Successful trademark enforcement action against counterfeits (civil litigation and criminal court proceedings)
We provided a wide range of legal services in an anti-counterfeiting matter, representing a trademark owner (a foreign client) in civil litigation arising from trademark infringement (ending in a court-supervised settlement), and advising on other legal measures, including criminal court proceedings (obtaining a conviction, which is now final and binding).
Partners Hitomi Iwase and Naoko Omukai were in charge of this matter, with assistance from attorneys Mitsuhiko Kusafuka and Mariko Takahashi, and Patent Attorney Rie Funabashi.
People
She has a strong track record of representing domestic and overseas clients before the Courts and Patent Offices in Patent, Trademark and other IP disputes and proceedings, including a case that resulted in the first Grand Panel Decision of the IP High Court in Japan. In addition, she has been involved in IP transactions for business development, including license franchising, and corporate projects with Brand & IP strategies. She has been a committee member of the Industrial Structure Council of the Ministry of Economy, Trade and Industry (METI) of Japan, a member of the special consulting committee for the Minister of METI, and a director of the Japan Trademark Association. In addition, she oversees many lecturers at IP seminars sponsored by bar associations, patent attorney associations, the Japan Intellectual Property Association, etc.
Hitomi handles patents, copyrights, trademarks, trade secrets, and other IP-related matters in multiple business sectors, including IT, life sciences and healthcare, machinery, food, fashion, environment and energy, entertainment, financial services, and e-commerce. Ms. Iwase’s expertise encompasses all forms of IP transactional work, both cross-border and domestic, including licensing, strategic alliances, joint development, and asset transfers, as well as various types of IP disputes, including patent/trademark infringement litigation. Hitomi also assists clients in anti-counterfeiting and in the development of IP portfolios and prosecution strategies. Hitomi regularly advises clients on emerging legal issues relating to the latest technology, such as IoT and artificial intelligence (AI), as well as on complex system-related transactions and disputes over such transactions. In the area of data privacy, Hitomi provides extensive advice on data protection and privacy compliance, including on establishing global compliance systems and incidents such as data breaches. Hitomi also advises on related areas such as e-commerce, advertising, and consumer protection.