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Patent Attorney Hiroki Matsui

03_00_弁理士・弁護士紹介47

  • Specialties and Expertise

    Hiroki Matsui specializes in design and trademark application filing, examination responses, judgments (appraisals), and infringement cases. He has a wealth of experience in design and trademark practices in general not only in Japan, but also in Europe, Asia, and the United States. Particularly in terms of strategic design applications for protecting design ideas and legal and managerial brand strategies, he excels at providing services that leverage his advanced expertise both in the design and trademark fields.

  • Languages used

    Japanese and English
  • Qualifications

    1998 Registered as a patent attorney

  • Education and career history

    1997 Graduated from the Department of Philosophy, Faculty of Literature, Kwansei Gakuin University
    1998 Joined the Ai Association of Patent and Trademark Attorneys
    1998 Registered as a patent attorney
    2004 Appointed a member of the Trademark Committee, Japan Patent Attorneys Association (JPAA)
    2005 Appointed chairman of the Planning and Coordination Committee, Kinki Branch Office, JPAA
    2005 Granted the Supplementary Note of Specific Infringement Lawsuit Counsel
    2006 Received practical training on European design and trademark matters at W. P. Thompson & Co. in the U.K.
    2007 Appointed as a member of the Design Committee, JPAA
    2008 & 2009 Appointed deputy head of the Kinki Branch Office, JPAA
    2009 & 2010 Appointed deputy head of the Kinki Branch Office, JPAA
    2008 to 2011 Appointed a researcher at the Central Research Institute of Intellectual Property, JPAA
    2011 Joined LEXIA PARTNERS
    2011 Appointed a part-time lecturer at the Faculty of Intellectual Property, Osaka Institute of Technology, and the Graduate School of Intellectual Property
    2013 & 2014 Appointed deputy director of the International Activities Center, JPAA
    2015 Appointed chairman of the Design Committee, JPAA
Books

Practice of Community Trademark and Community Design (Japan Institute of Invention and Innovation, 2010)

Articles

“‘Legitimate Use of Trademarks’ in the CTM Opposition and Revocation Procedures” (Intellectual Property Management, July 2013, Vol. 63, No. 7)

“Consideration of the Elements of Design Similarity Judgments-The Color Contact Lens Case Study-” (Intellectual Property Management, June 2013, Vol. 63, No. 6)

“The Significance of Article 104-3 of the Patent Law under the Trademarks Law” (Separate; Volume 2 of the 2010 issue of Patent)

The World of Community Trademarks and Community Design (October 2009 issue of Patent)

“An Informal Chat on European Trademarks” (TM-SONAR Trademark Column)

“‘Trademarks Deemed as Identical from a Common Sense Perspective’ in a Trial for the Cancellation of a Registered Trademark Not in Use” (coauthored; March 2009 issue of Patent)

“Design Similarities: Implementation of Article 24-2 of the Design Law and Subsequent Developments” (Bulletin No. 22 of the Association for Kansai Patent Information Center (68th volume of the set))

“Applying Article 3-2 of the Trademarks Law to a Three-dimensional Trademark Consisting of a Product’s Three-dimensional Shape Only” (Companies and Inventions, November 2007 issue)

“Trademark Similarities in the Registration Process” (Companies and Inventions, September 2005 issue)

“Real Estate Saleability and Confusion under the Unfair Competition Prevention Law” (Companies and Inventions, January 2005 issue)

“Similarities and Confusion Found in Article 2-1-1 of the Unfair Competition Prevention Law” (Companies and Inventions, January 2004 issue)

Lectures

JPAA:
Trainer for new employees: “Practical Work in Applying for Design Registrations,” held by the JPAA Training Center, 2003 E008

Practical trainer: “Exercises on Design Registration Applications,” held by the JPAA Training Center, 2009–present

Patent seminar lecturer: “Design,” held by the JPAA Kinki Branch Office, 2004, 2007, 2010, and 2014

Design seminar lecturer for the JPAA Kinki Branch Office, 2014 and 2015

Patent Attorneys’ Day Festival entitled “Design and Trademarks that Reinforce Copyrights,” held by the JPAA Kinki Branch Office, 2015

Lecture entitled “The Geneva Act of the Hague Agreement,” held by the JPAA Kinki Branch Office, 2015

Lecture entitled “Case-based Foreign Design Application Filing,” held by the JPAA Kinki Branch Office, 2013

Lecture entitled “Prosecution Strategies for Trademarks and Designs,” held by the JPAA Kinki Branch Office, 2012

Lecture entitled “Strategic Use of Partial Design,” held by the JPAA Hokkaido Branch Office, 2014

Lecture entitled “Practice of Filing International Design Applications,” held by the JPAA Hokuriku Branch Office, 2014

Forum entitled “The Significance of Article 104-3 of the Patent Law in the Trademarks Law,” held by the JPAA’s Central Research Institute of Intellectual Property, 2009

Trainer for patent firm employees: “Design” and “International Treaties and European Trademarks,” held by the Patent Attorneys Cooperative Association of Japan, 2009–present

Japan Patent Office (JPO):
Panelist in charge of a presentation from the Brazilian patent office entitled “A Dialogue with Emerging Countries” at the JPO’s symposium on emerging countries, 2010

Lecturer and coordinator for the seminar on the strategic use of design and design rights in Kobe and Osaka entitled “Strategic Use of Design Rights in a Comprehensive Intellectual Property Strategy,” 2011

