Akira WATANABE (Mr.)

Partner
Section: Legal

Profile Summary

Akira Watanabe (Mr.) graduated from the Faculty of Law at The University of Tokyo and the Legal Training Institute in Japan. He then studied at the Georgetown University Law Center and was admitted to the New York State Bar shortly after. As an attorney at law and patent attorney in the Legal Section, he specializes in intellectual property law, including patent law, trademark law, design law, copyright law; antimonopoly law, unfair competition prevention law; entertainment; business-academia collaboration, start-up companies; license agreement, joint research, and development; international transaction. He served as Vice President of the Daini Tokyo Bar Association and was in charge of, among other responsibilities, the International Committee and the ADR Center Operation Committee. He is currently a member of, but not limited to, AIPPI-JAPAN, the American Bar Association, the American Intellectual Property Law Association, and the APAA-JAPAN Anti-counterfeiting Committee. He has written various articles for organizations such as the AIPPI, JIPA, and Business Law Journal. Furthermore, he has written extensively on IP issues related to corporate risk management and IP enforcement and infringement.

Membership and Activities:

Daini Tokyo Bar Association (1999-)
   Vice President of Daini Tokyo Bar Association (2016-2017) 
The Japan Federation of Bar Associations (1999-)
Japan Institute of Invention and Innovation (2002-)
  Imitation Damages Adviser (2002-2004)
Japan Patent Attorneys Association (2003-)
AIPPI·JAPAN (2003-)
American Bar Association (2007-)
American Intellectual Property Law Association (2007-)
APAA (2010-)
  APAA・JAPAN (2010-)
   Anti-counterfeiting Committee (2010-)
Japan Intellectual Property Arbitration Center (2017-)
  Vice Chair of the Steering Committee (2019-2020)

Main Articles:

(written in English)
"Liability of an Operator of Internet Shopping Mall for Distribution of Counterfeit Goods by Shops in the Mall", AIPPI Journal Vol. 38 No.1 by AIPPI (2013)
(written in Japanese)
"Dictionary of Intellectual Property" (joint authorship) by Sanseido (2001)
"Intellectual Property Right Judicial Precedent Summary Collection" (joint authorship) by Shinnippon-Hoki (2003)
"Legal Aid Consultancy of Patent, Design and Trademark" (joint authorship) by Gakuyoshobo (2003)
"Report 182: Database Protection at National and International Level" (joint authorship) by AIPPI (2004)
"Report 203: Damages for Infringement, Counterfeiting and Piracy of Trademarks" (joint authorship) by AIPPI (2008)
"Report 210: The Protection of Major Sports Events and Associated Commercial Activities through Trademarks and other Intellectual Property Rights" (joint authorship) by AIPPI (2009)
"Assessing the Value of an Unused Patents", M&A Review, Vol. 24 No.3 by MIDC Group (2010)
"Article 101 [Indirect Infringement]", The New Commentary on Patent Act by Seirin Shoin (2011)
"Court Case Recognising Distinctiveness of 3D Trademark Acquired by Use of the Mark", Civil Cases II, Second Half of 2010 by Nippon Hyoron Sha (2011)
"Case Law and Practice: No. 404 The Scope of Art. 101, Paragraph 4 of the Patent Law and Interpretation of "exclusively" Requirement", Intellectual Property Management, Vol. 62 No. 2 by JIPA (2012)
"Report 234: Relevant Public for Determining the Degree of Recognition of Famous Marks, Well-known Marks and Marks with a Reputation Introduction" (joint authorship) by AIPPI (2013)
"Report 240: Exhaustion issues in copyright law" (joint authorship) by AIPPI (2014)
"Effects of FRAND Declaration on a Standards-Essential Patent", Civil Cases IX, First Half of 2014 by Nippon Hyoron Sha (2014)
"Chupa Chups Case" (joint authorship), "Court Case Denying Protection of Merchandise Display Design as a Trade Dress" (joint authorship), Present Intellectual Property Litigation by Yuhikaku (2014)
"Price of Non-Compliance Shown in the Latest Cases: Infringement of Intellectual Property Rights", BUSINESS LAW JOURNAL, No.91 by LexisNexis Japan (2015)
"How to Protect the Exterior of a Shop from Imitation-Lessons from Three Cases", BUSINESS LAW JOURNAL, No.113 by LexisNexis Japan (2017)
"The Unfair Competition Prevention Act: Measures to Protect the Interior and Exterior of a Shop from Imitation", Weekly Economist, No 4578 by Mainichi Shimbun Publishing (2018)

Main Lectures:

"Publicity Rights of Racehorse's Name", AIPPI (2005)
"Employee's Invention", The Specialty Lecture of Intellectual Property Law, Master's Program, Graduate School of Business Science, University of Tsukuba (2008-2009)
"Border Enforcement of Intellectual Property Infringement: Institution of Ban on the Import of Counterfeit Goods", The Institution of Professional Engineers, Japan (2008)
"Risk Management on Enforcing Intellectual Property Rights", Daini Tokyo Bar Association (2010)
"Ability Guarantee Workshop", Japan Attorneys Association (2012-2014)
"A Tremor in the Legal Landscape for Owners, Online Shopping Malls and Online Retailers", ACCJ (2012)
"Chupa Chups Trademark Infringement Case - Liability of an Internet Mall Operator (Rakuten)", INCA (2013)