Intellectual property in Thailand
Ananda Intellectual Property
Ananda Intellectual Property acts on the full range of IP matters. Patthawarat Jungjinraoen and Franck Fougere co- lead the patent department, which represents clients in the pharmaceutical, telecoms and automotive sectors. Kritchakorn Nimwenai heads up the trademarks team and advises on contentious and non-contentious work. Rujapa Prakongsri assists on copyright and trademark prosecution matters, while Nuttakorn Sorakun is the firm's chief litigator for IP matters. Thai and foreign clients are served by the practice.
Practice head(s):
Franck Fougere; Kritchakorn Nimwenai; Rujapa Prakongsri; Nuttakorn Sorakun; Patthawarat Jungjinraoen
Key clients
DKSH
TDK
Tymphany Acoustic Technology
Panasonic
L’Oréal (Enforcement)
OPPO
Mega Lifesciences
Unicharm
YG Entertainment
SM Entertainment
Nai Lert Group
Kubota
Hexal
Sephora
PERFUMIST
Sandoz
SUZUKI
Saint-Gobain
Landmark Group
Honda
ELEPHANT PARADE
Dr. Reddy’s
Amgen
Tycoon Percussion
Paul
Hutchinson
I&V Bio
Goldway Enterprises
Ciel & Terre
Peppina
MeDiNova
Exceltis
Generali
Indorama Ventures
AXA
CirCurre
GISSCO
Aeon
Anderes
Biotopen
Cold Stone
Work highlights
- Assisted Nai Lert Group, one of the oldest companies in Thailand, to set up strategies for their brands internationally including multiple trade mark searches, filings, assignments and in overcoming uncommon objections from the Thai Trademarks Office.
- Assisted well-reputed clients in various fields from South Korea for strategies for over 80 trademark prosecutions in Thailand as well as handling objections, including national filing and international Madrid application designating Thailand.Also entered into a MOU with KOTRA (Korean Trade Agency).
Baker McKenzie LLP
Baker McKenzie LLP is well known for its global handling of trademark portfolio management, enforcement matters and IP transactions. Dhiraphol Suwanprateep co-heads the team and advises on trade names, trade secrets and franchising in addition to trademark protection matters. His main area of expertise is the telecoms sector. Team co-head Say Sujintaya is noted for work on infringement and anti-counterfeiting matters relating to trademarks, copyrights and patents. Tanakrit Tangburanakij acts for clients on the importation and distribution of prohibited products as well as advice on areas such as trade secrets. Senior associate Praewpan Hinchiranan primarily acts on IP infringement matters.
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Key clients
Netflix, Inc.
National Science and Technology Development Agency (NSTDA)
PTT Exploration and Production PCL
L’Oreal SA
Toyota Motor Corporation
Unilever
Microsoft Corporation
Bangkok Broadcasting TV (BBTV)
7 Eleven, Inc.
Kao Corporation
3M
Greyhound Cafe Company Ltd.
Estee Lauder Companies Inc.
Solex International Co., Ltd.
Procter & Gamble
After You Public Company Ltd.
Thai Life Insurance Co., Ltd.
Danone
Lucky Star Weaving Co., Ltd.
Mars Incorporated
Work highlights
- Advised Carbios on access to a microorganism, and drafted an agreement on the sharing of genetic resources and associated benefits arising from the patent license thereto.
- Coordinated with the authorities to raid distributors and retailers of counterfeit masks for 3M, leading to the seizure of counterfeit products and prosecution of the infringers.
- Assisted PTTOR in Thailand with trademark protection for its expansion to foreign markets in 13 countries.
Satyapon & Partners Limited
Satyapon & Partners Limited 'distinguish themselves' with 'attention to detail and a practical approach.' Managing partner Satyapon Sachdecha is highlighted for his strength of practice as a 'leading light' in the Thai market. His decades of expertise encompasses IP transactions and litigation. The 'hardworking' Kritsana Mingtongkhum leads the trademark and litigation group, handling trademark prosecutions and contentious cases. Kritchawat Chainapasak heads up the patents and design team within the practice group.
Practice head(s):
Satyapon Sachdecha; Kritsana Mingtongkhum; Kritchawat Chainapasak
Testimonials
‘Overall, the firm impresses due to its high level of responsiveness, attention to detail, and value for money.’
