Working with a Japanese Trademark Attorney: What Foreign Counsel Should Know | EVORIX

Working with Japanese local counsel can feel different from engaging counsel in other jurisdictions — different communication styles, different billing conventions, different deliverable formats. This article distills the lessons from our years working with foreign counsel from the US, EU, China, Korea, Australia, and beyond.

1. Communication Norms

Japanese professional communication tends to be:

• Formal in writing — expect cordial salutations and structured emails
• Conservative in commitments — preliminary opinions are often hedged; once a position is committed in writing, it is reliable
• Comprehensive on email — important matters are confirmed in writing, even if discussed by phone
• Calendar-aware — Japanese national holidays (especially Golden Week in late April/early May, Obon in mid-August, year-end Dec 28 - Jan 4) significantly affect deadlines

Time zone: Japan is JST (UTC+9). Tokyo business hours overlap with US West Coast evening, US East Coast late night, European morning, and Asian business hours fully.

2. What to Provide for Efficient Engagement

For trademark Office Action / Provisional Refusal cases, the most useful initial package is:

1. The full Office Action / Provisional Refusal as PDF
2. Japan registration/application number (or international registration number for Madrid)
3. Deadline information with the WIPO transmission date for Madrid cases
4. Client preferences on goods restriction, Letter of Consent willingness, budget
5. Background facts on Japan use plans, prior business relationships

No formal POA needed at the assessment stage. We typically request POA only at filing. Standard English POA forms are accepted.

3. Billing and Invoicing Practices

4. Deliverable Expectations

EVORIX's standard deliverables for foreign counsel include:

• Initial assessment memo — English, 3-5 business days
• Draft response — Japanese (filing version) + English summary or translation for review
• JPO communications — Japanese with English translation/summary
• Final outcome report — English, with translated documents and recommendation on next steps
• Status updates — at major milestones, even when no action is required from foreign counsel

All correspondence in English by default. Japanese-language drafts available on request.

5. Quality Indicators When Choosing Japanese Counsel

When selecting Japanese trademark counsel, consider:

1. Patent attorney (弁理士) registration — verify with the Japan Patent Attorneys Association (JPAA)
2. Foreign-client experience — how many overseas matters per year, which jurisdictions
3. English working capability — written and oral, of the actual handling attorney (not just an English-speaking partner)
4. Conflict-of-interest checking — clear procedures and timely responses
5. Fee transparency — published or quoted fee schedules; written engagement letters
6. Practice specialization — trademark-focused vs general IP — for Office Action cases, trademark experience matters

6. Common Pitfalls to Avoid

Based on our experience working with foreign counsel:

1. Late instruction. Forwarding the Provisional Refusal with one week to deadline limits options. Engage at receipt.
2. Assumption of US/UK practice. Letter of Consent rules, similarity tests, and evidence standards differ in Japan.
3. Poor specification at filing. Broad goods specifications often generate more refusals than narrow ones; spend time on filing-stage specification design.
4. Skipping use evidence collection. Many Article 3 refusals can be defeated with Japan-specific use evidence — but only if collected.
5. Underestimating Golden Week. Late April / early May has 4-7 consecutive holiday days. Plan deadlines accordingly.

Frequently Asked Questions