Thailand

The much-anticipated Trademark Amendment Act came into force in July 2016, ushering in a string of changes to the Thai trademark landscape. The act should reduce prosecution times and extend the scope of protection by facilitating wider identical and similar trademark searches, among other things. Perhaps the biggest development is that sound marks are now afforded protection in Thailand. These reforms were made in preparation for accession to the Madrid system in late 2016. While some fear that this may lead to a dip in filings, there is also considerable confidence in Thailand’s robust IP market and many commentators anticipate that trademark assignments will become increasingly lucrative and sophisticated. Although the market is still dominated by several mainstays, new WTR 1000 entrants Spruson & Ferguson and ZICO IP aim to shake up the status quo.

Firms

1
Baker McKenzie
Domnern Somgiat & Boonma Law Office Co Ltd
Tilleke & Gibbins
2
Dej-Udom & Associates
LawPlus Ltd
Rouse & Co International Thailand Ltd
Satyapon & Partners Ltd
Spruson & Ferguson
3
Ananda Intellectual Property
Chavalit & Associates Ltd
S&I International Bangkok Office
ZICO IP
Ananda Intellectual Property
Dynamic boutique Ananda Intellectual Property packs a punch in both prosecution and enforcement. An additional office in Hong Kong gives the compact outfit enhanced reach across Asia, while its adaptable practitioners can effortlessly handle all IP work going, from investigations to litigation. Former president of the Franco-Thai Chamber of Commerce Franck Fougere keeps a watchful eye over the team as managing partner. The versatile lawyer stays on the frontlines of contentious and anti-counterfeiting mandates; he is also a regular lecturer and author on various IP topics.
Baker McKenzie
Ascending to the gold tier in 2016, Baker McKenzie’s Bangkok contingent has cemented its status this year through another virtuoso display of branding nous. An unrivalled affinity for the interests of international concerns sees it juggle a sizeable volume of both inbound and outbound instructions, making it a preferred choice for global portfolio management. It has also enjoyed further success in its campaign against counterfeiters, thanks to close ties with the Royal Thai Police and Thai Customs Department. One foreign associate avers: “In Thailand, we specifically seek Baker McKenzie for the most challenging matters that require a truly global outlook and tough negotiation skills.” Regional chair of the firm’s IP group in Asia-Pacific is IP all-rounder Say Sujintaya. “One of the best lawyers in the country, she is client centric and highly organised.” “Her responses are fast and concise, and she understands her client’s business well, so her advice is always on point.” She runs the Bangkok group with Dhiraphol Suwanprateep, whose IP savvy and intimate understanding of regulatory issues have attracted a roster of all-star patrons to the firm. Nont Horayangura specialises in representing and protecting the brands of local businesses abroad; IP issues relating to the IT and communications field are a particular area of expertise. Completing the well-established team is Chansin Tangburanakij, a vigorous enforcer of IP rights and a first port of call for counterfeiting woes.
Chavalit & Associates Ltd
The IP division of SCL Law Group, Chavalit & Associates has earned a large and devoted following among the Thai business community. Its trademark expertise ranges from astute portfolio management across Southeast Asia to heavy-duty courtroom spats, in which it has an enviable track record of KO victories. Group founder Chavalit Uttasart is a statesman of the IP scene whose deep legal wisdom is always underpinned by a healthy measure of commercial practicality.
Dej-Udom & Associates
Domestic and foreign companies alike are unfailingly impressed by the trademark department of Dej-Udom & Associates. It has racked up a formidable multinational clientele and its brand management group continues to attract effusive praise: “It is the best of both worlds, as its team is well versed in complex topics, but is also nimble and efficient.” Poondej Krairit takes the lead as the head of the IP department; adept at protecting and developing portfolios, he is also a respected lecturer at a number of universities.
Domnern Somgiat & Boonma Law Office Co Ltd
One of the most distinguished names on the Thai IP scene, Domnern Somgiat & Boonma processes a considerable volume of the country’s trademark work, to superb effect. Packed full of talented practitioners, the firm runs a massive yet efficient filing operation. On the contentious front, the “incredibly determined” Rutorn Nopakun is a crack litigator whose courtroom performances win admiration from both patrons and peers. Fellow contentious ace Chalermphong Jitkuntivong has an instinctive grasp of the commercial issues at play in branding disputes.
LawPlus Ltd
From swift trademark registrations to assertive enforcement, corporate group and regional powerhouse LawPlus makes light work of all manner of instructions from businesses of all stripes. Its thoughtful, pragmatic approach has earned the enduring loyalty of myriad domestic clients from a diverse range of industries. A longstanding veteran on the trademark stage, Kowit Somwaiya is a jack – and master – of all trades. “He is a key player in any trademark association you can think of; and with the impressive international network he has built, it’s easy to see why people trust both him and his firm with a variety of matters.”
Rouse & Co International Thailand Ltd
Rouse’s Bangkok offices have enjoyed striking year-on-year growth – unsurprising, given its vast regional coverage and cutting-edge expertise. Many top household names flock to its doors for its refined prosecution and enforcement services. The team recently acted on behalf of the Massachusetts Institute of Technology and quashed an opponent’s application for a confusingly similar mark. Nuttachai Unaratana and Fabrice Mattei masterminded the win. Trademark head Unaratana drives both the contentious and non-contentious sides of the practice, displaying a deft touch on cross-border matters. Mattei is a safe pair of hands for any IP concern and has played an instrumental role in the firm’s continued development and success. He has also developed a nuanced understanding of the Myanmar market. Peeraya Thammasujarit makes her debut in the WTR 1000 this year; a dynamic practitioner in the dispute resolution team, she adroitly handles raid actions, litigation and commercial IP-related agreements for the group.
S&I International Bangkok Office
S&I is a premier destination for Japanese clients with interests in Thailand, having been founded to cater specifically to the needs of Japanese rights holders. As a result, the automotive and electronics sectors have become laser focal points for the specialised branding unit. Its roster of Thai and Japanese attorneys is complemented by a talented line-up of country coordinators and translators – a structure which ensures the smooth sailing of any and all cross-border transactions. Firm president Masafumi Iguchi is the go-to contact.
Satyapon & Partners Ltd
What Satyapon & Partners lacks in size, it more than makes up for in expertise. The razor-sharp boutique “trims all the fat and gets to the heart of commercial matters”, and is an invaluable ally for clients with regional ambitions. Backed by a team of over a dozen IP lawyers, the quarter-century old group has captured a tidy but significant share of the Thai prosecution market. Peers laud Satyapon Sachdecha as a strategist who can “clean up the mess and unlock previously hidden value”. Also a registered patent agent, Sachdecha serves in leadership roles in a multitude of international organisations and regularly lectures on trademark law at Thai universities.
Spruson & Ferguson
Australian-based Spruson & Ferguson has built on its Oceanic success and delved deep into the Southeast Asian market through further rapid expansion in recent years. In 2014 it opened a Shanghai office, followed shortly after in 2016 by the unveiling of its Jakarta and Bangkok outposts. The Thai office has hit the ground running, thanks to the acquisition of the entire IP practice of Siam Premier International Law Office. Former Coca-Cola and Sony in-house counsel Daniel Greif guides a number of blue-chips safely through branding minefields, engendering the utmost confidence in rights holders around the globe. Few can match his precision in navigating the Association of Southeast Asian Nations (ASEAN) landscape.
Tilleke & Gibbins
Boasting 21 qualified IP lawyers and a glowing national profile, Tilleke & Gibbins has long enjoyed a place among Thailand’s trademark elite. Working in tandem with the firm’s other Southeast Asia offices, the team provides exhaustive coverage across the whole Southeast Asia region. A prolific filer, it is a force to be reckoned with in contentious matters too. Chief IP litigator Srila Thongklang recently prevailed for DSquared2 in a case that went all the way to the Supreme Court. As a result of his agility in the courtroom, his client received a hefty damages award. A former judge of the Central Intellectual Property and International Trade Court, Nandana Indananda is another tenacious enforcer of IP rights who knows what it takes to secure the right results in tricky disputes. Darani Vachanavuttivong is one of the country’s finest IP strategists whose substantive knowledge is matched only by her dedication to clients. Deputy director Alan Adcock is another first-class tactician who oversees the group’s branding work throughout ASEAN. Clients appreciate his fluency in Mandarin and general affability. Sukontip Jitmongkolthong rounds off the set and is a first port of call for players in the fashion, automotive and electronics industries.
ZICO IP
Established in 2008, Malaysian-headquartered ZICO IP has quickly made a name for itself in the IP market. Ably serving both businesses in core domestic industries and multinational blue-chips, it can effortlessly manage portfolios of any size, although its main claim to fame is its devastatingly effective enforcement work, both in and out of the courtroom. Tilleke & Gibbins alumni Nuttaphol Arammuang and Titirat Wattanachewanopakorn take charge of the full-service firm’s IP division. Arammuang’s contentious prowess extends across the IP spectrum, while Wattanachewanopakorn brings the fight to the counterfeiters and wins.

