Thailand

Overall, Thailand’s IP market is in great shape and trademark filing numbers are rocketing. Legislatively speaking these have proved to be interesting times: the Trademark Amendment Act was implemented in July 2016 and ushered in a range of new features – including the possibility of multi-class applications and the registration of sound marks. Thailand is also set to join the Madrid System in November 2017 – the seventh Association of Southeast Asian Nations country to do so. Also new is the Tobacco Products Control Act 2017 – although this stops short of imposing plain packaging, it does place stringent limits on brand owners’ ability to market new tobacco products.

Firms

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

Ananda Intellectual Property

In just six years, Ananda Intellectual Property has cemented its place among the leading firms in Thailand for intellectual property. The period 2016 to 2017 was a bumper one in terms of new client wins – word is clearly spreading about the fast, attentive, high-quality and comprehensive service on offer at the firm; also notable is the recent opening of a Hong Kong branch, which will focus on developing software tools to further refine the service. “An excellent managing partner with profound regional expertise”, Franck Fougere is the star attraction; managing large patent and trademark portfolios and resolving consequential disputes is all in a day’s work for him. He understands that litigation is not always the best solution and, with his practice of strong evidence collection and persistence, is often able to turn the tide of a conflict favourably.

Baker McKenzie

“Baker McKenzie flawlessly manages some of the world’s most influential brands on a global basis.” Its Bangkok contingent plays a key role in this regard, while also taking the lead in developing Thailand’s regulatory and legislative infrastructure. In the past year, the group has not only consolidated existing client relationships but has also forged a number of new ones and experienced rapid growth as a consequence; the team has also coordinated all the IP work being undertaken in the new Yangon office. Inspiring leadership is provided by Say Sujintaya and Dhiraphol Suwanprateep, two experienced pros who can overcome any prosecution hurdle. Sujintaya is lauded as “an outstanding IP lawyer” and “a role model for many in the profession”. She enforces rights as proficiently as she obtains them and also runs the country’s top media and entertainment practice. Her right hand in the fight against counterfeiters is Chansin Tangburanakij, one of the most tenacious enforcers around. In one recent case in which he represented Saban Brands, owner of the Paul Frank apparel label, Tangburanakij overcame corruption issues by coordinating with the US ambassador to Thailand and the director general of the Department of Intellectual Property – the cooperation ultimately led to the creation of a special police taskforce to assist with raids. Nont Horayanagura is an excellent all-rounder who makes valuable contributions in all areas of the practice, particularly within the context of cross-border litigation – “he thinks of creative and practical solutions and sees matters through to the end”. He also “anticipates questions before you have to ask, which cuts down on emailing back and forth, and speeds things up”.

Chavalit and Associates Limited

A Thai IP stalwart, Chavalit and Associates offers a comprehensive suite of trademark services. Its network extends from Thailand into Cambodia, Laos and Myanmar, making it a good option for regional protection; clients looking for consistency in this regard appreciate the cross-border coordination efforts of the Bangkok crew, which oversees work in these jurisdictions. Managing and founding partner Chavalit Uttasart is a worldly wise counsellor who draws on over three decades of experience in trademarks.

Dej-Udom & Associates Attorneys-at-Law

Independent full-service firm Dej-Udom & Associates maintains a robust IP practice which is valued for its ability to advise clients across a brand’s lifecycle. “Its work is consistently thorough and it looks to add value at all times, too. Client-focused and pragmatic, the team reacts immediately to instructions and is efficient. It also keeps strictly to budget.” Leader of the firm Poondej Krairit is “unassuming and softly spoken, but a highly qualified practitioner. He is very forward looking and adapts quickly when clients’ business and IP needs change”.

Domnern Somgiat & Boonma Law Office Ltd

Packed to the rafters with talented professionals, longstanding IP specialist Domnern lives up to its excellent reputation as a significant player which “consistently generates top-quality work”. Partner Rutorn Nopakun is a leading light and a “seasoned expert with experience in all areas of intellectual property in Thailand and across the region”. “When it comes to enforcement, he is the real deal; some individuals on the market have a big reputation on the contentious side, but now act more as figureheads of their firm; Rutorn is fighting in the trenches and very active in the practice.” He enjoys the support of a diligent and experienced pool of associates, which includes Chalermphong Jitkuntivong, who makes use of all available tools to deliver watertight IP protection.

LawPlus Ltd

LawPlus takes a rigorously commercial approach to the practice of law; this is clearly apparent in its IP advice, which is pragmatic and to the point – and offered at a reassuringly sensitive price point. The team acts for a diverse set of companies across many industry sectors, with major US technology and social media entities featuring prominently alongside big food and beverage names. Business-minded managing partner Kowit Somwaiya is there to make sure that everything runs smoothly on the trademark side. In 2016 and 2017 he served as chair of the Harmonisation of Trademark Law and Practice Committee of the International Trademark Association – an appointment which underlines his excellent international credentials.

Rouse & Co International Thailand Ltd

“Rouse is highly advanced in a technological sense and provides a comprehensive range of IP services throughout the ASEAN region with great efficiency.” Understanding the commercial objectives of clients is one trick that this international and Asian IP powerhouse has mastered – its professionals function as much as business consultants as legal experts. Setting the tone is this regard is Fabrice Mattei, an experienced patent and trademark litigator with 20 years of practice in Thailand under his belt. He serves as country manager for Thailand and Myanmar, a jurisdiction about which he knows a great deal having cut the ribbon on Rouse’s office there back in 2013. Captaining the trademark practice is Nuttachai Unaratana, an international thinker whose work has always had a strong multi-jurisdictional flavour. Peeraya Thammasujarit takes the dispute resolution reins locally, concentrating his focus on contentious matters including customs intercepts and litigation. She is also an abundant source of insight on IP commercialisation.

