What led you to found your own firm – and what advice do you have for anyone else considering the same step?
The decision to start my own firm in 1995 was driven by a strong desire to serve exclusively in the field of intellectual property and protect the IP rights of proprietors in Thailand. At the time I established Satyapon & Partners Ltd, IP law in Thailand was in a nascent stage; there were few specialist IP lawyers, and the common man was not really familiar with intellectual property and the issues related thereto. Unsurprisingly, Thailand used to have a poor record in IP protection. My keen interest in intellectual property and my unwavering commitment to ensure a safe haven for rights holders in Thailand made it only natural for me to take a step in this direction and establish Satyapon & Partners Ltd.
To anyone wishing to start their own law firm, I would only like to say – be prepared to work hard, stay committed and true to your clients, and do not be afraid to face challenges.
You served eight years as an IP expert on the Trademark Board of Thailand – what insights did this give you into government regulation of intellectual property?
During my tenure as an IP expert on the Trademark Board, I often found that the board members preferred a more conservative approach to the interpretation of the statutory provisions. This posed some unique challenges as a more liberal interpretation and development of the law was often left to the Central Intellectual Property and International Trade (CIPIT) Court, but also, Thailand being a civil law country, the court precedents were not deemed binding by the board members.
What does inspiring leadership mean to you – and has this changed since you founded your own firm?
To me, inspiring leadership means creating an environment where people strive for continuous improvement and get opportunities to grow, leading by example, building trust among their colleagues and appreciating people for their hard work and success.
These core values were in fact instrumental in my decision to establish my own firm and have not changed to date. Not only have these values helped the firm grow leaps and bounds in the last 27 years in terms of volume of work, I believe they have also helped me grow as an individual and as a leader.
NFTs are currently one of the most talked about - but least understood - assets. Which novel legal issues does the rise of NFTs create, and how can brand owners tackle them?
One of the first legal issues the rise of NFTs has created is their ownership and the rights that are transferred together with their sale. As an NFT is basically metadata about an asset added to a blockchain, the NFT usually is not the asset itself. Therefore, buying the NFT may not necessarily give the buyer ownership of the underlying asset. People buying them must definitely pay attention to what rights are granted to the buyer, including IP rights. Any transfer or assignment of the IP rights in the NFT must be in writing, either in the smart contract or elsewhere.
In terms of intellectual property specifically, some of the legal issues that I believe are likely to occur frequently are trademark and copyright infringement, including unauthorised reproduction of an underlying asset, or possibly a third party minting and selling NFTs using another asset owner’s registered trademarks, as is happening currently in the famous Hermes MetaBirkins lawsuit in the United States filed by Hermes International.
In early 2022, Thailand’s Department of Intellectual Property issued the final version of its new Trademark Examination Manual. Is it an improvement over the previous version, and have you seen any changes in practice yet?
I have seen tremendous positive changes in the examination practice since the new Examination Manual became effective from 17 January 2022. The most important one has been the Trademark Office’s acceptance of inherent distinctiveness of a random series of numerals and / or letters in a non-stylised manner as trademarks. Under the old practice, applicants had to fight all the way to the CIPIT Court to obtain a favourable decision, which was expensive and time consuming, and left many rightly frustrated, as the same marks were granted registration in other jurisdictions. Many applicants who had abandoned their trademarks due to refusals at the administrative level have now refiled their trademarks, so that they can mature to registration without issue.
Dr Satyapon Sachdecha is the managing partner at Satyapon & Partners Ltd, having established the firm in 1995. He completed his LLM from the University of Miami School of Law, and MCL from the George Washington Law School. Dr Satyapon has been practising exclusively in the field of intellectual property for over 30 years with a special focus on trademarks, copyright and patents, and is a pioneer in anti-counterfeiting and brand enforcement in Thailand.