Thailand

Given Thailand’s position as a hot spot for businesses looking to expand into the wider Association of Southeast Asian Nations (ASEAN) region and the fact that local government departments have stayed open throughout the pandemic, IP practitioners have remained busy. The Thailand Department of Intellectual Property acted early on to relieve some of the pressure on businesses: anyone directly affected by covid-19 has been able to take advantage of a grace period applying to all IP prosecution process deadlines. With the situation driving firms to get creative, some have been exploring new options, with more and more now taking the leap and going digital – although an uptick in online enforcement matters is the unfortunate result of infringers doing the same. With regard to the Madrid Protocol, office actions are now rolling in while details are still being ironed out by the Trademark Office in an effort to further standardise examinations.

Firms

  • Baker McKenzie
  • Domnern Somgiat & Boonma Law Office Ltd
  • Satyapon & Partners Ltd
  • Tilleke & Gibbins
  • Ananda Intellectual Property
  • Dej-Udom & Associates
  • LawPlus Ltd
  • Rouse
  • ZICO Law
  • Apisith & Alliance Ltd
  • Chavalit Law Group
  • ILCT Ltd
  • S&I International Bangkok Office

Ananda Intellectual Property

Ananda Intellectual Property is the fastest growing IP firm in Thailand for the fourth year in a row, earning it a spot in the silver tier. The outfit takes a boutique approach to providing multinationals across the world with strategic, client-oriented trademark services. In 2019, it assisted L’Oréal during a highly publicised anti-counterfeiting raid, the largest of the year in Thailand, which resulted in the seizure of 700 000 counterfeit products. Its partnership with international business Orbis gives Ananda access to a global network of highly knowledgeable IP practitioners in over 160 countries. Staying ahead of many larger competitors in terms of technological development, it has recently gone digital with online filings. Franck Fougere is managing partner and director. Besides leading the team of 17 IP practitioners, he is also a trusted advisor to the European Union as well as the Swiss and French government. Although litigation is seen as a last resort, Fougere has a reputation as an “extremely skilful litigator and a brilliant IP strategist”. “The quality of Ananda’s service is impeccable and their lawyers are prompt with follow-ups, updates and general communication regarding trademark matters in Thailand.”

Apisith & Alliance Ltd

A local firm with an international outlook, Apisith & Alliance Ltd earns its spot in the rankings this year. Specialising in trademark prosecution, it offers advice on both contentious and non-contentious matters both locally and abroad. With plans to further build upon its IP practice, the Bangkok office has expanded to accommodate a growing team of IP professionals. Pattaravadee Kongcharoenniwat’s services win her plaudits from all sides. “She is extremely responsive and her advice is comprehensive, practical and to the point. Pattaravadee is competent as well as very enjoyable to work with. The team is organised and disciplined, they can always be trusted to get things done.”

Baker McKenzie

The gold tier is once more home to the internationally renowned Baker McKenzie, which boasts an exceptional team of practitioners stationed at its office in Bangkok. “Competent, responsive and practical,” the highly skilled group of over 20 dedicated IP lawyers not only manage the portfolios and protect the IP rights of numerous market leading multinationals, they are also heavily involved in Thailand’s regulatory and legislative process with regard to intellectual property. Say Sujintaya who co-heads the group is “very experienced and an expert in the field. Beyond that, she is responsive and her advice practical.” Dhiraphol Suwanprateep works alongside Sujintaya and has extensive experience in handling telecoms and data privacy issues. An expert on infringement and anti-counterfeiting matters, Nont Horayangura deals with cross-border litigation and coordinates litigation for IP infringement cases across Southeast Asia. Clients value his “incredible intelligence as well as his sound judgement when it comes to enforcement. He is strategic and practical and always provides thoughtful advice.” Tanakrit Tangburanakij works closely with local authorities and is the former legal advisor to the Committee on the Suppression of Copyright and IP Infringement of the Office of the Prime Minister of Thailand.

