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DEPARTMENT PROFILES
& REPRESENTATIVE LIST
OF CASES
Corporate/Commercial:
Head of Department: Ms. Piyanuj Ratprasatporn
Number of Partners in Department: 5
- Ms. Piyanuj Ratprasatporn (Corporate, M&A, Immigration)
- Ms. Cynthia Pornavalai (Banking & Finance, Japanese Unit)
- Mr. Santhapat Periera (International Trade)
- Ms. Pimvimol Vipamaneerut (Labor, Transportation)
- Ms. Sriwan Puapondh (Taxation & Customs)
Number of fee earners: 22
Best-known personalities:
Ms. Piyanuj Ratprasatporn: Nominated as one of the leading lawyers
in the Corporate Immigration area in the International Who's Who
Legal Series 2001, 2002, 2003. Listed in The Asia Pacific Legal
500 as a leading individual in the area of Corporate/M&A in
Thailand, 2002/2003-2007/2008.
Mrs. Cynthia Pornavalai: Founding Member, International Insolvency
Institute, 2003.
Ms. Sriwan Puapondh: Listed in The Asia Pacific Legal 500 as
a leading individual in the area of Taxation in Thailand, 2003/2004-2007/2008.
Ranked as a "Recommended individual" in the Tax area
by Which Lawyer Yearbook, 2006 and 2007. Member of the Working
Group for Studying and Advising on the Amendment of the Revenue
Code of the Federation of Accounting Professions under the Royal
Patronage of H.M. the King.
Mr. Santhapat Periera: Included in the special First Edition
of Marquis Who's Who in Asia, 2006. Honorary Fellow of the Association
of Fellows and Legal Scholars of the Center for International
Legal Studies. Advisor to two Thai Parliament Sub-Committees,
2005.
BANKING AND FINANCE
Practice group head: Cynthia M. Pornavalai, Partner &
Head of Banking & Finance Group
Phone: +66 2263 7730
Fax: +66 2263 7710
Email: cynthia.p@tillekeandgibbins.com
Number of partners: 2
Names of key partners: Cynthia Pornavalai, Santhapat Periera
Number of fee-earners: 8
Significant moves over the last 12 months: None
Practice group summary:
The group deals with various banking and finance issues from regulatory
reviews to advice on and drafting of loan and securities transactions.
Activity report
Top deals/transactions/matters:
- Advised RNK Capital with respect to its financing of a landfill
gas project in Thailand. (Cynthia Pornavalai)
- Advised Skystar Airways with respect to financing transactions
with Daewoo Securities. (Cynthia Pornavalai)
- Advised Ayala Group with regard to loan transactions with
Thai joint venture companies. (Cynthia Pornavalai)
- Advised Destination Properties Group with respect to financing
agreements with Lehman. (Cynthia Pornavalai)
- Advised HSH Nordbank with respect to structured financing
transactions with various Thai companies. (Cynthia Pornavalai)
- Advised KBC with respect to loan financing transactions in
Thailand. (Cynthia Pornavalai)
- Advised Societe De Promotion Et De Participation Pour La Cooperation
Economique S.A. (Proparco) with respect to financing of a biogas
project in Thailand. (Cynthia Pornavalai)
- Advised Mizuho Corporate Bank, Ltd. with regard to loan facilities
and Thai security for Fitness First group. (Santhapat Periera)
- Advising Lloyds TSB Bank Plc, Lloyds TSB Development Capital
Limited, and RZB - Austria, Singapore Branch with regard to
loan/credit facilities and Thai security therefor. (Santhapat
Periera)
CORPORATE AND M&A
Background information
Practice group head: Piyanuj (Lui) Ratprasatporn, Partner
and Director of the Commercial Department
Phone: +66 2263 7700 Ext. 505 or direct line +66 2263 7732
Fax: +66 2263 7710
Email: lui.r@tillekeandgibbins.com
Number of partners: 3
Names of key partners: Piyanuj (Lui) Ratprasatporn; Cynthia
Pornavalai; Santhapat Periera
Number of fee-earners: 22
Significant moves over the last 12 months: None
Practice group summary:
Regularly assists clients in (1) conducting due diligence work
for acquisition of businesses in Thailand, (2) applying for investment
promotions, alien business licenses, and other necessary licenses
or permits to operate business in Thailand, (3) negotiating and
drafting, among other things, Sales and Purchase Agreements, Joint
Venture/Shareholders Agreements; Distribution Agreements, Logistics
Agreements, Licensing Agreements, Employment Agreements, Leasing
Agreements, Assignments of Rights and Obligations, (4) establishing
non-profit organizations, foundations, trade associations, churches,
and educational institutions in Thailand, (5) corporate restructuring
to prepare for listing on the Stock Exchange of Thailand and/or
transforming status of private limited companies to public limited
companies.
