Why Trademarking Is Only the Start of Developing Your Business – Lawyer Monthly | Legal News Magazine

Why Trademarking Is Only the Start of Developing Your Business

Masaki Mikami concentrates his practice in the field of trademark law, providing trademark legal services to individuals and businesses. Masaki is a qualified IP attorney in Japan, and is registered to practice as IP litigator since 2004. He reveals the ways in which his previous global marketing experience makes him the ‘go-to’ IP attorney in Japan, and how he manages to keep on top of all the registered trademarks covering across 120 countries.


How do you use your global marketing experience from your previous role with Mitsubishi Electric Corporation, to enhance the way in which you guide your clients through corporate matters?

Marketing experience and expertise as an IP attorney enable me to provide a market-oriented legal service from the client’s viewpoint.

Through global marketing experience, I have learned the global economy and how to penetrate into overseas markets, and understand the business realities facing clients.

The knowledge of foreign markets, economic circumstance, language, culture, and way of living is helpful in providing advice on the selection of a trademark suitable to the market.

It often happens that lawyers and attorneys have sufficient legal background, but no business backgrounds and are not experienced to promote products by themselves. Such lawyers are likely to appeal clients the necessity to protect trademarks and inventions as much as possible. Through my experience, I am confident that registering IP should not be considered a goal, just a tool to support clients’ business. Without success at main business, any effort to obtain IP right results in failure. What clients want most is success in their business, not obtaining IP rights. In order to meet the client’s specific business needs, a trademarks attorney is required to have a detailed knowledge of business, custom of trade, common practice in the commerce, and relevant information surrounding the transaction. Marketing experience navigates me to the right direction to find out suitable solutions to the best benefits for my client.

I believe the biggest advantage I mastered from marketing experience is “never discouraged by any failure”. Positive attitude based on global business experience will be my strong point and a reason why clients trust in me.


What are three key things to consider when devising a strategic trademark portfolio?

  • Circumstances of client’s business

Top priority is the success of main business from the client’s viewpoint. Trademark portfolio should always be along with client’s business. Of course, it includes a matter of budget.

  • Consistent use of registered mark

In light of a risk to non-use cancellation, it is vital to confirm whether the client uses a registered mark or its equivalent adequately in a timely manner.

  • Possibility of trademark squatting

In case the client is a global corporation or luxury brand owner, there exists potential risk to suffer trademark squatting even in countries where client has not commenced business.


How do you ensure you are up to date on all trademark applications in Japan, in order to ensure you give the best advice to clients?

I am assigned as a trademark committee member of IP Research Institute in JPAA (Japan Patent Attorney Association) since 2016.

I coauthored two books on the Japan Trademark Law:


“LEGAL CONSULTATION OF TRADEMARK” (Published in September, 2017)

I review all administrative and judicial decisions relating to trademarks in Japan and write about interesting decisions and topics relating to trademarks in my blog post every week.

For domestic clients, I release newsletters twice a month (in Japanese only).

In addition, every two months I invite clients to our workshop, where I explain trademark procedures and noteworthy cases useful to client’s business.


What further challenges do you face when involved in a company wanting to trademark their invention/ company, on a more global scale?

So far, I have dealt with more than 2,100 trademark cases covering 120 countries. More than 60% of the 2,100 cases are out of Japan (foreign matters). That means I am quite experienced with trademark prosecution and litigation in other jurisdictions as well.

The challenges I face in dealing with foreign matters are: (i) I need catch up with foreign attorneys in English and be up-to-date with practice in trademarks, (ii) I rely on foreign attorneys hopefully specialised in trademarks.

Sometimes, it is an uneasy task to look for a reliable foreign attorney. I manage to keep in touch to establish a good relationship for mutual benefit. At present, I am in contact with more than 3,000 foreign attorneys.


With Japan previously being the head of IP and patent world, what more do you think could be done to ensure Japan remains ahead of its game?

The Japanese economy relied on hardware businesses with advanced technology and massive domestic market, which used to work well. But, due to past successes, Japan has delayed shifting to the new global economy governed by the internet. At this moment, I have no concrete idea so that Japan can remain ahead of the game.

