sakai traces its roots to its well-respected finance and securitization practices; today, the firm has developed itself into a strong all-around player in most areas of business and finance law, include intellectual property and information technology. Senior partner Chie Kasahara is a key contact in the firm’s IP practice. She serves as a director of the Entertainment Lawyers Network Japan.
The IP/IT group at Baker McKenzie provides a full range of IP services including infringement litigation on patents, designs, trademarks, copyright, unfair competition and trade secret disputes. The firm is also active in prosecution and proceeding management related to trademark design applications and registrations, as well as technology transfer and other acquisition, licensing and protection issues. Many of its members, such as partner Kensaku Takase and Kei Matsumoto, have abundant experience in both domestic and foreign jurisdictions, which enable them to handle IP matters for the US and European markets and work with their international counterparts to coordinate inbound and outbound work. Counsel Christoph Rademacher and associate Ryusei Matsuoka joined the firm recently. The firm was named Asia Pacific trademark firm of the year at the 2021 Asia IP Awards.
The IP lawyers at City-Yuwa Partners have extensive experience in large-scale, complex and technologically sophisticated patent litigation. The firm also handles licensing agreements, technology transfer agreements and IP litigation. The firm also offers advice on the evaluation of essential patents for patent pool licensing programs of standard technology patents; partner Hideo Ozaki is a key contact for such patent matters. Kanako Inokuchi is an important contact for other IP matters. The firm is located near Tokyo Station on the east side of the city.
Led by managing partner Naoki Yoshida, Finnegan, Henderson, Farabow, Garrett & Dunner’s Tokyo office represents Japanese companies in IP litigation cases filed in the US district and appellate courts and before the US International Trade Commission; counsels on various IP issues; conducts due diligence for mergers, acquisitions, and other partnering opportunities; develops global litigation strategies; and negotiates IP licenses and drafts licensing agreements.
Leveraging more than 30 years of experience handling American legal matters for major Japanese corporations through its offices across the US, Europe, Mexico and Asia, Foley & Lardner is a full-service firm that established its Tokyo office to expand its coverage on IP and corporate matters. The more than 200 attorneys of the firm’s IP department have represented top five US patent owners in the fields of biotechnology, chemical, electronics and communications. Partner Michael Kaminski, who once worked as a research chemical engineer for a major oil company and for a major chemical company, is a key contact. He divides his time between Tokyo and Washington.
There are 87 patent attorneys at Fukami Patent Office, who work side-by-side with an AI/IoT support team. The firm, based in Osaka with branch offices in Tokyo and Nagoya, handle most IP matters, including filing and prosecution, oppositions, licensing, border protection and other IP-related matters. In its more than 50 years of existence, the firm says it has worked with more than 1,800 foreign clients and filed applications in more than 180 countries. Yoshitake Kihara, Nobuo Arakawa, Masato Sasaki and Hisao Fukami make up the firm’s executive committee.
Hiroe and Associates provides services concerning patent, utility model, trademark, industrial design, copyright, unfair competition, licensing, search, prosecution, litigation, opinion, maintenance, renewal, technology transfer, counselling and more. The firm’s well-rounded team of professionals, which is based in Gifu Prefecture outside Nagoya, provides expertise in a wide range of technical fields and intellectual property law. Masanori Hiroe and Takenori Hiroe are key contacts.
Regional managing partner for Asia Pacific Lloyd Parker and office managing partner Frederick Ch’en are key contacts at Hogan Lovells in Tokyo. The firm offers IP services for both contentious and non-contentious matters on patents, trademarks, copyright, designs, trade secrets and unfair competition.
Itoh International Patent Office in Tokyo has a team of 64 Japanese patent attorneys, complemented by a U.S. patent attorney, three Chinese patent attorneys, two South Korean patent attorneys, and 44 patent engineers. The firm handles the full range of IP services, including applications, trials, litigation, appraisals, investigations and other consultations.
Jones Day has a formidable intellectual property practice globally, and that applies to its office in Tokyo, too. Of counsel Shogo Asaji and Michiru Takahashi are key contacts for IP matters. Asaji has more than 20 years of experience in IP law and litigation, and is one of the few US licensed lawyers in Japan who has an engineering background, Japanese-English bilingual capability, and experience handling multimillion dollar, global patent disputes spanning the US and Japan. Takahashi has more than 25 years of experience in IP counselling and litigation, and has represented famous brands such as Starbucks, Dell, Mag Instrument, and Sunkist. Her practice focuses on trademark, unfair competition, and copyright issues, including infringement litigation and trademark prosecution.
