Waldencast PLC - Transfer of “Obagi” Trademark Rights to Rohto Pharmaceutical Co., Ltd.
Nishimura & Asahi advised Waldencast PLC on the transfer of the “Obagi” trademark rights in Japan to Rohto Pharmaceutical Co., Ltd.
The team was led by Tokyo partners Tsuyoshi Ito, Jason Jose R. Jiao, and Naoko Omukai, as well as patent and trademark 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.

Jason is a Philippine and New York-qualified partner with considerable experience in advising clients on a wide range of corporate and commercial matters throughout Asia and the Pacific region. He has designed investment structures for multinational companies investing in both Japan and abroad, and has negotiated and advised clients on numerous contractual undertakings, including multibillion-dollar mergers and acquisitions (strategic acquisitions, investments, divestitures and joint ventures), IP-licensing agreements, and other cross-border transactions. His experience spans diverse sectors including construction & infrastructure, consumer & retail, energy, fintech, life sciences, manufacturing & industrial, and private equity. Jason has also represented and advised clients on international disputes, arbitration and litigation.
Jason has practiced law in Japan for almost two decades and, prior to joining Nishimura & Asahi, was a partner at a major Japanese law firm. He has been consistently recognized as one of The Best Lawyers™ in Japan for International Business Transactions. In addition to his work with clients, Jason is active in various international legal organizations and chambers of commerce in Japan.

Rie Funabashi is a certified patent and trademark attorney in the Tokyo office. Rie has extensive experience in assisting Japanese and international clients in non-contentious and contentious trademark and unfair competition related matters, including conducting trademark clearance searches, filing trademark applications, responding to office actions, appeals, and oppositions, as well as cancellation trials and recordation procedures (such as for name changes, registered trademark transfers, and licenses). She also regularly provides advice in relation to brand/trademark protection, trademark-related negotiations, trademark disputes, and anti-counterfeiting in Japan and overseas, while also frequently dealing with infringing goods at customs. Rie supports her clients, taking into account their potential needs, utilizing the expertise she has acquired from handling trademark-related matters in Japan and overseas since 2004.


Tsuyoshi Ito has significant experience in tax counseling and tax controversies and has represented major corporations in numerous tax disputes and tax lawsuits. In March 2021, he won a significant corporate tax dispute that challenged a tax assessment of approximately USD 367 million in taxable income before the Tokyo High Court after a protracted seven-year battle. In August 2014, he won a tax dispute involving securitization transactions of domestic housing loans before the Tokyo High Court. In addition to excellent achievements in major tax disputes, he generally advises on domestic and cross-border taxation issues in various transactions, such as M&A, joint ventures, fund formation and equity/debt investments.