Nishimura & Asahi ranked at highest level in World Trademark Review 1000 - 2023 Edition
Nishimura & Asahi has been ranked at the highest level in Japan for both “Enforcement & Litigation” and “Prosecution & Strategy”, and our lawyers and patent attorneys have been identified as top experts in their respective practice areas, in the 2023 edition of World Trademark Review 1000.
The 2023 edition states that Nishimura & Asahi “provides solutions that align with the commercial and strategic aims of the client,” and blends “a global outlook and diversity of perspectives with an in-depth understanding of IP law”.
SCL Nishimura & Asahi Ltd. has been ranked in Thailand, while Chavalit Uttasart and Pavinee Bunyamissara are highly rated for “Prosecution & Strategy”.
Summary of individual rankings in Japan
Individuals: Enforcement & Litigation
Hitomi Iwase, Naoko Omukai
Individuals: Prosecution & Strategy
Hitomi Iwase, Makoto Shiotani, Akitaka Ukaji, Rie Funabashi, Ryohei Saito, Chisako Yagi
World Trademark Review 1000 is the most comprehensive and definitive list of the world’s leading private practice trademark experts, published annually by Law Business Research, London, UK.
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.
- Of Counsel
His practice areas are trademark prosecution, enforcement, and cross-border transactions in Japan and overseas. He handles a variety of trademark matters, including infringement cases. He has extensive experience assisting companies in the enforcement of their trademark rights against trademark infringers, and now specializes in anti-counterfeit strategies in ASEAN countries and Latin America.
With more than 20 years of experience in the trademark field, he is well versed in trademark prosecution and disputes such as oppositions and invalidation trials in Japan and foreign countries including Asian countries, the U.S., and Europe. He has strong expertise in handling trademark cases in Japan for foreign clients through his careful and accurate understanding of the clients’ requests.
- Patent Attorney
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.
- Patent Attorney
Ryohei specializes in trademark/design prosecution, searches and cancellation/invalidation actions before the Japan Patent Office. He also has strong expertise in due diligence work and transactions involving IP rights. He is actively engaged in collecting information and exchanging opinions on intellectual property protection in other countries, and has attended international conferences hosted by World Intellectual Property Organization as a member of delegation of Japan Patent Attorneys Association. He has a great interests in IP protection in Latin America. In 2019, he joined the Japan-Mexico Training Program for the Strategic Global Partnership provided by the Ministry of Foreign Affairs of Japan and the Government of Mexico.
- Patent Attorney
Chisako specializes in trademark prosecution and related matters, including searches, filings, oppositions, invalidations, and cancellations, before the Japan Patent Office. She also specializes in enforcement actions, including online counterfeiting and trademark infringement issues.
With more than forty years of experience, Chavalit is highly regarded as a leading figure in Thailand. His areas of specialization include dispute resolution, intellectual property, TMT and e-commerce, as well as M&A, foreign investment and corporate law. His extensive experience also includes advising on trade competition, corporate recovery and business reorganization. In particular, Chavalit is renowned in the areas of dispute resolution and intellectual property. He was selected as a Litigation Star by Benchmark Litigation Thailand 2021 and is ranked as a leading individual for intellectual property in Thailand by Chambers Asia-Pacific 2021.
Pavinee is a leading expert in intellectual property (IP) law. She joined the Intellectual Property Practice Group of SCL Law Group (currently known as SCL Nishimura & Asahi) as an associate upon its formation in 2005. Prior to that, Pavinee was an in-house legal counsel at many companies where she gained extensive hands-on experience within general law practice, IP and e-commerce related matters. She also gained comprehensive knowledge of contracts and telecommunications working with government agencies while she was an in-house legal counsel. Pavinee was a guest lecturer and speaker on IP and information law at various forums. Currently, Pavinee routinely advises major clients on matters relating to trademark and patent registrations, copyright recordation, license agreements, as well as trademark, patent and copyright infringement. Versatile and keen, she also assists with overseas trademark and patent registration applications and acts as counsel providing expert guidance to clients throughout IP enforcement process and litigation proceedings. She has been consistently consulted with on cases involving electronic trade and commerce, domain name registrations and personal data and privacy protection. Representing numerous international and domestic organizations in both public and private organizations, Pavinee takes advantage of a refined understanding of IP prosecutions and commercial risk to deliver to the clients borderless and practical legal advice based upon reliable and comprehensive understanding of the laws, regulations and best practices in Thailand. With her comprehensive knowledge and extensive experience, she is well-equipped to meet the clients’ diverse needs whereby she tailors her legal service and professional advice to suit the particular needs of each client. Pavinee was also named an IP expert by magazines[Ed: I suggest listing which magazines, or listing only a couple if there are many.]. AsiaIP Informed Analysis and the 2022 edition of World Trademark Review 1000 are publishing the recent list.
- The 2022 updated Customs Department Notification on the Control Measures for the Export, Import and Transit of Trademark and Copyright infringing Goods in Thailand
- New PCT International Application Filing Fees announced by the Thai Department of Intellectual Property
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.