Hirohito Katsunuma leads Katsunuma International Patent Office in Tokyo. Along with patent attorney Maya Kadonaga, they provide advice in a variety of areas, specializing in computer software, nuclear power, petrochemical engineering, semiconductor and manufacturing equipment.
Since 1957, Kawaguti & Partners has been a full-service IP law firm for regional and international clients of all sizes in Tokyo. Led by president Katsumasa Osaki, the team provides prosecution and litigation advice. Specialized advice comes from many including vice president Mitsumasa Ihara.
Kitahama Partners is a full-service law firm that handles primarily matters of corporate law, including IP and IT and related work. The firm is known for its ability to solve problems for its clients. Partners Jiri Mestecky and Masataka Shitanishi in Osaka and partner Miyako Ikuta in Tokyo are key IP and IT contacts at the firm.
Founded in 2003, Kotto Dori Law Office for the Arts is located in Tokyo and is highly sought after for its work in art and entertainment law. The firm has represented clients in areas of publishing, audio-visual, stage drama, music and game. Its principal practice is divided between advice on domestic and international contracts, dispute resolution and copyright-related issues. Kensaku Fukui is extensively published on copyright matters; his publication An Introduction to Copyright for 18-Year-Olds has recently been reprinted for the seventh time. Members of the firm are often sought for commentary on a wide range of arts-related matters; they have recently been quoted on unauthorized NFT sales, Twitter and moral rights, digital avatars of deceased historical figures, and the future of performing arts digital archives. The firm was named Japan copyright firm of the year at the 2021 Asia IP Awards.
Eiichiro Kubota leads the eponymous Kubota, where his practice focuses on litigation. Much of the Kubota’s former Hogan Lovells IP team, including Yusuke Inui and Kiyoko Nakaoka, followed him to the new firm.
Founded by Tatsujiro Uchimura in 1908, Kyowa Patent and Law Office in Tokyo specializes in electrical, mechanical, chemical, trademark and design work. Led by managing partner Manabu Miyajima, the firm has approximately 60 patent attorneys and attorneys-at-law.
With its head office in Osaka and a group office in Tokyo, Marks IP Law Firm was founded by Masaki Mikami, who provides a full suite of trademark counselling services for both local and international clients.
Matsuo & Kosugi Partners is an important player in the media and entertainment space in Japan. The firm advises on broadcasting, movies, theatre productions, sports, special events, TV games and character merchandising, among other things. On the traditional IP side, the firm has particular expertise in drafting agreements to be used in China, Hong Kong and South Korea; it has represented clients in front of Japanese governmental bodies and in court over IP rights.
Mori Hamada & Matsumoto is a large, Tokyo-based international law firm, with offices in Osaka, Nagoya, Takamatsu and Fukuoka, and overseas offices in Beijing, Shanghai, Singapore, Bangkok, Yangon and Ho Chi Minh City. With key practitioners Hiroki Saito, Yoshifumi Onodera and Atsushi Okada, the firm has significant experience in handling infringement cases involving patents, trademarks and copyright, and litigation involving patent invalidation claims and employee inventions in Japan.
Established in 1963, Midosuji is an Osaka-based law firm with offices in Tokyo and Hiroshima. Its IP group consists of skilled attorneys with work experience at the Japan Patent Office, and handles a wide variety of matters including patents, utility model rights, design rights, trademarks, copyrights, and trade secrets. Veteran IP lawyer Kozo Yabe is a key contact.
Chair and patent attorney Hidekazu Miyoshi is the top name at Miyoshi & Miyoshi in Tokyo. The firm has provided IP services since its founding in 1965. The firm has experts in many technical sectors, including electrical devices, electronics, semiconductors, machinery, chemicals or materials and in a wide range of key technologies, from telecommunications and software to biotechnology and nanotechnology. Vice chair and patent attorney Shunichi Takahashi specializes in electronics-related patent prosecution and has lectured frequently on revisions to the Japanese Patent Law.
Morrison & Foerster’s Tokyo office is the largest of any international firm in Japan, with approximately 60 U.S. attorneys, 60 Japanese bengoshi and six attorneys qualified in England and Wales. The firm is particularly busy in the areas of information technology and software, life sciences and biotechnology and industrial technology. The firm has advised Toshiba in an US$18 billion sale of Toshiba Memory Corporation to a consortium led by Bain Capital, Nissan Motor in the sale of its electric vehicle battery business to Envision Group, and Fujitsu in its strategic partnership with Ericsson to develop, manufacture, commercialize and deliver end-to-end 5G network solutions to major telecom service providers.