But, from my experience, I am so proud of the Japanese way of thinking and working. We are prone to be diligent in our work and perform a detail-oriented task. High-quality and creative service or attitude, which I call “Japan Quality”, will be a key factor for Japan to contribute to global economy in the future.


When dealing with small businesses, what do they often undermine, in relation to their IP needs?

From the aspect of trademark, it occurs often that small businesses misconstrue trademark being a product of big businesses.

Small businesses carelessly neglect to register or investigate their trade name, corporate identity (logo), a new name of goods/service and trade dress.


What legal advice do you provide foreign entities who aim to start business in Japan from an aspect of trademark or IP?

Japanese IP legislation adopts a first- to-file system in trademark as well as patent.

It means a first-to-file will win decisively.

As to trademark, approximately 140,000 applications are newly filed to the JPO in a year. More than 1,700,000 trademarks have been registered effectively.

I advise to conduct an availability search of your trade name, trademark, and service mark in Japan, on the outset.

If the entity owns trademark registration in home country, it becomes an option to apply for international trademark registration of the Madrid Protocol by designating Japan as a country to be registered.




9F Edobori Center Bldg.
2-1-1 Edobori, Nishi-ku Osaka 550-0002, Japan
Tel: +81 6 6225 1051


Masaki was born in Himeji of Japanese parents and educated at Himeji-Nishi High School, Keio University. Prior to entering the legal profession, he worked in the business world. Masaki has global marketing experience while working with Mitsubishi Electric Corporation for a decade. His extensive experience in that field allows him to understand the business realities facing his clients, helping him to negotiate the most favorable deals possible for his clients, providing meaningful, timely legal advice that is consistent with the client’s specific business needs. He worked with a Kobe-based patent office after qualifying as a Japanese IP attorney in 2003 and has been focusing on trademark matters for over twelve years before setting up his firm.

Masaki has fourteen years of legal experience in the area of trademark law. In addition to trademark prosecution, Masaki’s trademark law services include infringement and validity opinions, strategic trademark portfolio, negotiations, legal advice with respect to trademark assignment, licensing and confidentiality agreements. Masaki regularly advises businesses and corporations on the availability and proper use of trademarks, service marks, taglines, and logos. Masaki prosecutes applications to register these marks in Japan and worldwide. Since beginning his law practice, Masaki has represented a wide range of clients, ranging from small start-up businesses to large international corporations in over 2,100 trademark matters covering more than 120 countries.

Marks IP Law Firm, with the goal of providing big-firm level of service with the nimbleness and individualized attention and responsiveness that boutique firms are known for, is headed and founded by Masaki Mikami.

Marks IP Law Firm is a recently established boutique intellectual property law firm specializing in all trademark matters with an office in Osaka, Japan. We provide high quality legal services and practical solutions to legal problems, in a cost-effective manner.

With its focus on trademark law and related prosecution and litigation, Marks IP Law Firm is dedicated to providing a personalized, client focused service, offering the highest quality of advice and comprehensive representation to our clients in Japan and internationally.

The firm is actively engaged in prosecution and maintenance services in the areas of trademarks. Our specialized IP counseling covers searches and licensing strategies, and enforcement of trademarks, which can include cease & desist matter, infringement litigation, anti-counterfeiting, implementation of custom procedures, opposition/cancellation proceedings before the JPO and the IP High Court, arbitration, domain disputes and related negotiations.

Moreover, we frequently collaborate with reliable foreign lawyers, whom we consider our global partners, to represent their most important clients. Through these relationships and contacts, Marks IP Law Firm has access to a large network of lawyers practising in China, Korea, Hong Kong, Taiwan, Singapore, Malaysia, Thailand, Indonesia and other jurisdictions worldwide and will stand out as one of the few Japanese IP firms which can provide legal services to clients who are doing or planning to do business in the growing Asian economy.

Our motto is simple: “Do everything in our power to produce an excellent result not only to our clients, but also to global society.”

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