Chavalit Law Group

Since 2019 Chavalit & Associates Ltd has operated as the IP division of newly formed SCL Nishimura. The team consists of sector-specialised practitioners whose expertise is well recognised in their respective practice areas, earning them the trust of major national and international clients. Experienced litigator Chavalit Uttasart is the founder and managing partner and oversees the practice, while Pavinee Bunyamissara focuses on trademark and e-commerce issues, as well as overseas brand registration.

Dej-Udom & Associates

Since its foundation in 1986, Dej-Udom & Associates has been a valuable source of IP advice for domestic and global businesses with their eyes on the Thai market. Possessing an international outlook, the firm encourages its practitioners to take up cross-border roles to develop broad expertise beyond Thailand. It is a member of the International Lawyers Network, which links it with professionals in 66 countries and in 2018 set up a separate China desk to cater to the unique needs of its Chinese client base. IP expert Poondej Krairit heads the IP department and is praised by peers as being “outstanding in prosecution and strategy”.

Domnern Somgiat & Boonma Law Office Ltd

Well-established and specialised in intellectual property, Domnern Somgiat & Boonma Law Office Ltd sits comfortably at the top of the rankings. The firm has been honing its skills since 1947 and handles 12% of all trademark applications filed in Thailand. A team of 130 professionals work full time on IP matters for its distinguished clients not only locally, but also in Vietnam, Laos, Cambodia and Myanmar. Managing partner Rutorn Nopakun oversees the practice and is supported by the highly regarded Chalermphong Jitkuntivong and Apiwatt Kongsoowan.

ILCT Ltd

For over five decades, ILCT Ltd has been providing solid IP advice based on its extensive knowledge in the field. The IP practice group was established in 1966 and today its offers cover everything from trademark clearance searches to licensing. Among the 27 dedicated IP practitioners that call the firm home is a multilingual trademark team, which offers advice in English, Thai and Mandarin. With 20 years of experience behind her, Ratinuch Kawnachaimongkol is well known for her prosecution and strategy work.

LawPlus Ltd

Full-service firm LawPlus Ltd is the favoured choice for many multinational companies, in particular Taiwanese and South Korean enterprises looking for assistance with portfolio management. Services offered range from trademark searches to anti-counterfeiting and litigation. Thanks to LawPlus’s large global network, the outfit seamlessly handles IP matters for clients in over 160 countries, making it a one-stop shop for businesses seeking comprehensive IP advice. The team members hold leading roles in local and international trademark and patent organisations: managing partner Kowit Somwaiya is currently on the INTA board of directors and a member of the Asian Patent Attorneys Association (APAA) Anti-Counterfeiting Committee. He is singled out by peers as an “exceptionally good lawyer who produces very high-quality work”.

Rouse

With multiple offices across Southeast Asia, Rouse serves as a one-stop shop for companies in the ASEAN region striving to make the most out of their intellectual property and prides itself on being business-oriented and providing creative, yet practical, advice that contributes to its clients’ overall success. One of the first firms to merge the areas of climate change and intellectual property, Rouse recently added an attorney with knowledge in both fields to the team. Fabrice Mattei, known as an “outstanding lawyer”, opened the Thai office in 2000. Manoon Changchumni is a familiar face within IP circles in Thailand, having 28 years of experience managing trademark portfolios and advising on both contentious and litigious matters. Peeraya Thammasujarit heads the regional dispute resolution team, while Nuttachai Unaratana is in charge of the firm’s trademark group.

S&I International Bangkok Office

Specialist IP firm S&I International Bangkok Office opened its doors in 1996 to offer comprehensive IP services to Japanese giants such as Toshiba and Toyota Motor Corporation. In addition to handling trademark related matters for companies across Southeast Asia, S&I provides IP education and consultation for domestic and international companies alike. Masafumi Iguchi is the man in charge of the team of local and Japanese attorneys.