‘We like the firm for its practical approach, quick turnaround, and client-centeredness. They have distinguished themselves from other firms by providing clear and concise advice that makes them a joy to work with.’
‘Worked with this firm for 14 years for trademark prosecution in the frame of a worldwide portfolio and they are very reactive, adaptable to the client’s needs and provides a good quality of work.’
‘Satyapon Sachdecha is the name partner who is a leading light in Thailand and well respected in the Thai bar. He is hands-on, technically sound, approachable and always easy to work with.’
‘Kritsana Mingtongkhum is a younger partner in the firm whom we also enjoy working with. He is hardworking, careful and responsive.’
‘Satyapon Sachdecha is especially impressive and is clearly highly experienced and always very responsive.’
Key clients
Billie Eilish
Aston Martin
Tim Hortons Restaurants International
Panasonic
Yamaha Motors
Inditex (Zara)
De Beers UK
NFL Properties
Pernod Ricard
Ministry of Agriculture, Fisheries and Food (Japan)
Government of Chile
BASF SE
Kuok Group
Heineken
Suntory Food & Beverages Asia Pte. Ltd.
Work highlights
- Executed one of the largest patent seizure in Thai history for Panasonic against one of largest local manufacturers in the same industry.
- Advising VietJet on issues with airline trademark registrations.
- Advising Billie Eilish on dealing with an issue with registration of celebrity names as trademarks.
Tilleke & Gibbins
Tilleke & Gibbins serves its clients on all facets of IP from registrations and commercialisation of IP assets to enforcement, including litigation and related regulatory advice. It is commended for providing 'wonderful support on multi-jurisdictional anti-counterfeiting' cases. Co-team head Darani Vachanavuttivong handles the enforcement of IP rights including trademarks, copyrights, and patents. Alan Adcock advises on IP acquisitions, technology transfers, and licensing. He has decades of experience in Thailand and across the ASEAN region. The 'exceptional' Wiramrudee Mokkhavesa is recognised for her experience in brand protection, IP enforcement, and anticounterfeiting matters. The firm is also responsible for regional and global IP portfolio management.
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Testimonials
‘Tilleke & Gibbins has provided wonderful support in its multi-jurisdictional anti-counterfeiting efforts. The team was extremely responsive and did not fail to provide creative and innovative solutions.’
‘I have had the opportunity to work with Wiramrudee Mokkhavesa (Pink). She has been an exceptional partner and a huge asset to the broader team. Pink never fails to look several steps ahead, brainstorm creative solutions, and has an extremely high level of expertise in the industry. Pink has been a pleasure to work with and I look forward to working with here further in the future.’
‘Good access to the key persons of the Thai Government. Communication skills are very good. That helps non-Thai clients like us very much.’
‘Partner Ms Wiramnrudee (Pink) and her team does an excellent job.’
‘Tilleke & Gibbins have the following main strengths: quality and pragmatic advocacy – strong and dedicated database on IP portfolio – responsiveness – they adjust to our specific needs with business focus. They have been creative with alternatives when there is a dispute with third party.’
‘I work mostly with Somboon Earterasarun. He has a fast turnaround time and is really client-oriented in his approach.’
Key clients
ASOS plc
Amazon Studios
BASF
Bayer (Monsanto)
GlaxoSmithKline
Grab
Hthai (Thailand) – H&M
Lazada
Philip Morris
Walmart
Work highlights
- Obtained a victory for Ajinomoto (Thailand) Co., Ltd., in a civil suit against a Thai company for use of a packaging design similar to the client’s.
- Enforcing IP rights for a world-leading multinational corporation specializing in the manufacture of imaging and optical products against multiple online infringers.
- Acted for Brembo in combating the sale and distribution of counterfeit brake products in Thailand, including coordinating a successful raid which found over THB49 million (approx. USD 1.6 million) in infringing products.
Dej-Udom & Associates Attorneys-at-Law
Dej-Udom & Associates Attorneys-at-Law acts for domestic and international clients on the enforcement of IP rights and the handling of IP transactional matters such as licensing, together with registration and renewal matters. Dr Poondej Krairit and Dej-Udom Krairit are the key partners in the department.
Practice head(s):
Domnern Somgiat & Boonma Law Office Ltd
Domnern Somgiat & Boonma Law Office Ltd has a long-established presence in the IP practice area and advises on all aspects of IP protection. Prabjote Busdee is a well-known patent attorney who has decades of experience in patent prosecution matters. Managing partner Rutorn Nopakun's expertise is in contentious matters including litigation and Apiwatt Kongsoowan specialises in trademark prosecution.
