Professional Summary
Mariko Nakayama is a certified patent and trademark lawyer in Japan and a member of the IP Tech Group at the Firm’s Tokyo office. Prior to joining Baker McKenzie, she worked at a prominent Japanese patent office and law firm. She has been practicing since 2001.
Practice Focus
Trademarks
Mariko represents both international and domestic clients across a range of trademark matters in Japan, including trademark prosecutions, oppositions, invalidation and cancellation actions, litigation and trademark searches. She also assists Japanese clients with the filing of trademark applications outside Japan.
- Specializes in Japanese trademark law and practice.
- Analyzes trademark usage risk factors and provides risk mitigation advice.
- Provides advice on trademark application filing strategies and trademark use.
- Handles trademark portfolio transfers between companies.
- Handles trademark-related due diligence.
- Conducts seminars and lectures on trademark laws and practice for clients.
Design rights
Mariko represents both domestic and international clients in relation to their design rights in Japan.
- Specializes in Japanese design law and practice.
Patents
Mariko represents both domestic and international clients in recordal of patent transfer cases in Japan.
- Handles patent portfolio transfers between companies.
Copyrights
Mariko assists both domestic and international clients with registration and other copyright issues.
Representative Clients, Cases or Matters
- Represented a multinational consumer goods company which owns many brands and trademarks in the handling of its trademark-related matters in Japan, including Japanese trademark prosecution and clearance and consulting in relation to and management of its Japanese trademark portfolio.
- Represented a luxury goods and services company in the handling of its trademark and design right-related matters in Japan, including Japanese trademark and design right prosecution and clearance and consulting in relation to and management of its Japanese trademark and design portfolios.
- Represented a global pharmaceutical company with respect to Japanese trademark prosecution and clearance for pharmaceutical brand names, management of its Japanese trademark portfolio and submission of applications for suspension of the import of trademark infringing goods to Japan Customs.
- Represented an international fast food restaurant company in handling Japanese trademark prosecution and clearance for its product and service names, shop names and characters and consulting in relation to and management of its Japanese trademark portfolio.
- Represented an international beverage and food manufacturer in handling its trademark and design rights prosecution in Japan for its product and service names and product packaging and consulting in relation to and management of its Japanese trademark and design rights portfolios.
- Assisted a Japanese sporting goods manufacturer with respect to its worldwide trademark prosecution and management of its global trademark portfolio and overseas anti-counterfeiting project.
- Represented a Japanese supplier of optical materials and components in its trademark prosecutions in Japan for its product names and consulting.
- Represented a Japanese broadcasting company in its domestic and international trademark prosecutions.
- Assisted with a large-scale patent portfolio transfer associated with the restructuring of an international pharmaceutical company and its affiliates; acted for the client in recording the transfer with the Japan Patent Office.
- Conducted seminars and lectures regarding trademark law and practice for clients.
Publications, Presentations and Articles
- “Protection of well-known and famous trademarks – Defensive marks,” Patent (separate volume No. 21), The Central Research Institute of Intellectual Property of Japan Patent Attorney Association – Report No. 46, March 2019, Language: Japanese
- Co-author, “Japan introduces non-traditional trademarks,” Managing Intellectual Property, May 2015, Language: English
- Co-author, “Report Q230: Infringement of trademarks by goods in transit,” AIPPI, 2012, Language: Japanese
- Co-author, “Report Q218: The requirement of genuine use to maintain trademark protection,” AIPPI, 2011, Language: Japanese
- Co-author, “IT Intellectual Property and Legal Work,” Nikkan Kogyo Shimbun, 2004 (1st Edition) and 2008 (2nd Edition), Language: Japanese
Admissions
- Japan, Patent and Trademark Attorney (2001)
- Qualified to represent clients in Japanese infringement litigation in collaboration with an attorney-at-law (2006)
Professional Association and Memberships
- Japan Patent Attorneys Association (JPAA) – Member
- Foreign Trademark System Committee of the Japan Trademark Association (JP-TA) – Member
- International Trademark Association (INTA) – Member
- Examiner for the Japan Patent Attorney bar exam (2014-2015 and 2017-2018)
- Central Intellectual Property Research Institute of the Japan Patent Attorneys Association – Researcher (September 2017 – present)
Education
- Waseda University (LLM) (2000)
- Waseda University (LLB) (1997)
Languages
Japanese
English