Satyapon & Partners Ltd

“One of the best in Thailand for IP work,” gold-ranked Satyapon & Partners not only numbers among the top filers in the country, it is also extremely strong when it comes to enforcement, conducting over 1,200 raids and custom seizures a year. The outfit offers “reliable, highly efficient, first-rate” full-spectrum IP services to businesses in sectors across the board and “seamlessly facilitates registrations of ownership of trademarks” for its clients throughout Southeast Asia. A “firm full of passion for protecting well-known marks”, Satyapon & Partners is responsible for protecting the trademarks of many high-profile clients, ranging from pop star Billie Eilish to the Chilean government, for which it is currently handling the highly publicised PISCO CHILE GI case. Founder Satyapon Sachdecha is described as “very impressive, clearly very experienced and extremely passionate about intellectual property”, while the team garners praise for being “highly diligent, ethical and professional. Their legal analysis is excellent and the advice effective.” Moreover, “all trademark attorneys at the firm are incredibly approachable and insightful when it comes to the specific needs of a business.” Kritsana Mingtongkhum, head of trademark and litigation, recently started his second term on the ASEAN IP Thailand Committee and is an elected member of the APAA Trademark Committee. Experienced Kriangsak Sukhitanont has been leading the side’s enforcement practice for the past 20 years. During this time, he has worked closely with local authorities and travelled all over the country to oversee many thousands of raids and seizures.

Tilleke & Gibbins

No stranger to the gold tier, heavyweight Tilleke & Gibbins handles the full gamut of IP matters in Thailand and the wider ASEAN region. Not only does the firm have the highest number of ranked individuals in the WTR 1000, this year it dominates the Thailand individuals table with three gold-ranked practitioners. The go-to for a slew of leading domestic and international businesses, the outfit boasts an impressive client list, which includes brands such as Tiffany & Co and Line Corporation, as well as two world-renowned manufacturers of automobiles and one of Europe’s most popular football clubs. The firm runs a dynamic IP practice, which draws upon the expertise of other specialised departments to provide nuanced legal advice across a range of sectors. Keeping up with technological advancement, the in-house team of IT specialists is always at work developing programmes to maximise efficiency and streamline processes. Tilleke & Gibbins is a leading figure in the areas of trademark prosecution and enforcement; it is the only firm in Thailand with a regulatory affairs practice, boasts its own investigation unit, was the first outfit in the country to register a sound trademark and also registered the very first trademark under the Madrid Protocol. IP group leader Darani Vachanavuttivong’s expertise is recognised worldwide and she currently co-chairs INTA’s Asia Pacific Global Advisory Council. Alan Adcock is deputy director of the firm’s IP and regulatory affairs group and co-heads the life sciences group – peers admire his “unique approach and skill in the commercialisation of trademarks”. With previous experience as a judge of the Central Intellectual Property and Trade Court, Nandana Indananda is a phenomenal litigator known for tackling the most complex of cases. This year, he rises to the top of the individual rankings along with Adcock. Sukontip Jitmongkolthong has successfully helped numerous blue-chip clients, including Tiffany & Co, to protect their intellectual property against infringers, while Suebsiri Taweepon co-heads the technology industry group and handles both contentious and non-contentious matters with ease. Somboon Earterasarun’s deep understanding of the IP climate in Southeast Asia makes him an excellent strategist, which greatly benefits the influential international corporations whose global portfolios he manages. Star enforcer Wiramrudee Mokkhavesa dazzles everyone she encounters; She is not only an excellent lawyer and very knowledgeable about IP enforcement, but speaks good English and is extremely efficient. She trains Thailand officials, liaises with investigators, assists with product verification for authorities and provides substitute power of attorney for investigators conducting enforcement actions.” “Wiramrudee provides extremely helpful enforcement and anti-counterfeiting advice. She is creative, responsive, flexible and diligent. I always knew that our matter was being handled promptly and efficiently as soon as I reached out to her.”

