Kenichi NAKAYAMA

Professional Experience

Mr. Nakayama is the Head of Trademarks and Designs of our firm. He is a distinguished trademark and unfair competition law practitioner, representing both foreign and Japanese corporate clients in the procurement and enforcement of intellectual property rights.

Mr. Nakayama is an invaluable member of SUGIMURA and brings with him a wealth of practical knowledge and experience regarding Japanese and international Trademark practice. His practice spans the entire spectrum of trademark protection from filing and prosecution to enforcement, arbitration and litigation. He has represented companies in a wide range of industries such as entertainment, electronics, cosmetics, pharmaceutical and apparel in the filing and prosecution of trademark applications, opposition and cancellation actions before the Japan Patent Office. He also represents clients before the Tokyo District Court, the Intellectual Property High Court, the Japan Intellectual Property Arbitration Center, and WIPO Arbitration and Mediation Center for trademark matters, including domain name disputes. Mr. Nakayama has extensive experience assisting companies in the enforcement of their trademark rights against counterfeits through Japanese Customs and the Japanese Police.

Notably, Mr. Nakayama has been named a leading lawyer as one of the world’s leading trademark professionals in Japan by World Trademark Review 1000 for four consecutive years since 2011. He has also been listed in Chambers Asia-Pacific, Chambers Global, Managing Intellectual Property and Legal 500 Asia Pacific.

Membership

Japan Patent Attorneys Association (JPAA)
(Qualified IP Litigator)
New York State Bar
State Bar of California
Foreign Registered Lawyer (gaikokuho jimu bengoshi) in Japan (Tokyo Bar Association)
Executive Board Member, Japan Trademark Association
International Trademark Association
Legal Advisory Board for Intellectual Property Protection, Japan Customs
American Bar Association
American Intellectual Property Association

Education

LL.M., with Distinction, Tulane Law School
LL.B., Rikkyo University

Practice Areas

Trademarks
Unfair Competition
Anti-Counterfeiting
Domain Names
Designs
Copyrights
Licensing
IP Counseling
Patent Litigation

Languages

English
Japanese

Publications

“Anti-Counterfeiting activities under globalization with emphasis on IP enforcement”, Intellectual Property Management, Japan Intellectual Property Association, April 2011, Language: Japanese
“Effects of the Trademark Dilution Revision Act of 2005: Protecting your trademarks in the United States”, Harumi Matsuda’s Festschrift , Toyo Hoki Publishing, March 2011, Language: Japanese
Co-author, Dictionary of Intellectual Property Rights, Maruzen, 2003, 2004, Language: Japanese
“The Implementation Act of Protocol Relating to the Madrid Agreement concerning the International Registration of Marks in the U.S.,” AIPPI, AIPPI Japan, July 2003, Language: Japanese
“Protection of Marks from Dilution in the United States,” Patent, JPAA, March 2003, Language: Japanese
Co-author of chapter on Japan, Intellectual Property Protection in Asia (2nd Edition), LEXIS Law Publishing, 2001
Co-author, Real Knowledge about Business Model Patents, Training Institute of Japan Patent Attorneys Association, Tokyo Shoseki, 2000, 2001, Language: Japanese
“Overview of the U.S. Trade Dress Law,” Patent, JPAA, June 2001, Language: Japanese

Seminars:
Regularly speaks about practical issues in the field of intellectual property law at various professional seminars. such as Training Institute of Japan Customs, Japan Trademark Association, Japan Intellectual Property Association, Japan Institute for Promoting Invention and Innovation, and Thomson Reuters