Nagashima Ohno & Tsunematsu has powerful legal teams capable of providing clients with effective practical solutions. The firm’s IP practice covers both IP litigation and transactional matters, from traditional IP transactions such as licensing or research and development agreements to complex IP M&A, IP finance, IT related matters and entertainment business. Based in Tokyo, the firm also has offices in New York, Singapore, Bangkok, Ho Chi Minh City, Hanoi and Shanghai.
Named Asia IP trademark firm of the year for Japan in 2021, Nakamura & Partners in Tokyo is an international patent law firm which provides IP services inside and outside of the jurisdiction. The firm consists of a group of patent attorneys who are well acquainted with application procedures for patents, design registrations and trademark registrations, demands for appeals and various other steps and procedures taken before the Japan Patent Office, and a group of lawyers who are skilful in the enforcement of intellectual property rights and dealing with other legal matters. Shinichiro Tanaka leads the legal section of the firm, and Daisaku Fujikura is head of the trademark section. Clients include Sony and FujiFilm.
Nishimura & Asahi is the largest and one of the oldest law firms in Japan. Along with the Tokyo headquarters, it has branch offices in Osaka, Nagoya and Fukuoka with more than 700 attorneys, foreign attorneys, and other professionals. To strengthen cross-border practices and presence, the firm has opened offices in Frankfurt, Düsseldorf, New York, Taipei, Beijing, Shanghai, Dubai, Ho Chi Minh City, Hanoi, Singapore, Yangon and Bangkok as well as affiliate offices in Jakarta and Hong Kong. Top IP practitioners have helped MNCs such as Microsoft Japan and Canon handle IP prosecution, litigation, licensing and other transactions. Partner Yoshiyuki Miyashita is a key contact.
Oh-Ebashi LPC & Partners was established in Osaka in 1981 and today has more than 150 attorneys in offices in Osaka, Tokyo, Nagoya and overseas in Shanghai. The full-service firm handless most business law matters, and has a significant regional practice. Partner Norihiro Sekiguchi is a key contact for IP and for life sciences matters.
Managing partner Seiji Ohno leads Ohno & Partners in providing litigation, prosecution, licensing, due diligence, opinion and counselling services for all kinds of IP. The firm has actively tackled unsolved legal issues, so it has been able to establish new case laws before the Supreme Court.
Ohtsuka Patent Office in Tokyo boasts practice areas including information processing systems, communications-related technology, semiconductors and electronic circuitry, mechanical, designs, medical devices, chemicals, pharmaceuticals, and amusements and games. Managing partner Yasunori Ohtsuka is noted for his work before the Japan Patent Office and the Intellectual Property High Court, and for his work seizing IP-infringing products at the customs offices.
Founded in 1968, Onda TechnoInternational Patent Attorneys has its headquarters in Gifu with offices in Tokyo and Osaka. The firm helps both domestic and international clients craft IP strategies for corporate management as well as providing services for enforcement and licensing of patent, trademark and design. President Makoto Onda is a key contact.
Led by president Aki Ryuka, Ryuka IP’s IP team comprises attorneys, paralegals, engineers and translators. Clients come from domestic companies and MNCs in South Korea, Taiwan, China, Hong Kong, Malaysia and Singapore in the fields of electronics, telecommunications, software, optics, mechanical engineering, semiconductors, electronic materials, chemicals and biochemistry. Yasu Higashi is key contact for trademark matters. Patent attorney Hiro Sugiyama joined the firm in August 2021.
Sakae International Patent Bureau, also sometimes known in English as Tashiro & Etoh Patent Bureau, has been in existence since 1948. President Toshiaki Etoh has written and edited numerous papers and books on Japanese intellectual property law, and has served as a lecturer at Meiji University in Tokyo. The firm also boasts five other Japanese patent attorneys. Hongyue Liu, a Chinese patent attorney, and Lance Chandler, a U.S. attorney at law, are good contacts. Led by president Atsushi Aoki, Seiwa Patent & Law is an international patent and law firm located in Tokyo. The firm provides all kinds of IP matters to both domestic and overseas clients. It is a partnership comprising about 300 members, including approximately 100 patent attorneys and attorneys-at-law.