Activity report
Top deals/transactions/matters
- Assisted an Austrian company in acquiring business of another
Austrian company who has a subsidiary in Thailand. Conducted
due diligence on the Thai subsidiary including providing reports
on factory license requirements and regulations involving asbestos
and assisted client in completing the acquisition within 2 months.
(Piyanuj Ratprasatporn)
- Assisted an Australian pharmaceutical company in establishing
an entity to acquire a pharmaceutical department of a major
pharmaceutical company in Thailand. Also advised on the regulations
on importation and distribution of pharmaceutical products in
Thailand including approval from the Food and Drug Administration.
(Piyanuj Ratprasatporn)
- Assisted a group of overseas investors in jointly establishing
a company to run a restaurant and entertainment business in
Bangkok. Assisted in the preparation of a joint venture agreement
and applications for necessary licenses to run the business.
(Piyanuj Ratprasatporn)
- Assisted an American corporation in establishing a factory
to manufacture computer circuits and parts. Also assisted the
client in obtaining promotional approval from the Board of Investment.
(Piyanuj Ratprasatporn)
- Assisted a Dutch client engaged in glass fiber-reinforced-plastic
industry in establishing a joint venture company with a Thai
counterpart to set up a facility in Thailand to manufacture,
among other things, pipes, tanks and other related products.
(Piyanuj Ratprasatporn)
- Assisted a Malaysian client in establishing a joint venture
company with a Thai counterpart to manufacture industrial coating
for consumer products and parts and components for industrial
goods. (Piyanuj Ratprasatporn)
- Assisted a Norwegian client in setting up a factory in Thailand
to produce plastic labels for consumer goods. (Piyanuj Ratprasatporn)
- Assisted a Thai airline company in acquiring 3 aircrafts from
the USA. Assisted in drafting aircraft purchase agreements and
other ancillary agreements including loan agreements, debenture
agreements and escrow agreements. (Piyanuj Ratprasatporn)
- Advised Destination Properties Group in its acquisition of
several hotels and hotel operating companies in Thailand (i.e.,
Kamala Bay Terrace Resort, Felix Hotel, Tropicana Hotel, etc.).
(Cynthia Pornavalai)
- Advised Carrier in its acquisition of Thai refrigeration companies.
(Cynthia Pornavalai)
- Advised Star Trans in the sale of its business and assets.
(Cynthia Pornavalai, lead partner)
- Advised Thai Frozen Plc in its acquisition of Vietnamese and
Thai companies. (Cynthia Pornavalai)
- Advised Illinois Tool Works in its acquisition of the assets
and businesses of Dae Hyun and Ziplas International Company
Ltd. (Cynthia Pornavalai)
- Advised Asahi Breweries Japan in its joint venture transactions
with Boonrawd Breweries. (Cynthia Pornavalai)
- Advised Hexion with respect to its acquisition of a Thai chemicals
company as part of a global acquisition of the parent company.
(Cynthia Pornavalai)
- Advised a group of Singapore investors with respect to a joint
venture with local investors in relation to the Phuket Sea World
& Science Centre project. (Cynthia Pornavalai)
- Advised Petronas with respect to various franchise agreements.
