Intellectual Property Rights, Countermeasures against Counterfeit Products (Fake goods, Piracy), and License Agreements

For Corporate Clients: What Yamagami Law Offices can offer

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We are proud to offer our services in the area of Intellectual Property Rights (patents, utility models, trademarks, copyrights, knowhow, etc.), namely drafting and negotiating license agreements as well as litigations. Our practice area also covers consultation regarding the countermeasures against counterfeit goods (fake goods, piracy).

Our lawyers are bilingual (English and Chinese or Mandarin) and have extensive experiences and high expertise in cross border negotiations/contracts.

It is vital to safeguard intellectual properties and corporate brands, however, there may be following cases;

  • intellectual properties or assets /confidential technology are used by the third party without any agreement
  • brand commodity is used by the third party without permission
  • a former employee uses our knowhow and proprietary information for his own business
  • we have received a warning letter regarding infringement from the third company
  • counterfeit (fake) goods of our company are distributed overseas
  • wish to license another company our patent right and trademark
  • wish to obtain professional advice regarding a license agreement proposed by another company, etc.

Suggestions from Yamagami International Law Offices

We have both lawyer and patent attorney positions and have extensive practices in the Intellectual Property Right area. It is very important to manage your Intellectual Property Rights on a routine basis and thorough management will surely result in good effects.

The Intellectual Property Rights include patents, utility models, trademarks, design rights, copyrights, trade secrets, etc. Some need to be registered for protection and some need not.

Besides imitating or forging of products of Japanese companies is increasingly happening overseas lately and countermeasures against said counterfeit (piracy) goods are necessary and should be taken in said overseas country in addition to those in Japan (importation suspension with the customs, civil trial, criminal trial, etc.)

We trust that we will be of help to you in the Intellectual Property Right area.

Examples of our practice in the area of patents, trademarks, copyrights and other IP rights (Intellectual Property Rights)

  • Filing suspension of use of your Intellectual Property Rights and/or demanding compensation of damages with a court on basis of trademark right infringement, Unfair Competition Prevention Act against the third party who uses your brand, trademark, logo, logo mark, name or other trademark, emblem without your approval (There is a case that you can exercise your right even if a trademark is not registered.)
  • How to react in case you receive a warning letter from the third party (It is necessary to respond properly after scrutinizing the letter.)
  • Filing suspension of use of your patent and/or demanding compensation of damages with a court against the third party who infringes your patent
  • Filing a lawsuit for injunction or recovery of the damages with a court in Japan against the third party who distributes in or imports to Japan a product which infringes your Intellectual Property Rights
  • Infringement or invalidation lawsuit regarding patent, utility model, trademark, design right, etc. , lawsuit to seek for consideration from employee invention, filing an objection against an intellectual property right and filing a suit for annulment of the trial decision, etc.
  • Negotiation with the third party who infringes your Intellectual Property Rights
  • Drafting and negotiating any license agreement of your Intellectual Property Rights

Consultation seeking for the second opinion

You may wish to seek for the second opinion, though you have consulted with an expert already. Our law firm is ready to provide you with the second opinion and please feel free to contact us.

Brief Explanation regarding Intellectual Property Rights

We wish to explain briefly about Intellectual Property Rights as follows for your information and hope it would be of help to you.

1; Trademark

A trademark right is the right to protect marks, signals, holograms, characters, figures (including their motion), colors and sounds relating to the brand. Once the marks, etc. of the brand are registered as the trademark in Japan, the third party is not allowed to use them without permission in Japan and is obligated to pay compensation of the damage under Japanese laws.

Incidentally, in certain cases even if the marks are no registered, you may be able to prevent the third party from using them under Trademark Act and Unfair Competition Prevention Act in Japan.

2; Patent

A patent right is granted to protect relatively high level invention. If the invention is patented in Japan, it is possible to prevent the third party from using the invention without permission in Japan and demand the compensation of the damage under Patent Act in Japan.

Incidentally it is different from the trade secret mentioned below in the point that the content of the invention is made public in the patent procedures.

3; Utility Model

A utility model right is granted to protect a certain level of invention or technological idea which is not so advanced as a patent. Besides since the content of the technology is made public in the utility model procedures, it is different from the trade secret mentioned below.

4; Design Right

A design right is given to protect designs.

If a design is registered as the design right in Japan, it is possible to prevent the third party from using the design without permission in Japan and demand the compensation of the damage under Design Act in Japan.

5; Copyright

A copyright is given to protect a certain expression created in the area of novels, music, etc. Unlike the aforementioned intellectual property rights, the copyright is protected even if it is not registered in Japan. The copyright owner can prevent the third party from imitating his works and demand to compensate the damage under Copyright Act in Japan.

6; Trade secret

The commercial information kept confidentially in a company falls in the category of trade secret. It cannot be protected under the patent or utility model rights since it is not made public. However if your employee illegally discloses the confidential information which he obtained in undertaking his job to the third party, you are able to prevent the third party from using such confidential information under Unfair Competition Prevention Act and demand to compensate the damage in Japan.

It is vital to keep the information in strict confidence under the severe conditions daily for said purpose.

 

Notice

Your use of this site is governed by the laws of Japan and any dispute arising out of or in connection with the use of any information or materials from this website shall be subject to the exclusive jurisdiction of the Tokyo District Court in Japan.

Our services shall be provided in Japan only.

We do not guarantee any courts or any authorities make decisions same as this website. We do not assume and accept any responsibility or liability regarding this website.

 

Contact us

Yamagami International Law Offices
【Tokyo】Ueichi Building 5F, 1-6-10 Ginza, Chuo-ku, Tokyo, 1040061, Japan
【Fukuoka】Akasaka Sangyo Building 6F, 2-12-12 Daimyo, Chuo-ku, Fukuoka 8100041, Japan
Tel +81-92-477-8838
E-mail: info@yilaw.jp