Thailand

A regional hub for managing trademarks, Thailand is an increasingly popular choice for multinationals seeking protection in Southeast Asia’s emerging markets – and it is easy to see why. The country was removed from the US Priority Watch List for IP protection in 2017 and is continuing efforts to develop and refine trademark-related legislation and processes. Among these, the Department of Intellectual Property (DIP) has established the Madrid Application Receiving Office to cope with the growing number of Madrid applications, which climbed to more than 9,000 within 18 months of enactment; it has also launched a new e-filing system to enhance its services. However, only high-value IP cases that exceed Tb10 million (around $325,000) will benefit from legal action at the Department of Special Investigation, meaning that counterfeiting cases of lower financial value may be overlooked. Nevertheless, increasing online enforcement activity is keeping rights holders and law firms busy.

Firms

  • Baker McKenzie 
  • Domnern Somgiat & Boonma Law Office Ltd
  • Satyapon & Partners Ltd
  • Tilleke & Gibbins
  • Dej-Udom & Associates
  • LawPlus Ltd
  • Rouse & Co International Thailand Ltd
  • ZICO IP
  • Ananda Intellectual Property
  • Chavalit & Associates Ltd
  • International Legal Counsellors Thailand Ltd
  • S&I International Bangkok Office
  • Spruson & Ferguson

Ananda Intellectual Property

Established by polyglot Franck Fougere in 2011, Ananda Intellectual Property advises multinationals from all over the world on trademark-related matters. Thanks to its vast expertise in Chinese, EU, Southeast Asian and US IP law, as well as its exclusive partnership with international business firm Orbis, the IP boutique has a broad IP practice supported by experts and partners in more than 160 countries. As a former president of the Franco-Thai Chamber of Commerce and current French foreign trade adviser, Fougere maintains a high profile in the domestic scene, with extensive experience in advising EU governments on IP issues.

Baker McKenzie 

“Top-ranked” Baker McKenzie has “a strong and dedicated local team that draws on global support to provide prompt and reasonable advice”. “The lawyers are reputable and we do not just trust their expertise, we are impressed by their service and results.” As one of the most expensive outfits in the market, clients appreciate that “you really get what you pay for – a commercial-minded, solutions-orientated and simplistic approach”. The IP team has four partners and 20 lawyers to thank for its gold-rated trademarks practice, which delivers first-rate multi-jurisdictional trademark registrations, oppositions at the Specialised Court of Appeals, anti-counterfeiting campaigns and international brand protection strategies for blue-chip corporations and large domestic businesses. Say Sujintaya is the regional chair of the Asia-Pacific IPtech steering committee. “After working with her for over a decade, what has always impressed me is that she is so commercially minded and solutions focused,” states one time-honoured contact. Praised for being an all-rounder, “she does not merely focus on her areas of expertise and markets, but ensures our ancillary issues are managed by her colleagues within and outside the firm where necessary. I dare say many things could not have been achieved without her leading the topics and being there to steer the different conversations we’ve had over the years”. Sujintaya heads the Thai IP practice alongside Dhiraphol Suwanprateep, who advises on e-commerce and telecoms law, as well as government initiatives. Tanakrit Tangburanakij and Nont Horayangura round off the side with broad experience in enforcement and prosecution, respectively. Tangburanakij works closely with the authorities to resolve infringement and anti-counterfeiting matters, while Horayangura assists companies in strategic IP commercialisation in Thailand and abroad.

Chavalit & Associates Ltd

Since 2005, Chavalit & Associates has covered the full spectrum of trademark services for a variety of big-name clients. As part of the SCL Law Group, the firm draws on a wealth of legal knowledge across multiple jurisdictions and fields to bolster its IP practice, while expertly managing regional trademark portfolios. Founder and managing partner Chavalit Uttasart is a reputable IP litigation lawyer with a close eye on the trademark practice – led by WTR 1000 debutant Pavinee Bunyamissara. After working in-house, Bunyamissara now advises on trademark and e-commerce issues, as well as overseas brand registration.

Dej-Udom & Associates

For more than three decades, Dej-Udom & Associates has served as a hub in Southeast Asia for domestic and international enterprises. Whether faced with a contentious or non-contentious issue, 20 trademark professionals collaborate seamlessly to provide “very responsive and satisfactory work” that successfully protects their clients’ IP rights. The full-service outfit works closely with the relevant authorities to seize large amounts of counterfeit goods for well-known global brands and manages the licence recordals of locally registered marks. Poondej Krairit heads the IP department, coming up with creative strategies to manage trademark portfolios.

