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The IP practice at Baker McKenzie has strength across the board, although patents and transactional and commercial IP work were among the busiest areas during 2017 and 2018. The already sizeable group expanded further with the arrival of several new associates and patent specialists. In an illustration of its cross-border capabilities, the Bangkok team recently handled the global coordination of trade mark enforcement and brand protection strategy for an international company. Elsewhere, Dhiraphol Suwanprateep successfully represented a client in an appeal against the rejection of its trade mark registration by the Trademark Board. The team is also regularly instructed by multinational companies for customs interceptions and border enforcement strategies; for one household name company, Say Sujintaya and Chansin Tangburanakij handled 59 customs cases. Its media law practice is an additional draw; under the leadership of Sujintaya, the dedicated media and entertainment group advises film and TV companies on trade mark and copyright issues, as well as licensing, distribution and broadcasting. Senior associates making a mark in the team include Radeemada Mungkarndee and Siranya Rhuvattana.

Well established as a leading IP firm in Thailand, Domnern Somgiat & Boonma Law Office Ltd is active in IP prosecution and enforcement. It acts for a largely international client base, which includes household names in the technology, automotive and food and beverage sectors, and it is also expanding its work with local companies. The firm maintains a healthy market share of trade mark and patent applications filed in Thailand by foreign companies. Customs seizure cases are another area of expertise at the firm, which deploys customs coordinators to inspect seized goods and file complaints against the importers or exporters. In major litigation, Rutorn Nopakun and associate Chalermphong Jitkuntivong are representing a UK client in a copyright infringement action brought against a Thai company. Other work occupying the team includes trade mark oppositions and counterfeit raids. Leading practitioners in the practice include Chakrapat Mongkolsit, Apiwatt Kongsoowan, Nathapong Tongkaew, Somporn Liampaw and patent attorney Prabjote Busdee.

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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Covering the gamut of IP services, Tilleke & Gibbins has established itself as a leading firm for IP enforcement, litigation and commercialisation, and is at the forefront of legal developments in IP. As an example, it was the first law firm to register sound marks (for several companies) in Thailand following a ministerial regulation in 2017 which allowed the registration of such marks under the Trademark Act; Kasama Sriwatanakul took a lead role in this work. The team also benefits from close cooperation with the firm's TMT department; this combined expertise allows it to advise clients on copyright protection in Thailand and further afield. In a major victory in 2017, Nandana Indananda and a team successfully represented Honda Access Corp in a case before Thailand’s Central Intellectual Property and International Trade (IP&IT) Court against several Thai companies. Darani Vachanavuttivong is the co-managing partner and managing director of IP; Alan Adcock is the deputy director of the IP and regulatory affairs groups. A leading practitioner for anti-counterfeiting and IP enforcement, Sukontip Jitmongkolthong acts for international companies, specialising in the apparel, automotive and electronics sectors, and also trains government authorities on product identification. Suebsiri Taweepon, who is also well versed in anti-counterfeiting and criminal raid actions, is particularly strong in the technology and software industries.

IP litigation is a traditional area of focus at Ananda Intellectual Property, which is also well versed in non-contentious IP matters, including portfolio management for multinational companies. While the firm’s trade mark department remains steady, the biggest developments have been in patents, where the firm has significantly expanded its practice. In a closely followed case, the team has been defending a US-headquartered technology company in sprawling patent litigation brought by a Japanese company. Clients frequently turn to the team for IP work in Thailand, and it is also equipped to handle regional IP matters, cooperating with law firms in other Southeast Asian jurisdictions. Key clients include Amgen, L’Oréal, Landmark Group and Honda. Founding partner Franck Fougère oversees the team; Nuttakorn Sorakun is the litigation head; Benjapol Kongsombut leads the patent department; and Danai Triamchanchuchai is a key contact for trade marks and contracts.