(Cynthia Pornavalai)
- Advised Staff Service, Japan, in its acquisition of a recruitment
company in Thailand. (Cynthia Pornavalai)
- Advised an investment arm of the Singaporean government in
the acquisition of certain assets in Thailand. (Santhapat Periera)
- Sale of shares and MPA Securitas Limited and Camerson Enterprise
Co., Ltd. to ISS Facility. (Santhapat Periera)
- Temasek purchase/acquisition of 5% shares in BHPCL and investment
in BIL. (Santhapat Periera)
- Temasek purchase/acquisition of 19.5% shares in BIL. (Santhapat
Periera)
- Sale of shares in New System Holding Co., Ltd. by its major
shareholder to ARRK Corporation. (Santhapat Periera)
- Purchase/acquisition of MV "Andaman Princess" by
Argentum Co., Ltd. (Santhapat Periera)
- Advised and acted as Thai legal counsel to United Parcel Service
Co. in connection with the purchase/acquisition of 4 used MD
11 Aircraft from Thai International Public Company Limited by
United Parcel Service Co. (through ALG Transportation, Inc.).
(Santhapat Periera)
- Advised foreign individuals and corporate clients in various
property development and acquisitions and joint venture transactions.
(Santhapat Periera)
- Advised and acted as legal counsel to Asian Insulators Public
Company Limited in connection with the purchase/acquisition
of assets of a limited company (under business reorganization).
(Santhapat Periera)
- Advised and acted as legal counsel to Prantalay Marketing
Co., Ltd. in connection with the contemplated investment in
and purchase/acquisition of shares of a listed public company
(under business reorganization). (Santhapat Periera)
- Advised and acted as legal counsel to Thai NDT Co., Ltd. in
connection with the Joint Venture and Shares Subscription Agreement
between Thai NDT Co., Ltd. and One Asset Management Co., Ltd.
(Santhapat Periera)
- Established Scandinavian Thai Homes Co., Ltd., from Kudu Group
- a Scandinavian real estate developer, to launch housing project
in Hua Hin Thailand. (Kobkit Thienpreecha)
- Assisted and provided corporate consultation to Oce' (Thailand)
Ltd., a distributor of professional printing machines under
the brand "Oce". (Kobkit Thienpreecha)
- Assisted and provided general consultation to TIC Energy (Thailand)
Corporation Co., Ltd., a petroleum exploration concessionaire
in Thailand. (Kobkit Thienpreecha)
- Established a jointly-owned subsidiary company for Tan Aik
Koon Pte. Ltd., a producer of high-pressure laminates, for distributing
products in Thai market. (Kobkit Thienpreecha)
- Established a wholly-owned subsidiary company for R. L. Polk
& Co, a specialized vehicle and transportation data analysis
company from the U.S. (Kobkit Thienpreecha)
- Established a wholly-owned subsidiary company for Construction
Management & Development, Inc., a specialized construction
management company from the U.S. (Kobkit Thienpreecha)
- Established a branch office for The Goodyear Tire & Rubber
Company Limited. (Kobkit Thienpreecha)
- Assisted and provided corporate consultation to MTV Asia LDC
in connection with its subsidiary company in Thailand. (Kobkit
Thienpreecha)
- Provided corporate services to Destination Properties Group,
a Thailand leading resort and hotel developer. (Kobkit Thienpreecha)
- Established a jointly-owned subsidiary company for 3B Scientific
GmbH, a producer of medical training equipment and materials,
for distributing the products in the Thai market. (Kobkit Thienpreecha
- Assisted and provided corporate consultation to Nissin Kogyo
Co., Ltd., a Japanese brake maker, with respect to its joint
venture with Thai partner. (Kobkit Thienpreecha)
- Established a representative office of Tsujino & Co.,
Ltd., a Japanese seafood trading company, for supervising import
and export transactions with Thai customers. (Kobkit Thienpreecha)
- Converted Grand Siam Footwear Co., Ltd., a Thai manufacturer
of shoes under the brand "ADDA", into Adda Public
Co., Ltd. and assisted in corporate restructuring and preparation
for initial public offering (IPO). (Kobkit Thienpreecha)
- Established a representative office of Rohde & Schwarz
International GmbH, a German producer of electronic measurement
equipment, for providing technical services regarding products
sold to Thai customers. (Kobkit Thienpreecha)
- Established branch offices for Gagan (Thailand) Co., Ltd.