Domnern Somgiat & Boonma Law Office Ltd

Gold-rated IP boutique Domnern Somgiat & Boonma Law Office Ltd has been a longstanding champion of IP rights in Thailand, handling 12% of all trademark applications filed locally through a team of 180 professionals. Not to be limited by border constraints, the firm handles trademark prosecution and enforcement matters across the region, including in Vietnam, Laos, Cambodia and Myanmar. A formidable foe in the courtroom, managing partner Rutorn Nopakun is a force to be reckoned with, rivalled only by his associate Chalermphong Jitkuntivong. Recognised by foreign contacts as “experienced, responsive and adept with various trademark issues”, Apiwatt Kongsoowan makes his debut in the WTR 1000 this year.

International Legal Counsellors Thailand Ltd

International Legal Counsellors Thailand has been serving various multinationals and domestic companies in an array of IP matters for more than half a century. The full-service law firm houses 12 trademark practitioners, some of whom are fluent in Chinese, specialising in trademark prosecution in Thailand and around the world. What is more, they come highly recommended: “The firm meets all of our criteria – level of service, expertise and fees. We have been working with the lawyers there for over a decade, during which they have had a big role in supporting us and solving our problems. They are professional and friendly, providing information about IP laws in other jurisdictions and flagging problems even when we have not instructed them yet. As such, our trademarks are fully protected and work perfectly.” The outfit is not the only one making its first appearance in the WTR 1000 this year; with more than two decades of trademark experience, Ratinuch Kawnachaimongkol premieres in the prosecution and strategy table.

LawPlus Ltd

Supported by four full-time trademark lawyers in Thailand, LawPlus is popular among foreign brand owners, especially Taiwanese and South Korean businesses, seeking local protection for their trademark rights. The full-service practice also handles large trademark portfolios for Thai corporations in more than 160 countries and represents local e-commerce companies in trademark and domain name disputes. It has been particularly busy in online anti-counterfeiting matters of late. A director at the INTA Board of Directors, managing partner Kowit Somwaiya is a renowned figure in the local IP industry. Wielding more than 30 years’ legal experience in local and foreign law firms, he straddles the contentious/non-contentious divide effortlessly.

Rouse & Co International Thailand Ltd

One of the few foreign law firms committed to the Association of Southeast Asian Nations (ASEAN) region, Rouse & Co International opened a Thai office in 2000 under the watchful eye of French-qualified lawyer Fabrice Mattei, who also took the lead on opening another office in Myanmar in 2013. Mattei assists the Burmese government in drafting IP laws, while his colleagues offer a comprehensive set of trademark services to global clients in the ASEAN markets. Whether prosecuting or defending trademarks in infringement cases before the Supreme Court, the IP boutique relies on its global network to deliver results. Thai practice manager Manoon Changchumni and deputy Peeraya Thammasujarit are well versed in contentious and litigious trademark matters, while Nuttachai Unaratana prosecutes trademarks overseas as head of the Thai trademarks group.

S&I International Bangkok Office

Established in 1996 to serve major Japanese corporations such as Toshiba and Toyota Motor Corporation, S&I International Bangkok Office is a compact IP boutique that specialises in trademark application filings. Presiding over nearly 30 employees in Thailand, founder Masafumi Iguchi is the key contact.

Satyapon & Partners Ltd

A newcomer to the gold tier of the WTR 1000, Satyapon & Partners Ltd has “unrivalled experience” in intellectual property – particularly trademark-related contentious matters. This is emphasised by its involvement in the highly publicised geographical indications dispute on behalf of the Chilean government, as well as its successful registration of the A380 for Airbus Operations GmbH. Multiple wins at the DIP and the Central Intellectual Property and International Trade Court (IP&IT Court) reflect this high rank. With accolades for being “committed, prompt, reliable, up-to-date, accountable, cost-effective and professional”, the practitioners “are incredibly responsive and always thoughtful about clients’ expectations”. As such, organisations of all sizes – from governments, global corporations and A-list celebrities to regional companies and small businesses – seek the IP boutique for its top-dollar advice. An active and reputable figure in the domestic IP faculty, founder Satyapon Sachdecha was recently re-elected to his fifth consecutive term as president of the Intellectual Property Association of Thailand, where he champions change and awareness of IP law. With over three decades of experience, he dispenses high-level strategic advice with ease. Head of the litigation team Sukhprem Sachdecha is a masterful sharpshooter, raking in landmark decisions before the IP&IT Court and the Supreme Court. When it comes to prosecution, Kritsana Mingtongkhum has a firm grasp on the ins and outs of registering and protecting marks.