ZICO Law

A boutique firm with a tight-knit, high-calibre team, ZICO IP is known for its “quality services, responsiveness and quick turnaround”. The firm makes a point of going above and beyond to get to know each client’s business so as to be able to give nuanced and precise advice tailormade to their specific goals and needs. Not one to shy away from a challenge, “ZICO IP achieves excellent outcomes even under difficult circumstances” The firm is backed by an international network, enabling it to seamlessly service clients throughout Southeast Asia. “Its regional platform is very useful and impressive. It has experienced IP lawyers on the ground in all 10 ASEAN countries, so reaching out means gaining access to the entire region. All of the practitioners have in-depth knowledge and experience in their respective fields.” Experienced in cross-border anti-counterfeiting matters, Titirat Wattanachewanopakorn inspires clients’ praise: “Titirat is one of the best trademark attorneys in Southeast Asia. Not only are he and his colleagues immensely trustworthy, they are some of the nicest, friendliest people out there to work with. ZICO is our go-to firm and cannot be recommended highly enough.” Expert litigator Nuttaphol Arammuang is lauded for his “truly impressive analytical skills and his well-rounded knowledge of IP law. He is one of the best IP lawyers in Thailand; enthusiastic, trustworthy and flexible.” “Nuttaphol is personable, responsive and a pleasure to work with. He and his partner are both fantastic trademark practitioners – proactive and knowledgeable. The advice they come up with is always pragmatic and commercial.”

Other recommended experts

With 20 years of experience working in intellectual property, Saowaluck (Apple) Lamlert and her team recently started an exciting new chapter over at WE Intellectual Property, founded by Apple in December 2020.

Individuals: enforcement and litigation

  • Nandana Indananda - Tilleke & Gibbins
  • Rutorn Nopakun - Domnern Somgiat & Boonma Law Office Ltd
  • Satyapon Sachdecha - Satyapon & Partners Ltd
  • Say Sujintaya - Baker McKenzie
  • Darani Vachanavuttivong - Tilleke & Gibbins
  • Nuttaphol Arammuang - ZICO Law
  • Manoon Changchumni - Rouse
  • Franck Fougere - Ananda Intellectual Property
  • Chalermphong Jitkuntivong - Domnern Somgiat & Boonma Law Office Ltd
  • Sukontip Jitmongkolthong - Tilleke & Gibbins
  • Fabrice Mattei - Rouse
  • Wiramrudee Mokkhavesa - Tilleke & Gibbins
  • Kowit Somwaiya - LawPlus Ltd
  • Kriangsak Sukhitanont - Satyapon & Partners Ltd
  • Tanakrit Tangburanakij - Baker McKenzie
  • Suebsiri Taweepon - Tilleke & Gibbins
  • Peeraya Thammasujarit - Rouse
  • Titirat Wattanachewanopakorn - ZICO Law

Individuals: prosecution and strategy

  • Alan Adcock - Tilleke & Gibbins
  • Say Sujintaya - Baker McKenzie
  • Dhiraphol Suwanprateep - Baker McKenzie
  • Darani Vachanavuttivong - Tilleke & Gibbins
  • Somboon Earterasarun - Tilleke & Gibbins
  • Franck Fougere - Ananda Intellectual Property
  • Nont Horayangura - Baker McKenzie
  • Ratinuch Kawnachaimongkol - ILCT Ltd
  • Poondej Krairit - Dej-Udom & Associates
  • Kowit Somwaiya - LawPlus Ltd
  • Nuttachai Unaratana - Rouse
  • Chavalit Uttasart - Chavalit Law Group
  • Titirat Wattanachewanopakorn - ZICO Law
  • Pavinee Bunyamissara - Chavalit Law Group
  • Pattaravadee Kongcharoenniwat - Apisith & Alliance Ltd
  • Apiwatt Kongsoowan - Domnern Somgiat & Boonma Law Office Ltd
  • Saowaluck (Apple) Lamlert - WE Intellectual Property Co Ltd
  • Kritsana Mingtongkhum - Satyapon & Partners Ltd