and Aryan (Thailand) Co., Ltd. for retail outlets at several
locations of garment brand names "ZARA" and "Massimo
Dutti". (Kobkit Thienpreecha)
- Established a research and development company in Thailand
for Shriram Bioseed Genetics India Limited, one of the largest
seeding companies in India. (Kobkit Thienpreecha)
- Provided corporate assistance to various investors in Smith
Naturals Co., Ltd., a heath care and cosmetics developer and
producer in Thailand. (Kobkit Thienpreecha)
- Assisted and provided corporate consultation to Charoong Thai
Wire & Cable Public Company Limited, a listed company in
the Thailand Stock Exchange. (Kobkit Thienpreecha)
- Assisted WAM S.p.A., an industrial machinery producer from
Italy, in the acquisition of 100% ownership in a distributor
in Thailand. (Kobkit Thienpreecha)
- Assisted Esthetics International Group Berhad, a listed company
in Malaysia, in restructuring shareholding in subsidiaries in
Thailand. (Kobkit Thienpreecha)
- Assisted Stone Truepenny International from the U.S. in establishing
a joint venture company in Thailand with a Malaysian partner.
(Kobkit Thienpreecha)
- Provided corporate assistance to California Roofing Components
(Thailand) Ltd., a research and patent holder of proprietary
roofing products. (Kobkit Thienpreecha)
- Advised Microsoft, Starbucks Thailand re anti-corruption laws
of Thailand. (John Fotiadis)
- Advised Gucci, Elizabeth Arden re countrywide distribution
agreements. (John Fotiadis)
- Advised G-Star Jeans, IKEA re franchise agreements in Thailand.
(John Fotiadis)
PROPERTY
Background information
Practice group head: Cynthia M. Pornavalai, Partner, Head
of Banking & Finance Group
Phone: +66 2263 7730
Fax: +66 2263 7710
Email: cynthia.p@tillekeandgibbins.com
Number of partners: 1
Names of key partners: Cynthia Pornavalai
Number of fee-earners: 8
Significant moves over the last 12 months: None
Activity report
Top deals/transactions/matters:
- Advised DST International with respect to the lease of its
new Bangkok HQ. (Cynthia Pornavalai)
- Advised MSD Thailand with respect to the lease of its new
Bangkok HQ. (Cynthia Pornavalai)
- Advised high net worth foreign individuals and foreign property
investors in their property purchases in Thailand. (Cynthia
Pornavalai)
- Advised Destination Properties Group with respect to land
due diligence and to the closing of various property acquisitions.
(Cynthia Pornavalai)
- Advised hotel owners with respect to hotel management contracts
with major hotel management groups. (Cynthia Pornavalai)
- Advised foreign investors with respect to condominium projects
in Bangkok and Pattaya. (Cynthia Pornavalai)
- Advised Lehman with respect to a condominium project in Bangkok.
(Cynthia Pornavalai)
- Advised property developers in structuring property projects
in Hua Hin, Pattaya, Phuket and Samui. (Cynthia Pornavalai)
TRADE AND ANTI-DUMPING
Background information
Practice group head: John Fotiadis, Consultant
Phone: +66 2263 7783
Fax: +66 2263 7710
Email: john.f@tillekeandgibbins.com
Number of fee-earners: 5
Significant moves over the last 12 months: None
Activity report
Top deals/transactions/matters:
- Steel Wire Rod Anti-Dumping investigation by Thailand against
China PRC. Representing China's two biggest steel wire rod companies.
- Annual Review of US frozen shrimp anti-dumping determination
as against Thailand, defending Thai I-Mei, one of the biggest
Thai exporters to US.
- Advised largest Japanese food flavoring manufacturer/expoter
regarding anti-dumping investigation threatened by China PRC
for I+G from Thailand.
- Advised largest coated steel manufacturer in Thailand, Bluescope
Steel, regarding trade investigation against several foreign
exporter countries.
