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  1. Intellectual property
  2. Leading individuals

Who Represents Who

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The IP group at Baker McKenzie is instructed by well-known clients across a range of sectors, and is particularly recommended for its expertise in trade mark portfolio management. The trade mark team is primarily instructed by American and Japanese corporates, and joint practice head Say Sujintaya acts for clients such as Harley-Davidson, handling enforcement matters and issues of online infringement. In the strictly non-contentious space, department co-head Dhiraphol Suwanprateep is advising a leading Thai home furnishings company, Index Living Mall, on its international expansion through franchising and licensing agreements; through this mandate, the team has also handled brand protection for the client. Aside from the portfolio management work, it covers patents, commercial IP and a range of enforcement matters. The department, which includes Chansin Tangburanakij and the ‘responsive and thorough’ Nont Horayangura, also represents clients in IP litigation. It has won some notable clients in 2016-2017, including Asahi Breweries, Dyson and Saban Brands.

Entering its 70th year of operation in Bangkok, Domnern Somgiat & Boonma Law Office Ltd is entrusted to manage and protect the IP portfolios of some of the world’s largest and best-known corporates. In addition to the contentious and non-contentious work the boutique firm undertakes for clients in the tech, beauty and healthcare, designer retail and automotive industries, it also counsels the Thai government on the development of its IP laws. The team won a particularly high-profile patent infringement case in 2017, which resulted in what was perhaps the largest damages award ever granted in an IP infringement lawsuit in Thailand. Outside of the courtroom, the lawyers are regularly involved in some of the most comprehensive counterfeit raids in Thailand. Rutorn Nopakun, Chakrapat Mongkolsit, Prabjote Busdee and Napisit Benjakuljirat are partners and registered patent agents at the firm, while Apiwatt Kongsoowan and Nathapong Tongkaew are also key contacts in the practice group.

FIRMS IN THE SPOTLIGHT

Vidon & Partners (Thailand) Co., Ltd.

Originally founded in France in 1988, Vidon IP Law Group is a leading international intellectual property law firm with offices in France, Germany, Spain, Thailand and China, and thus has a global presence in key markets to successfully deliver on its clients’ cross-border and domestic transactions, supported by a team of more than 100 lawyers and consultants. 

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FIRMS IN THE SPOTLIGHT

Aside from its renowned patent and trade mark practice, Tilleke & Gibbins’ IP group includes specialist practitioners such as pharmacists, a food technician and several regulatory experts. On the contentious side, it handles enforcement, raids, criminal and civil procedures and also provides in-house training to its corporate client base, which includes household name clients in the pharmaceuticals, tech, food and beverage, media and heavy industry sectors. Alan Adcock was recently appointed as president of the Licensing Executives Society and is representing a subsidiary of a multinational pharmaceuticals company in a patent litigation case against a Thai generic manufacturer. Somboon Earterasarun, a newly made partner in 2017, manages the global IP portfolio of Thai Beverage Public Company – one of the largest beverage companies in ASEAN. Darani Vachanavuttivong has expertise in trade marks, patents and copyrights, Nandana Indananda specialises in IP litigation, and Sukontip Jitmongkolthong and Suebsiri Taweepon have experience in contentious and non-contentious IP matters. Novartis Pharma, Starbucks Coffee Corporation, Disney and Western Digital are among the department’s notable clients.

Ananda Intellectual Property is perhaps best known for its IP litigation practice, but also handles large portfolio management for well-known brands and multinational corporates. Indeed, the firm has a truly full-service IP practice, covering IP management and strategy, investigations, litigation and commercial contracts. Led by Franck Fougère, the team is made up of Thai, French and American practitioners, and has a network of domestic and international relationships, through which the team receives high-profile referrals. Having taken on a number of associates from top-ranked Bangkok-based departments, it is rapidly growing and has also recently won some household name clients in the beauty and healthcare, engineering and tech industries. The patent department is headed by Benjapol Kongsombut and the litigation department is managed by Nuttakorn Sorakun. The contracts and franchising team is jointly led by Alexandre Dupont and consultant Prathana Rebecca Knapp, and Danai Triamchanchuchai is a contact in the trade mark department.

