Domnern Somgiat & Boonma Law Office Ltd > Bangkok, Thailand > Firm Profile
Domnern Somgiat & Boonma Law Office Ltd Offices
719 SI PHRAYA ROAD
BANGRAK
BANGKOK 10500
Thailand
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Domnern Somgiat & Boonma Law Office Ltd > The Legal 500 Rankings
Thailand > Intellectual property Tier 1
Helmed by Rutorn Nopakun
, Chakrapat Mongkolsit, Prabjote Busdee, Apiwatt Kongsoowan and Nathapong Tongkaew, specialist IP firm Domnern Somgiat & Boonma Law Office Ltd maintains a varied IP offering, covering commercialisation, prosecution and litigation services, whilst undertaking a significant amount of filing work. Its patent team holds experience across chemicals, biochemistry, pharma and mechanical industries. Nopakun, Kongsoowan and Tongkaew strengthen the practice with their trade mark expertise, while Mongkolsit and Busdee contribute their patent knowledge to the team. Practice head(s):
Rutorn Nopakun; Chakrapat Mongkolsit; Prabjote Busdee; Apiwatt Kongsoowan; Nathapong Tongkaew
Testimonials
‘The team is very responsive, particularly experienced and competent. I like the fact that the advice provided by the team is always sensible, strategic and commercial.’
‘I have also been impressed by the team’s ability to deal with novel issues sensibly and speedily.’
‘Their ability to provide sensible, strategic and commercial solutions, as well as their responsiveness and speed of service, makes them stand out from the rest.’
Key clients
Mercedes Benz
Puma
Hugo Boss
The Polo/Lauren Company
Calvin Klein
Chanel
Nestle
McDonalds
Johnson & Johnson
Beirsdorf
Work highlights
- Advised a global Danish firm on a complex patent infringement case that involves potential, significant damages for the infringers. The case is currently pending with Thailand’s Specialized Court of Appeals.
- Advised a US-based Sports group on the rejection of the Association logo by Thailand’s Trademark Board. Based on DS&B’s arguments – the rejection was reversed, and the mark was accepted for registration.
- Advised a Swedish client on a trademark counterfeiting case. The infringer ceased using the client’s trademark for a short period of time. Subsequently, as the counterfeiter resumed illegal activities, DS&B again represented the client. The counterfeiter agreed to cease the infringement activity – and paid damages.
Domnern Somgiat & Boonma Law Office Ltd > Firm Profile
The firm: Domnern Somgiat & Boonma was established by Ina Wilhelmina Jorgensen. Born in Bangkok on 14 November 1905, Ina was the youngest of the four children of Carl and Wilhelmina Jorgensen, a Danish couple living in Thailand, which was then still known as Siam. At the age of 23 she joined the law firm of Tilleke & Gibbins as secretary to the partners, eventually becoming the office manager. In 1931 Thailand’s first Trade Marks Act was introduced, and the firm actively engaged in handling trade mark prosecution on behalf of its clients. When the Second World War broke out in 1939 and subsequently affected Thailand, the partners, all British subjects, dispersed, leaving Ina to look after the interests of the firm.
After the war ended in 1945, Brigadier Victor Henry Jaques, the last surviving partner, returned to Thailand to resume the law practice of the firm. On his retirement in 1947, he sold the name and part of the business to others and assigned the trademark side of the business to Ina, who then named it ‘Jorgensen & Co.’ At the outset, Brigadier Jaques still worked in partnership with Ina. When he died a few years later, she continued to keep the firm operating, serving clients with a small staff of about five people. The Trade Marks Act was at that time approaching its twentieth anniversary. Ina then enlisted Domnern Garden of Harvard Law School who had been admitted to the Thai Bar. He in turn brought in former Registrar of Trademarks Somgiat Sitthisiri and later Chulalongkorn Law School and Columbia Law School graduate Boonma Tejavanija. Ina retired in 1981 at the age of 76 and the firm became Domnern Somgiat & Boonma a few years later.
When Thailand’s first Patents Act was introduced in 1979, the firm began practicing patent law. It employed a panel of chemists, engineers and experts from other scientific fields, most of whom were connected with a university. Through its foreign associates, it also began handling trade mark and patent work outside Thailand, especially in Indo-China and other South-East Asian countries.
Areas of practice: Domnern Somgiat & Boonma is a law firm specialising in intellectual property laws which provide both IP prosecution and IP enforcement services. It currently has six partners consisting of five attorneys-at-law admitted to the Thai Bar, namely Rutorn Nopakun, Chakrapat Mongkolsit, Apiwatt Kongsoowan and Nathapong Tongkaew, and a patent attorney with both legal and technical backgrounds, Prabjote Busdee. It has 136 full-time members (including the partners) and 42 outside experts from various technical fields with whom it consults regularly on technical issues. About 12.5% of trade mark applications filed in Thailand and 50% of patent applications filed by foreign companies in Thailand are handled by the firm. The firm also regularly handles trade mark and patent work through associates in Vietnam, Laos Cambodia and Myanmar.
The firm can arrange police raids against manufacturers, distributors and retailers of counterfeit goods and is capable of handling criminal and/or civil proceedings in court. For police raids, the firm has a team consisting of two-four raid co-ordinators. It also has a good relationship with the Economic Crime Division (ECD, the police unit specifically charged with enforcing IP rights), and the Department of Special Investigation (DSI, a non-police law enforcement agency charged with handling, among other things, large, high-profile IP enforcement cases).