Bureaus of Economy, Trade and Industry:
Seminar for female entrepreneurs entitled “Best Reinforcement Practices for Your Business: Brand, Naming, and Design,” held in the Kinki district, 2015

Seminar entitled “Building Corporate Branding: An Approach to Brand Protection,” held in the Kinki district, 2015

Seminar entitled “Practice of Legal Protection and Contract Handling with Respect to Characters,” held in the Kinki district, 2014

Overseas development guidance seminar entitled “The Design and Trademark System in the EU,” held in the Kinki district, 2014

Seminar entitled “A Seminar on Cute Things,” in the Chugoku district, 2014 and 2015

Japan Institute of Invention and Innovation (JIII):
Lecturer at basic intellectual property seminar entitled “Design,” held by JIII in Osaka, 2009-present

JIII lecture entitled “Practice of Filing International Design Applications and Application Filing in the United States, Europe, and China,” held in Osaka, 2014

Lecturer at basic intellectual property seminar entitled “Related Design and Partial Design,” held by JIII in Hyogo, 2010

Lecturer at basic intellectual property seminar entitled “Definitions and Registration Requirements for Design,” held by JIII in Hyogo, 2010

JIII lectures entitled “Foreign Trademarks and Design” and “Chinese Design,” held in Hiroshima, 2011

Japan Intellectual Property Association:
Course A: “Design” and “Trademarks,” 2013–present

Japan Trademark Association:
“Trademark Trial System,” 2010–present

“The Significance of New Trademarks and Comparison with Three-dimensional Trademarks and Design,” 2015

University lectures:
“Design and Trademarks,” at Kwansei Gakuin University, 2005 E009

“Protection of Design,” at Kyoto Seika University, 2009

Other:
“The Latest Strategic Application Filing Approach for Design and Brand Protection” by the Japan Intellectual Property Arbitration Center, 2015

“The Frontier of Design Protection” by the Japan Industrial Designers’ Association, 2015

Lecture by the Kobe City’s Design School entitled “Use of Intellectual Property Rights in the Design Field,” 2012 and 2014

“Product Package Protection,” by Thomson, 2013

“The Madrid Protocol and Watching,” by Thomson, 2012

Overseas:
“Protection of Famous And Well-Known Trademarks in Japan, Eheld by AIPLA, Washington D.C., USA, 2003

“Development of Similarity of Marks in Japan,” held by AIPLA, Washington D.C., USA, 2009

Tsai, Lee & Chen 20th anniversary event entitled “Japanese design registration and its strategy,” 2015

In addition to the above, Hiroki Matsui has given many seminars as a guest lecturer at various companies on topics such as corporate brand and design strategies.

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Patent Attorney Chisako Munesuke

03_00_弁理士・弁護士紹介51

  • Specialties and Expertise

    Chisako Munesuke specializes in design and trademark application filing, examination responses, (appeal) trials, and opposition (objection) cases in Japan and overseas.

  • Languages used

    Japanese and English
  • Qualifications

    2015 Registered as a patent attorney

    - STEP EIKEN Grade: Pre-1
    - TOEIC Score: 950

  • Education and career history

    2003 Graduated from the Faculty of Law, Kyoto University
    2003 Joined a company
    2005 Joined HARAKENZO World Patent & Trademark Intellectual Property Law Firm
    2009 Joined ARCO Patent Office
    2015 Joined LEXIA PARTNERS
    2015 Registered as a patent attorney
    2016 Appointed a member of the Trademark Committee, Japan Patent Attorneys Association (JPAA)
    2017 Appointed a part-time lecturer at School of Policy Studies, Kwansei Gakuin University

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Patent Attorney Keiko Tanaka

03_00_弁理士・弁護士紹介49

  • Specialties and Expertise

    Keiko Tanaka specializes in trademark application filing, examination responses, (appeal) trials, and opposition (objection) cases in Japan and overseas. She also has experience in trademark infringement litigation. Keiko Tanaka has a wealth of experience in the protection of prominent brands in Japan and overseas.

  • Languages used

    Japanese and English
  • Qualifications

    2005 Registered as a patent attorney

    - STEP EIKEN Grade: 1
    - TOEIC Score: 970

  • Education and career history

    1998 Graduated from the Faculty of Law, Okayama University
    1999 Graduated from the Law School, Hull University, U.K.
    2000 Joined Sonoda & Kobayashi
    2005 Joined Soei Patent & Law Firm
    2005 Joined TMI Associates
    2005 Registered as a patent attorney
    2013 Joined LEXIA PARTNERS

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Patent Attorney Yukihiro Suzuki

鈴木行太

  • Specialties and Expertise

    Yukihiro Suzuki specializes in design and trademark application filing, examination responses, (appeal) trials, and opposition (objection) cases in Japan and overseas. In particular, Yukihiro has a wealth of experience in prosecution of design applications and drafting design protection strategy using portion design and related design system.

  • Languages used

    Japanese and English
  • Qualifications

    2016 Registered as a patent attorney

  • Education and career history

    2007 Graduated from the Department of Macromolecular Science and Engineering, the Faculty of Fiber, Kyoto Institute of Technology
    2009 Graduated from the Department of Advanced Fibro-Science (Master's Program), Kyoto Institute of Technology
    2009 Joined a company
    2010 Joined Fujimoto & Partners
    2016 Registered as a patent attorney
    2017 Joined LEXIA PARTNERS

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