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Kensaku Takase

Partner
Intellectual Property, Information Technology & Communications

Professional Summary

Kensaku Takase is a partner in Baker McKenzie’s Tokyo office and is the Group Leader of the office’s IP Tech Group. Ken is bilingual (Japanese and English) and focuses on intellectual property law, media law, and information technology law since 1999. He has assisted many companies in various industries with cross-border transactions in the trademark, copyright and design fields.

Practice Focus

Ken is seasoned in IP work with a particular focus on trademarks, copyright and designs. He has experience dealing with contentious and non-contentious trademarks, passing-off and unfair competition matters, large-scale trademark filing programs, copyright clearances and licensing, copyright and design infringement, international trademark portfolio management, and anti-counterfeiting work. He also concentrates on IT and has been heavily involved in significant IT outsourcing deals.

Representative Clients, Cases or Matters

Intellectual Property

  • Managing the Japan trademark portfolios of major international companies in various industries including the pharmaceutical, consumer goods, electronics and fashion industries.
  • Managing the international trade mark portfolios of major Japanese companies in various industries including the vehicle, electronics and fashion industries.
  • Assisting a Japanese trading house with a multi-jurisdictional trademark portfolio assignment relating to a fashion brand.
  • Coordinating the international anti-counterfeiting and customs seizure related work for a major Japanese toy manufacturer.
  • Advising a Japanese animation company on a movie production agreement.
  • Advising a leading Japanese chemical company on a patent infringement dispute with a multinational German chemical company.

Information Technology

  • Providing data protection advice to various Japanese companies on transferring/exporting and managing electronic employee data from their overseas subsidiaries to their headquarters in Japan.
  • Leading legal negotiations on a large parcel delivery organization’s business and time critical IT hardware deal involving licensing of supplier specific IP rights and escrow arrangements.
  • Advising on contractual, IP, IT and data protection issues for an IT interfacing agreement between a client’s system and its customers’ systems, and the subsequent transitioning of this arrangement to a client provided Software as a Service platform licensed from a third party.

Publications, Presentations and Articles

  • Quoted in “TPP: would transparency mean more delay?” World Intellectual Property Review, June 2014
  • “Flat-fee licensing system falls flat” Intellectual Property Magazine, December 2013
  • “The Other Benefits of Trade for Japan” The Wall Street Journal, December 2013
  • Quoted in “Japan set to pass trademark law changes” World Intellectual Property Review, September 2013
  • Quoted in “Japan considers copyright extension”, World Intellectual Property Review, July 2013
  • Quoted in “Tokyo High Court Dings Copyright Society for Anti-Competitive Practices” Managing Intellectual Property, November 2013
  • Quoted in “Leaked TPP document reveals IP details” World Intellectual Property Review, November 2013
  • “Streaming devices scrutinised,” Copyright World, March 2009
  • “Sky and the Premier League v. Pub Landlords,” Computer Law & Security, Vol 24 No 2, 2008

Admissions

  • Foreign Registered Lawyer (gaikokuho jimu bengoshi)~Japan (2011)
  • England and Wales~United Kingdom (2005)

Professional Association and Memberships

Dai-Ichi Tokyo Bar Association – Member

Education

University of Auckland (LLB and BA)(1999)

Languages

English, Japanese

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