Spruson & Ferguson

Celebrating its third year in the Thai market, Spruson & Ferguson continues to prove its prowess in the Asia-Pacific region by handling multiple IP matters across several Southeast Asian markets for a number of multinationals. Focusing on “seamless” prosecution activities, particularly filing trademark applications and overturning office actions, the local practice is equally competent in anti-counterfeiting and advising on potential infringement cases. Following the departure of principal Daniel Greif, the team is overseen by senior associate Saowaluck Lamlert. “By adopting an efficient, speedy and results-oriented approach, her team makes the effort to understand our business before rendering its advice, which has always been sound and accurate, with a focus on providing solutions that our business can work with.”

Tilleke & Gibbins

Sitting comfortably in the gold tier for the 10th year running, Tilleke & Gibbins boasts the highest number of ranked individuals in the WTR 1000. Widely recognised as a major player in Thailand, the regional law firm takes the lion’s share of the domestic market, handling the full spectrum of IP matters locally and in the ASEAN region. “Committed to clients’ long-term, successful relationships,” it employs cutting-edge in-house technology to ensure that internal processes are prompt and efficient. It is also a pioneer in the trademarks field; establishing its own investigation unit and the only IP firm in Thailand with a regulatory affairs practice, it also registered the first trademark under the Madrid Protocol and the first sound mark locally. As such, it is a one-stop shop, with cross-border teams offering global IP protection for an enviable set of clients, including AccorHotels, Topshop, Issey Miyake and Panasonic. A highly respected figure in the local trademark industry, gold-rated Darani Vachanavuttivong guides the IP group with a wise hand and was recently elected by peers as the country head for Thailand at the ASEAN IP Association. Suebsiri Taweepon and Alan Adcock lead the new technology industry and life sciences industry groups, respectively. Taweepon is an expert in anti-counterfeiting matters, while Mandarin-speaking Adcock presides over the Licensing Executives Society Thailand, dispensing sage advice on a variety of prosecution matters. Enforcement and anti-counterfeiting are clearly the side’s strong suit, with multiple individuals regularly involved in significant court cases and raids. Former IP&IT Court judge Nandana Indananda represented Panasonic in a landmark trademark infringement case before the Supreme Court, while colleague Sukontip Jitmongkolthong has been initiating large-scale anti-counterfeiting projects for large clients, including one that uncovered almost 200 infringing items. Somboon Earterasarun often works with Vachanavuttivong on massive global trademark portfolios and securing trademark rights for multinationals around the world. Joining the WTR 1000 this year, Wiramrudee Mokkhavesa handles numerous major luxury accounts, but is most comfortable enforcing marks and defending clients in court. Alongside Adcock, she successfully opposed a recalcitrant counterfeiter on behalf of Brioni.

ZICO IP

Ascending to the silver tier this year, ZICO IP receives a slew of fervent praise from satisfied clients and foreign associates. “Besides having excellent regional coverage and local expertise, the IP boutique is extremely responsive and thorough in its approach.” “It will explore new and alternative methods for IP infringement matters, which are also cost effective and offer trademark owners even better results.” With a strong presence and capabilities throughout the ASEAN, the firm renders direct IP advice, carrying out an A-Z of trademark work for an array of clients, including Alibaba, Wahl Clipper Corporation and Honda Motor Company Limited. Managing partner Nuttaphol Arammuang and anti-counterfeiting expert Titirat Wattanachewanopakorn are an unstoppable force. An IP litigator by training, Arammuang guides trademark disputes to a satisfying close, while Wattanachewanopakorn collaborates with law enforcement authorities to protect companies against infringement and counterfeits. “Titirat gives practical advice and is very intuitive about identifying potential issues. He is also approachable and communicates in good English, making it easy to work with him.” “By understanding our concerns and priorities for IP infringement matters, Titirat provides constructive suggestions on enforcement strategies.”

Other recommended experts

An invaluable ally for local companies looking to file trademark applications overseas, Apisith & Alliance Ltd’s Pattaravadee Kongcharoenniwat makes her sophomore appearance in the WTR 1000 this year.

Individuals: enforcement and litigation

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

Individuals: prosecution and strategy

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