Trademarks during covid: Exclusive insights from law firm experts in Japan

As 2020 draws to a close, IP practitioners from around the world share their experience of how the covid-19 crisis shaped their trademark practice – and how changes adopted this year could shape the future of the industry.

Today, WTR presents exclusive insights from partner Tomoe Takahashi and senior associate Mikako Tsukada at Hogan Lovells in Japan.


Insights from Tomoe Takahashi and Mikako Tsukada at Hogan Lovells:

What has been the most significant challenge for your trademark practice caused by the pandemic?

Reduced staffing in our offices as a result of increased remote working has presented a significant challenge with respect to the prosecution of trademark applications. In the course of our practice, we file trademark applications in more than 100 countries on behalf of our clients. Trademark offices in many of these countries do not have electronic database systems, thus we typically work with original documents and attend to required notarisation/legalisation. While our pre-pandemic internal staffing and filing system was set up to handle these issues, our reduced number of business services colleagues working in the office due to the pandemic has made our typical workflow a bit more difficult. We have met the challenge by coming together as a team and developing different workflows to meet the government requirements in the various jurisdictions in which we work.

Since the beginning of the year, did you make any changes to help clients that may be facing challenges due to the pandemic?

From April 2020, we have been hosting a series of webinars in Japanese to support our Japanese clients in continuing their legal education while working remotely during the covid-19 pandemic. We planned the webinar series, including topics, time, and duration, based on a survey of our clients that we conducted in order to better understand our clients’ needs and interests. As of October, 13 members of the team have presented in seven different webinars on a wide range of topics including case laws on distinctiveness and similarity of marks in various jurisdictions. The webinar series has been highly successful drawing an average of almost 200 attendees per webinar and a total of 1,282 attendees overall.

How have you engaged in new business and client generation during the pandemic, and will elements of this approach remain in place post-covid?

We continue to hold webinars for our clients working remotely as discussed above. Furthermore, the firm has also been developing a groundbreaking online platform, Total Brand Care, which streamlines the branding process and strengthens brand value through smart legal technology. This platform, which is due to launch in February 2021, will help business, marketing and legal teams collaborate when launching new brands, and protect those brands through innovative and time saving modules.

What are your thoughts on how associations and IP offices have adapted to ensure continued service to members/customers?

The Japan Patent Office (JPO) has been very efficient and flexible in continuing to offer service to its customers. It has accepted all applications during the shut-down caused by covid-19 (which was between 13 April and 31 May 2020) and has worked seamlessly throughout this very difficult time period. In addition, it has offered remedies for due dates missed as a result of the pandemic. For example, if an original POA cannot be submitted by the due date as a result of covid-19, it could be submitted at a later date. Furthermore, the agency has actively posted helpful information on its website regarding the effect of covid-19 on overseas IP offices.

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