The firm also has experience in handling customs seizure cases. Its customs coordinators regularly respond to requests from the Thai Customs Department to inspect seized goods believed to be counterfeit, and, if possible, file formal complaints against importers and/or exporters.
The firm has an IP litigation team consisting of four experienced attorneys at law specializing in handling court cases relating to IP issues.
In addition to IP, the firm has expanded to other fields including corporate, contract, telecommunication and labour laws.
Main Contacts
| Department | Name | Telephone | |
|---|---|---|---|
| Trade mark prosecution | Nathapong Tongkaew | ||
| Trade mark renewal and amendments | Rung-Aroon L Pattanasuk | ||
| Overseas trade mark prosecution | Apiwatt Kongsoowan | ||
| Patent prosecution | Chakrapat Mongkolsit | ||
| Patent prosecution | Prabjote Busdee | ||
| Non-IP practice | Nathapong Tongkaew | ||
| Non-IP practice | |||
| IP enforcement | Rutorn Nopakun | ||
| IP enforcement | Nathapong Tongkaew | ||
| Trade mark consultancy | Nathapong Tongkaew | ||
| Copyright consultancy | Rutorn Nopakun | ||
| Patent consultancy | Chakrapat Mongkolsit | ||
| Patent consultancy | Prabjote Busdee |
Lawyer Profiles
Staff Figures
Number of lawyers : 20Languages
English ThaiMemberships
IPAT APAA INTA ECTA FICPI PTMG AIPPI ASEAN IPA AIPLA LESIOther
Contacts : Rutorn Nopakun (partner)International Capabilities
The firm was established in 1947, and in the nearly 80 years since then, Domnern Somgiat & Boonma (DS&B) has been advising both global and local clients on IP matters affecting businesses in Thailand and in surrounding countries. For this year to date (December 2022), the firm has advised global brands, with headquarters in Denmark, Switzerland, Germany, Belgium, Italy, Spain, France, the Netherlands, the US, Japan, South Korea, and Singapore. Current statistics show that DS&B is the leading firm in Thailand for Patent applications filed by foreign parties – and for Trademarks, the firm represents approximately one-third of the world’s top brands. Additionally, following Thailand’s accession to the Madrid Protocol, DS&B is now handling a large portion of all provisional refusals by many top Madrid filers. International brands represented by the firm for IP work are myriad, and good examples include: Auto – Honda Motor Co., Ltd., Hyundai Motor Company, Mercedes-Benz; Computers / Tech – Adobe Inc., Huawei Technologies Co., Ltd.; Personal Apparel – HUGO BOSS Trade Mark Management GmbH Co. KG, Chanel SARL, NIKE Innovate C.V., The Polo/Lauren Company, L.P.; Cosmetics/Personal Care – Beiersdorf AG, Johnson & Johnson; Electronics – Sony Corporation, HP Hewlett Packard Group LLC, Mitsubishi Electric Corporation; F&B – Heineken Brouwerijen B.V, McDonalds Corporation, E.Remy Martin & Co. S.A.; Pharmaceuticals – Eli Lily and Company, Pfizer Inc, Takeda Pharmaceutical. This is just a short summary of major global brands the firm represents.
Clients also benefit from the firm’s close relationships with respected law firms in: Brunei, China, Cambodia, EUTM, Hong Kong, India, Indonesia, Japan, Malaysia, Myanmar, the Philippines, Singapore, the UK, the United States and Vietnam. This list continues to grow.
In addition to regularly achieving top tier awards from well-known legal directories, other recent indications of DS&B’s global recognition for IP excellence include: Apiwatt Kongsoowan and Rutorn Nopakun in, A List – Top 100 Lawyers-Thailand, by Asia Business Law Journal; Best Patent Law Firm 2022, by Corp Today Magazine; Law Firm of the Year 2022, by The Global 100 – a list that ranks the world’s most sustainable organizations. This list is published by a Toronto-based media and research company, Corporate Knights, and awardees are announced each year during the World Economic Forum in Davos; Copyright Law Firm of the Year 2022 – Thailand, by The Lawyer Network. Clients benefit from the legal team’s active participation in IP-focused, international organizations: Rutorn Nopamon, Partner, was President of the Thailand group of APAA from 2015-18, and currently holds the same role. His is also an active contributor to INTA. Apiwatt Kongsoowan, Partner, is Vice President of the Intellectual Property Association of Thailand (IPAT), and also represents the Thailand Recognized Group on the Trademark Committee of APAA. Chakrapat Mongkolsit, Partner, is active in: IPAT, APAA, INTA, AIPPI, FICPI and in ASEAN IPA. Prabjote Busdee, Partner, represents the firm in: IPAT, APAA, INTA, AIPPI, FICPI and in ASEAN IPA. Nathapong Tongkaew, Partner, is a Council Member of the ASEAN IP Association, and is also active in PTMG and INTA. Regular participation in these respected global (and local) legal organizations enables DS&B lawyers to knowledge-share about evolving IP trends and legislation – and to lead in introducing new and innovative legislation to protect client’s IP rights locally and in other Asian countries. Maintaining high international standards for every client, on every case, is a top priority for the DS&B lawyers, as are the service qualities inherent in the firm’s motto: Trusted Partner – True Protection.
- Intellectual property