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Nishimura & Asahi receives top accolades in Intellectual Asset Management Patent 1000 2024
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Naoko OMUKAI
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Strategically minded Naoko Omukai is equally excellent on the contentious front. “She can be trusted to deliver an extremely high level of quality of work, and come up with practical solutions even to very challenging cases.”
World Trademark Review 1000 (2023 Edition)
Naoko Omukai has strong expertise in Brand and Design practice, and she is in charge of general corporate legal matters primarily in the field of intellectual property (IP) rights (general proceedings and contracts), IT, and media-related broadcasting/communications.
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.
Representative Work
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- 2023.1
- Successful trademark enforcement action against counterfeits (civil litigation and criminal court proceedings)
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- 2021
- Tokyu Fudosan Holdings Corporation: Sale of Tokyu Hands Inc. to Cainz Corporation
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- 2020
- Landmark trademark decision
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- 2017 -
- Toyota Motor Corporation: Successful lawsuit in Nigeria regarding trademark infringement
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- 2015
- Successful Settlements in Patent Disputes regarding Network Business
Awards & Rankings
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Naoko Omukai Receives Japan Intellectual Property Association (JIPA)’s Distinguished Service Award
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Nishimura & Asahi Receives Highest Rankings in World Trademark Review 1000 - 2024 Edition
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27 nominations at the Women in Business Law Awards Asia-Pacific 2023
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Nishimura & Asahi ranked at highest level in World Trademark Review 1000 - 2023 Edition
Seminars
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Trademark Law / Unfair Competition Prevention Act, Judicial Precedents and Corporate Responses
Tokyo
External Seminars
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Decisions regarding trademark law / Unfair Competition Prevention Act and corporate responses
Tokyo
External Seminars
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Trademark Infringement Litigation and Judicial Precedents of Unfair Competition
Tokyo
External Seminars
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Trademark Precedents in 2021
Online
External Seminars
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Recent Trends in Trademark Infringement and Cases of Counterfeit Products
Tokyo
External Seminars
Publications
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Analysis of Important Precedents & Promotion of Brand Strategy: Trademark Legal Practice
Books
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Expansion and use of product design protection in Japan
Articles
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Overview of the Current Legal Situation Regarding Diversity & Inclusion (4th)
Articles
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Overview of the Current Legal Situation Regarding Diversity & Inclusion in Japan - Part 3
Articles
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Overview of the Current Legal Situation Regarding Diversity & Inclusion in Japan - Part 2
Articles
News
- Appointment
- Notice of the appointment of our new partners
- Appointment
- Appointment to Trade Dress Committee for a research project at Japan Patent Office
- Appointment
- Naoko Omukai has been appointed as a member of the "Committee on Issues of Bad-Faith Trademark Filings" for a research project of the Japan Patent Office.
- Appointment
- Naoko Omukai has been appointed as a committee member of the Industrial Structure Council of the Ministry of Economy, Trade and Industry of Japan.
- Appointment
- Naoko Omukai has been appointed as an outside director of Prestige International Inc.
Education
- 2007
- New York University School of Law (LL.M.)
- 2000
- Osaka University (LL.B.)
Professional Experience
- Expert Committee Member, IPR Border Enforcement of Japan Customs
- Director of Japan Trademark Association
- A member of the "Committee on Issues of Trade Dress" for a research project of the Japan Patent Office
- A member of the "Committee on Issues of Bad-Faith Trademark Filings" for a research project of the Japan Patent Office
- Committee member, Industrial Structure Council of the Ministry of Economy, Trade and Industry of Japan (Trademark System Subcommittee of the Intellectual Property Committee)
- Outside Director, Prestige International Inc.
- Lecturer, The Japan Patent Attorneys Association (JPAA)
- Lecturer, The Japan Intellectual Property Association (JIPA)
- Adviser, Tokyo Metropolitan Intellectual Property Center
- Member, Practitioner Committee for trials at the Japan Patent Office
- Chair of Court Decision Study Group of Japan Trademark Association
- Member, the Private International Law Association of Japan
- Member, the International Committee of the Tokyo Bar Association
- Davis Wright Tremaine LLP, San Francisco
- Member, the International Committee of the Tokyo Bar Association