Individuals: enforcement

Franck Fougere - Ananda Intellectual Property
Fabrice Mattei - Rouse & Co International Thailand Ltd
Satyapon Sachdecha - Satyapon & Partners Ltd
Say Sujintaya - Baker McKenzie
Srila Thongklang - Tilleke & Gibbins
Darani Vachanavuttivong - Tilleke & Gibbins
Alan Adcock - Tilleke & Gibbins
Nuttaphol Arammuang - ZICO IP
Nandana Indananda - Tilleke & Gibbins
Chalermphong Jitkuntivong - Domnern Somgiat & Boonma Law Office Co Ltd
Sukontip Jitmongkolthong - Tilleke & Gibbins
Rutorn Nopakun - Domnern Somgiat & Boonma Law Office Co Ltd
Kowit Somwaiya - LawPlus Ltd
Chansin Tangburanakij - Baker McKenzie
Peeraya Thammasujarit - Rouse & Co International Thailand Ltd
Titirat Wattanachewanopakorn - ZICO IP

Individuals: prosecution and strategy

Daniel Q Greif - Spruson & Ferguson
Dhiraphol Suwanprateep - Baker McKenzie
Darani Vachanavuttivong - Tilleke & Gibbins
Alan Adcock - Tilleke & Gibbins
Franck Fougere - Ananda Intellectual Property
Nont Horayangura - Baker McKenzie
Poondej Krairit - Dej-Udom & Associates
Kowit Somwaiya - LawPlus Ltd
Say Sujintaya - Baker McKenzie
Nuttachai Unaratana - Rouse & Co International Thailand Ltd
Chavalit Uttasart - Chavalit & Associates Ltd
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Issue 69