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Key clients
PUMA SE
Patagonia, Inc.
Daimler AG
Bayerische Motoren Werke Aktiengesellschaft
Calvin Klein Trademark Trust
The Polo/Lauren Company, L.P.
Under Armour, Inc.
Facebook, Inc.
Chanel SARL
Instagram, LLC
Beiersdorf AG
Johnson & Johnson
Reckitt Benckiser Corporate Services Limited
Sony Corporation
HP Hewlett Packard Group LLC
Societe des Produits Nestle S.A.
McDonald’s Corporation
Eli Lilly and Company
Pfizer, Inc.
Takeda Pharmaceutical
Glaxo Group Limited
LawPlus Ltd.
LawPlus Ltd.'s practice handles the protection of all types of IP assets. This ranges from registrations and transactions such as licensing, to investigations and enforcement actions. Leading the team is Kowit Somwaiya, the founder and managing partner of the firm who is highly experienced in both local and international IP matters. Prasantaya Bantadtan, co-leads the team and assists Thai corporate clients on trademark registrations and enforcement, patents and copyright protection.
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ZICO Law
ZICO Law assits its clients with the protection of trademarks, patents, industrial designs, copyright and trade secrets. Co-team leader and managing partner Nuttaphol Arammuang acts on all aspects of contentious and non-contentious IP matters both in Thailand and regionally. His co-team lead Titirat Wattanachewanopakorn advises on anti-counterfeiting strategies including pursuing the arrest of infringers and the seizure of counterfeit goods. He also handles IP disputes, including by means of mediation methods.
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Testimonials
‘We work with his firm extensively in Thailand and cannot recommend them highly enough.’
‘The team are experts in their field and offer pragmatic and commercial advice. They have assisted us achieve excellent outcomes for our clients in challenging circumstances and offer excellent value.’
‘Nuttaphol is personable, responsive and a pleasure to work with. We would recommend him to clients, colleagues and other overseas associates for trade mark and design issues in the ASEAN region.’
‘Titirat Wattanachewanopakorn and Nuttaphol Arammuang have wide variety of knowledge in the field of Intellectual Property. Their responses are always quick and appropriate.’
Key clients
Adidas
Nestle
Chubb
ThaiBev/Super Brand
Thai Union/Songkla Canning
United Life Sciences
PTTGC
SCG
MEGA
Lenzing
Work highlights
- Advising a leading Thai beverage manufacturer regarding a cross-border enforcement project in China. The client found counterfeit (identical knock-off) as well as confusingly similar beer products (using imitating trademark and packaging design) to its original well-known beer brand in Myanmar. Traced back to the manufacturers of these counterfeit/copycat beer products in China and conducted raid actions against them.
- Advising the newly established R&D Department of Thai Union Group PCL in patent development and protection including drafting patents, filing PCT applications, patent training and infringement analysis. The client is Thailand’s largest frozen seafood manufacturer.
- Advising a publicly listed company regarding copyright protection and licensing. The client is a regional licensee of well-known Japanese cartoon characters that offer a sub-license to local manufacturers of toys, gifts, stationery, homeware, etc. Advised client on how to handle copyright recordals, customs watch list recordals and complex issues of some licensing agreements.
Rouse
Rouse has an established reputation for representing international clients. It assists these and Thai companies a range of IP matters. Manoon Changchumni heads up the patent team while Peeraya Thammasujarit leads the dispute resolution work of the firm, such as IP enforcement matters. She also provides her clients with assistance on non-contentious work such as the commercialisation of IP assets including the drafting of agreements. Nuttachai Unaratana is responsible for the trademark group assisting Thai and foreign clients.
Practice head(s):
Manoon Changchumni; Peeraya Thammasujarit; Nuttachai Unaratana
SCL Nishimura & Asahi Ltd
SCL Nishimura & Asahi Ltd acts for global pharmaceutical companies, automobile manufacturers and petrochemical companies in respect of all aspects of IP protection. Team head Phatthrawat Nakaranuruck assists clients in the public and private sectors on matters such as licensing and distributorship agreements and technology transfer transactions. Kallayarat Chinsrivongkul is noted for her patent and trademark prosecution experience while managing partner Chavalit Uttasart has a broad practice in respect of IP protection and IT cases.
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