Located in Tokyo, Shiga International Patent Office was founded in 1965 by Masatake Shiga, and has grown into one of the leading patent firms in Japan due to many technical experts from China, South Korea and several English-speaking countries. President Yasuhiko Murayama is a key contact.
Shiomizaka, located near JR Shimbashi Station in southeast Tokyo, was formerly known as STW & Partners. The firm is well-regarded for its work in IP, data protection, information technology, internet of things (IoT), artificial intelligence and media/entertainment work. Tomoya Fujimoto and Shin’ichiro Yoshiba are good contacts for such matters.
Shobayashi International Patent & Trademark Office (SIPTO) boasts a team of some 250 professionals across three offices in Tokyo and one in Osaka. President and patent attorney Masayuki Shobayashi is noted for his work in trademarks, chemicals, pharma and biochemicals. Executive vice president and patent attorney Takuya Saito advises on ICT/software-related inventions, business models, IP strategy, IP economic value assessments and contract negotiation support, among others. Patent attorney (New Zealand and Australia) and solicitor (New Zealand) Elizabeth Partridge is noted for her patent prosecution work.
Headquartered in Tokyo with offices in Kyoto and Fukuoka, chairman Ryuichi Shitara leads Soei Patent & Law Firm in providing patent, trademark and design protection services to engineers, inventors and designers.
Founded in Japan in 1910, Sonderhoff & Einsel is a multicultural firm with professionals from Europe, Japan, the U.S. and China. The firm’s legal, IP, tax and accounting experts provide practical, goal-oriented solutions across a wide range of practice areas to international and Japanese clients. Managing partner Keiji Isaji focuses his practice on IP matters such as licensing under the Patent Law or Trademark Law, on regulatory laws and civil and criminal litigation.
For more than two decades, Washington-based Sughrue Mion has maintained an office in Tokyo with bilingual and bicultural staff members. All of the resident attorneys are U.S.-qualified and provide counselling in areas such as patent prosecution, litigation, licensing, negotiation, validity, infringement, export control and foreign filing licenses.
Sugimura & Partners is an IP specialist firm which represents both Japanese and international clients pursuing patent, design, and trademark protection. Its clientele ranges from single inventors and startups to well established academic institutions and multinational corporations from all sectors of the global economy. Top practitioners include Kenji Sugimura and Koji Sugimura.
Suzuye & Suzuye has more than a century of experience in acquisition, enforcement and maintenance of both domestic and international IP rights in Japan. President Masatoshi Kurata is a patent attorney and U.S. patent agent; he specializes in electrical and telecommunications work. Senior vice president and partner Toshimi Koide is a patent attorney noted for his work in trademarks, designs and unfair competition.
Tokyo Kyodo Patent Office offers services in portfolio management, enforcement, licensing, defense and valuation for patents, trademarks as well as designs. Yoshihiro Igarashi, Naoto Hiramatsu and Hideya Tsuba are key contacts.
Yoshiyuki Inaba and Toyotaka Abe are key practitioners at TMI Associates. The firm’s clients range from venture businesses to well-established high-tech companies. It also liaises with government agencies and has increasingly had opportunities to advise on policy. Besides copyright services, it also handles patent, utility model, design, trademark, trade secret, unfair competition, action plan, antitrust as well as licensing matters.
Uchida & Samejima Law Firm (USLF) was established in July 2004, and specializes in broad business laws, including intellectual property and bankruptcy. The firm focuses on doing business with “technology corporations” and each of its members have both technological expertise and legal experience. Partner and founder Hiroshi Uchida focusses on pharmaceuticals and biotechnology, chemicals and materials, civil engineering and architecture, electronics, machinery and software. Partner and founder Masahiro Samejima focusses on chemicals and materials, electronics, machinery and software. He began his career at Fujikura Ltd., where he was engaged in the development of materials for electric wires.
Located near the National Diet Building, Yamakawa International Patent Office was established in 1967. Its lawyers are each specialists in IP laws and in one or more specific technological field. The firm offers services in areas including counselling concerning IP-related issues, filing and prosecuting applications, dealing with post-grant proceedings, litigation against JPO trial decisions, prior art searches, and trademark searches.
Founded in 1902, Yuasa and Hara is one of the oldest and largest law and patent firms in Tokyo. The firm is a pioneer in multidisciplinary practice, consisting of a legal division, a patent division, a trademark and design division and an accounting division. Kazuhiro Nakata, Hiromichi Aoki and Toshiaki Iimura closely cooperate with each other to provide complete and multiple IP services to both domestic and foreign clients.