GOVERNMENT PROCUREMENT PROJECTS, E-COMMERCE
AND ENERGY
Background information
Practice group head: John Fotiadis, Consultant
Phone: +66 2263 7783
Fax: +66 2263 7710
Email: john.f@tillekeandgibbins.com
Number of fee-earners: 4
Significant moves over the last 12 months: None
Activity report
Top deals/transactions/matters:
- Negotiated terms and drafted new model EPSA for offshore petroleum
exploration in Bahrain Blocks 1 and 2 on behalf of national
Bahrain Petroleum Company (BAPCO).
- Advised publicly traded Norwegian tolling company (Q-Free
ASA) regarding government procurement for construction of large
Southern Ring Road project in Bangkok.
- Advised Hitachi regarding government procurement for construction
agreement with EGAT.
- Legal research relative to Sony Computer Entertainment's launch
of network game platform in Thailand.
- Advised Yahoo, Electronic Arts regarding website development
and legal implications in Thailand.
EMPLOYMENT
Background information
Practice group head: Pimvimol (June) Vipamaneerut, Partner
and Head of Labor Group
Phone: +66 2263 7700 Ext. 643 or direct line +66 2263 7731
Fax: +66 2263 7710
Email: june.v@tillekeandgibbins.com
Number of partners: 1
Names of key partners: Pimvimol (June) Vipamaneerut
Number of fee-earners: 5
Practice group summary:
The labor group provides advice and assists clients on various
aspects of labor law and employment matters, e.g., labor protection,
workmen's compensation, social security, labor union, termination
of employment including labor litigation. Services provided include
reviewing and preparing employment agreements, independent contractor
agreements, consultant agreements and company's work rules and
regulations.
Activity report
Top deals/transactions/matters:
- Advised Avon Cosmetic (Thailand) Limited on transfer of employment
and various labor and employment matters.
- Advised Jet Airways (India) Limited on various labor and employment
matters.
- Advised APL Agencies (Thailand) Ltd. on transfer of employment
and various labor and employment matters.
- Advised and assisted Bechtel International Inc. (Bangkok)
in preparing Employment Agreement and Employee Policy.
- Advised and assisted Hyundai Heavy Industries in preparing
Work Rules and Regulations, and advised on termination of employment.
- Advised and assisted Hoya Glass Disk (Thailand) Ltd. in preparing
Work Rules and Regulations, Employment Agreement and advised
on various labor and employment matters.
- Advised Goodyear (Thailand) Public Company Limited on various
labor and employment matters.
- Advised Kulicke & Soffa (SEA) Pte. Ltd. on various labor
and employment matters.
- Advised and assisted Myanmar Airways International. Co., Ltd.
in applying for work permits for its foreign employees and preparing
Work Rules and Regulations.
- Advised Microsoft Global Resources GMBH on various labor and
employment matters.
- Advised Reader's Digest Asia Limited (Singapore) on Thai labor
law.
- Advised Triumph International (Thailand) Ltd. on change of
terms and conditions of employment and various labor and employment
matters.
- Advised Tetra Pak Global on change of global project package.
- Advised Travelex UK Limited on transfer of employment on various
labor and employment matters.
- Advised Visa International Service Association on transfer
of employment on various labor and employment matters.
- Advised on termination of employment for various major Thai
companies and multinational companies.
TAXATION
Background information
Practice group head: Sriwan Puapondh, Partner and Head
of Taxation Group
Phone: +66 2263 7700 Ext. 641 or direct line +66 2263 7733
Fax: +66 2263 7710
Email: sriwan.p@tillekeandgibbins.com
Number of partners: 1
Names of key partners: Sriwan Puapondh
Number of fee-earners: 5
Practice group summary:
The taxation group is headed by Sriwan Puapondh, who has more
than 20 years of experience as a tax specialist. The group provides
consultation on various matters related to taxation, including
tax planning for individuals and juristic persons, drafting appeals
and representing clients in tax settlements/appeals with the Thai
tax authority.
Activity report
Top deals/transactions/matters:
- Advised Barclays Bank PLC with respect to legal and tax implications
of Executive Share Award Scheme for executives of the Barclays
Group who are resident in Thailand.