S&I International Bangkok Office

S&I has an ardent following of Japanese companies in the automotive and electronics sectors; the firm was built from the ground up with their needs in mind. Peers commend the team for its whetted drafting skills and ability to secure all-weather patent and trademark protection from the Ministry of Commerce’s Department of Intellectual Property. The firm was established 21 years ago by Masafumi Iguchi.

Satyapon & Partners Ltd

“A key actor on the Thai IP stage, Satyapon & Partners is one of just four firms which collectively control virtually 90% of the trademark work in the country.” Hugely experienced as a result, the eminent set is never caught off guard by a new client or new instruction and hits the ground running every time. Potent in the anti-counterfeiting arena – with its own in-house investigations unit – Satyapon & Partners is also a prolific filer and well able to provide everything that the discerning brand owner might need. Intellectual Property Association of Thailand president Satyapon Sachdecha manages the firm with aplomb. He does much to promote intellectual property in the country, to the benefit of all stakeholders in the market.

Spruson & Ferguson

A household name in intellectual property in Asia, Spruson & Ferguson has over 350 staff members working out of offices in Bangkok, Beijing, Hong Kong, Jakarta, Kuala Lumpur, Shanghai, Singapore and Sydney. The firm opened for business in Thailand in May 2016 and its local team of sophisticated legal professionals have been dominating the scene ever since. It certainly helps to have a figure of Daniel Greif’s stature in the driving seat. The former Sony and Coca-Cola Company trademark counsel “exemplifies the perfect combination of skill and sense”. “He has a rare grasp of the law of trademarks in many jurisdictions – and an even rarer commitment to helping clients achieve their goals in a timely and efficient manner. He gets things done that others cannot, because he goes above and beyond the call of duty; in so doing, he makes the people who entrust him look smart. He is extremely responsive and professional, and a warm individual, too.”

Tilleke & Gibbins

With its large staff of 46 lawyers, multiple patent agents, trademark executives, paralegals and in-house investigators, Tilleke & Gibbins is the very definition of a one-stop IP shop. Its trademark operation is one of, if not the biggest in the market, but the numbers are not the important thing – it is the unstinting dedication to quality that keeps marquee international and domestic brand owners coming back time and again. The set has recorded striking growth in its trademark litigation and licensing practices of late, impressing with its courtroom performances and negotiation skills respectively. Senior figures in this sterling group include Alan Adcock, a “responsive professional who gives clear commercial advice and helpful assistance all round” and Darani Vachanavuttivong, a distinguished practitioner who does not flinch when protecting IP rights in the most challenging places. Assiduous enforcer Sukontip Jitmongkolthong monitors the market with a hawkish eye and is quick to react whenever and wherever infringements occur. Able to quickly size up a case, she always gives accurate likelihood of success assessments; as a former IP court judge, Nandana Indananda is similarly gifted. Now serving as of counsel, Srila Thongklang brings sagacity to any patent or trademark litigation; the prized advocate is still an important strategic sounding board for clients and colleagues.

ZICO IP

“ZICO IP is a firm you can trust with international trademark prosecution matters; the firm has a network of offices throughout Southeast Asia, which is extremely helpful in terms of managing a portfolio efficiently and consistently. It is also an organisation you can turn to when you are facing complex legal issues in Thailand that require deep expertise to resolve. Both Nuttaphol Arammuang and Titirat Wattanachewanopakorn are very responsive and are easy to reach directly and in emergencies. Their advice is reliable, practical and accurate and their rates competitive as well.” Arammuang is an experienced litigator with a number of landmark wins on his résumé, although he also has a lock on the prosecution process too. Wattanachewanopakorn flexes broad IP commercialisation expertise and has an impressive track record of taking the fight to counterfeiters.

Individuals: enforcement and litigation

  • Fabrice Mattei - Rouse & Co International Thailand Ltd
  • Rutorn Nopakun - Domnern Somgiat & Boonma Law Office Ltd
  • Satyapon Sachdecha - Satyapon & Partners Ltd
  • Say Sujintaya - Baker McKenzie
  • Darani Vachanavuttivong - Tilleke & Gibbins
  • Alan Adcock - Tilleke & Gibbins
  • Nuttaphol Arammuang - Zico IP
  • Franck Fougere - Ananda Intellectual Property
  • Nandana Indananda - Tilleke & Gibbins
  • Chalermphong Jitkuntivong - Domnern Somgiat & Boonma Law Office Ltd
  • Sukontip Jitmongkolthong - Tilleke & Gibbins
  • Kowit Somwaiya - LawPlus Ltd
  • Chansin Tangburanakij - Baker McKenzie
  • Peeraya Thammasujarit - Rouse & Co International Thailand Ltd
  • Srila Thongklang - Tilleke & Gibbins
  • 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 Attorneys-at-Law
  • Kowit Somwaiya - LawPlus Ltd
  • Say Sujintaya - Baker McKenzie
  • Nuttachai Unaratana - Rouse & Co International Thailand Ltd
  • Chavalit Uttasart - Chavalit and Associates Limited