LawPlus Ltd. runs a very active trade mark department, which handles opposition and enforcement actions, application and registration, licensing and renewals for a host of Thai, regional and international clients. In fact, the department’s clients include some of the best-known names in the tech industry. Its lawyers also have experience in copyright and patent applications and prosecution. Prasantaya Bantadtan is a registered patent attorney and specialises in IP, tech and TMT law. Kowit Somwaiya is another key contact.

Rouse is a well-known IP outfit in the Bangkok market and handles contentious and non-contentious patent, trade mark, copyright and geographical indication work. The team handles filing, prosecution and litigation, but also has experience in commercial contracts and provides consultancy services. The department is divided into three groups: a trade mark team headed by Nuttachai Unaratana, a patent group led by Prasit Siricheepchaiyan and a disputes group headed by Peeraya Thammasujarit. Fabrice Mattei is the managing partner for Thailand and Myanmar. Clients of the department have included MIT, The New Era Cap Co and Asahi Golf Co.

Satyapon & Partners Limited is a boutique IP firm with capabilities across the full range of contentious and non-contentious work. The department is led by name-partner Satyapon Sachdecha and has an enviable list of clients in industry sectors that require constant IP assistance, such as luxury goods, cosmetics, pharmaceuticals, food and beverage, and electronics. Indeed, clients of the firm include Pernod Ricard, Twitter, NFL Properties, World Wildlife Fund, De Beers, Uber and Yamaha. The team is staffed with specialist practitioners such as Sukhprem Sachdecha, and was further strengthened in 2016 by the arrival of Verasak Maiwatana, who was formerly the director of the Thai Patent Office. Kritchawat Chainapasak and Kritsana Mingtongkhum are also recommended.

ZICO IP’s ‘young and vibrant team is super responsive and one can always expect an answer to a question’. In just a few years of operation, the department has seen rapid growth in trade mark and patent work and though it is primarily instructed by regional and international clients, it has seen a marked increase in instructions from domestic clients looking to file overseas. Nuttaphol Arammuang, an active IP litigator who also has experience of non-contentious work, is ‘one of the best IP lawyers in Thailand’. Specialising in anti-piracy and anti-counterfeiting, Titirat Wattanachewanopakorn is ‘well-respected by law enforcement authorities’ and is instructed by clients such as Wahl Clipper Corporation and Boon Rawd Brewery. Wattanachewanopakorn and Arammuang are acting for Société des Produits Nestlé in investigations of and associated legal action against two websites regarding infringement of the client’s Nespresso brand. The group also handles portfolio management for clients such as Chubb Limited and Yamato Holdings.

Dej-Udom & Associates Attorneys-at-Law is instructed by a range of domestic and ASEAN clients and handles the gamut of IP matters covering copyrights, trade marks, patents, trade secrets, domain names and geographical indicators. The group has a particularly strong contentious practice, which handles criminal and civil IP litigation and has extensive experience working with government regulatory and investigatory agencies. Additionally, the team is on recommendation lists of several foreign embassies in Thailand. Poondej Krairit heads the IP department, while Punjaporn Kosolkitiwong leads the litigation group. Dej-Udom Krairit manages and oversees the IP team and is another contact in the department.

Vidon & Partners (Thailand) Co., Ltd. is, according to one source, ‘an absolutely top-class’ boutique IP firm, which ‘compares well to UK-based’ IP teams. Led by Chalinee Sriprasart, the department handles the full-range of contentious and non-contentious work in the areas of patents, trade marks, copyrights, domain names, designs and geographic indications. Indeed, the team is on one side of a long-running piece of litigation, which represents the first geographic indication case to be heard in Thailand. In addition, the department has been involved in numerous trade mark appeals, oppositions and cancellations in 2016-2017. With its multinational pedigree, the firm is regularly instructed by domestic, regional, European and American clients across a variety of industry sectors. Noémie Sancelme is another contact.

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