Dej-Udom & Associates Attorneys-at-Law’s broad IP practice takes in patents, trade marks, copyrights, trade secrets and domain names. The team provides IP services in Thailand and elsewhere in the ASEAN region and has ancillary expertise in corporate, immigration and employment law. Litigation was a particularly busy area during 2017 and 2018, with the team achieving a number of successes in trade mark disputes. The firm acts for several American, European, Japanese and Chinese companies operating in the retail, hotels and food and beverage sectors. It also counts a number of domestic and regional companies among its client roster. Founder and managing partner Dej-Udom Krairit draws on almost 50 years’ experience in the market. Poondej Krairit is the IP practice head and Punjaporn Kosolkitiwong heads the litigation department.

IP is a key practice area at LawPlus Ltd.; the team continues to receive instructions from its longstanding clients and has also picked up a number of new clients from the health, education and technology sectors. Its trade mark practice remains buoyant, with recent work including Kowit Somwaiya’s representation of a client in trade mark oppositions against a trade mark squatter. Like other firms in the market, the team saw an uptick in patent cases in 2017 and 2018. Coypright work also features. Drawing on 17 years' experience, Prasantaya Bantadtan advises corporate clients on their IP issues in Thailand and internationally. At the associate level, Paramee Kerativitayanan is dedicated to IP prosecution and enforcement and has won several recent cases for clients.

Dedicated IP firm Rouse has a solid offering in Bangkok, providing trade mark, patent, designs and copyright advice and handling a range of contentious matters. In addition to its comprehensive IP service in Thailand, the team in Bangkok assists its clients across the ASEAN region, and the highly regarded Fabrice Mattei also acts as country managing partner for Myanmar. Past work includes its successful representation of a client before the IP&IT Court and subsequently before the Supreme Court in a trade mark registration case. Prasit Siricheepchaiyan focuses on patent drafting and prosecution, Nuttachai Unaratana on trade mark prosecution. Manoon Changchumni  is the Thailand country manager and litigation head Peeraya Thammasujarit is the deputy country manager.

Highly experienced boutique firm Satyapon & Partners Limited covers the gamut of IP and saw a particular uptick in litigation in 2017 and 2018. Other work spans trade mark and patent applications and searches, raid actions and customs seizures. The majority of its clients are international, although it also acts for a number of local companies. Outside of Thailand, the team assists its clients with IP portfolio management in Cambodia, Laos, Myanmar and Vietnam. In addition to his work as managing partner, Satyapon Sachdecha is well known as a lecturer and in his role as President of the Intellectual Property Association of Thailand, a position he has held since 2009. Sukhprem Sachdecha regularly takes a lead role on the firm’s key cases, with experience representing clients in the pharmaceuticals, IT and electronics sectors. Verasak Maiwatana oversees patent prosecution and litigation. Kritchawat Chainapasak and Kritsana Mingtongkhum are also names to note.

The well-regarded team at ZICO IP balances a busy workload of contentious and non-contentious IP matters. Its work extends beyond Thailand, with the team regularly assisting clients with IP portfolio management in Cambodia, Laos, Myanmar and Vietnam. In a case that utilised a newly implemented section of the Trademark Act concerning illegal refilling, the team represented a well-known brewery in an infringement claim against several companies; after sending cease and desist letters, the team successfully settled the dispute with eight companies. Other clients include multinational brands and regional clients in various sectors. In recent internal developments, the firm made several promotions at the junior and senior associate levels. Practice co-heads Titirat Wattanachewanopakorn and Nuttaphol Arammuang each count over 13 years of experience; Wattanachewanopakorn has particular expertise in anti-counterfeiting and anti-piracy, and Arammuang's practice takes in litigation, transactional IP, trade secret management and data protection.

Vidon & Partners (Thailand) Co., Ltd. celebrates its 20th year of operation in Bangkok in 2019, while its French headquarters turned 30 in 2018. With an initial focus on anti-counterfeiting in Thailand and the region, the Bangkok team has since expanded its workload and now offers broad IP services. Prosecution work and opposition and cancellation actions are mainstays, and the team is also adept in litigation. Past cases included its negotiation of a settlement agreement on behalf of a client in a copyright infringement dispute, which involved a cross-office team of Thailand and France-based lawyers. The firm also complements its IP practice with ancillary expertise in commercial contracts (including licensing, distribution and marketing agreements). Leading practitioners in Thailand include legal department head Chalinee Sriprasart, Noémie Sancelme and Maturos Piyachotisukij, who leads the patent practice.

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