- Advised Yahoo Pte Ltd. on tax planning and structuring of
its various business projects in Thailand.
- Advised Honma Golf (Thailand) with regard to various value
added tax and income tax matters.
- Advised Maybank International Ltd. with respect to tax issues
of the agency agreement.
- Advised Hutchinson Technology Inc. on various tax matters
related to its business in Thailand.
- Advised Asahi Breweries, Ltd. on excise tax of beer and income
tax matters of its employees.
- Advised Shiseido Company Limited on regulations and practices
in respect of transfer pricing in Thailand.
- Advised Columbia Pictures with regard to Thai income tax matters
of payments to a Thai company.
- Advised Skystar Airways with respect to tax implications of
financing transactions with Daewoo Securities.
- Assisted major foreign and Thai investors (e.g., The Ascott
Group Limited, Illinois Tool Works, Destination Properties Group)
in tax planning for the acquisition of Thai and foreign companies.
- Assisted a major company in the Stock Exchange of Thailand
in a tax appeal with the Revenue Department.
- Provided consultations and tax planning on various tax matters
to local entities of well-known multinationals such as APL Logistics
Svcs (Thailand) Ltd., Asahi Breweries, General Motors, Goodyear,
Hard Rock Hotel, Hino Motors Manufacturing, Hutchinson Technology
Asia Inc., Maersk Sealand Group, Neptune Orient Lines Ltd.,
Petronas Group, Toray Group, and Triumph International.
- Represented many major companies in tax refund and tax settlement
cases with the Thai Revenue Department, including a company
listed in the Stock Exchange of Thailand, a petroleum company,
and various manufacturing and services companies.

Dispute
Resolution:
Head of Department: Ms. Tiziana Sucharitkul
Number of Partners in Department: 2
Mr. Thawat Damsa-ard, Partner and Chief Litigator
Phone: +66 2263 7779
Fax: +66 2263 7710
E-mail: thawat.d@tillekeandgibbins.com
Ms. Tiziana Sucharitkul, Co-Managing Partner and Director
Phone: +66 2263 7790
Fax: +66 2263 7710
E-mail: tiziana.s@tillekeandgibbins.com
Number of fee-earners: 12
Significant moves over the past 12 months:
Hired: Mr. James Norton, Of Counsel, a Chartered Arbitrator (Institute
of Chartered Arbitrators, London), formerly with Fernandes Hearn
LL.P.
Hired: Ms. Sally Wrapson, associate, formerly with Gaby Hardwicke
Solicitors, Eastbourne.
Hired: Ittirote Klinboon, associate, formerly with PricewaterhouseCoopers
Legal & Tax Consultants Co., Ltd.
Department's best known personalities and nomination for "Leading
Individuals":
Ms. Tiziana Sucharitkul: Ms. Sucharitkul became the Director
of the Dispute Resolution Department in 2005. She is a US licensed
attorney. Before joining Tilleke & Gibbins, Ms. Sucharitkul
practiced with the New York firm of Milbank, Tweed, Hadley &
McCloy. Ms. Sucharitkul received her bachelor's degree (cum laude)
from Mount Holyoke College, her master's degree from the University
of Virginia, and a JD degree from the University of California,
Hastings College of the Law. Some of Ms. Sucharitkul's most notable
clients include Microsoft, Maybank International (L). Ltd., Philip
Morris Products S.A., Neptune Orient Lines, and Nippon Comsys
Corporation. Ms. Sucharitkul was named as one of Thailand's leading
dispute resolution lawyers in the 2005/2006-2007/2008 editions
of Asia Pacific Legal 500. She was also selected for inclusion
in the 2006-2007 edition of International Who's Who of Professionals.
Mr. Thawat Damsa-ard: Mr. Damsa-ard was named a Leading Individual
in dispute resolution in the 2003/2004-2007/2008 editions of Asia
Pacific Legal 500 and remains among the top litigation attorneys
in Thailand. Mr. Damsa-ard was also nominated as a candidate for
inclusion in the 2006-2007 edition of International Who's Who
of Professionals. Mr. Damsa-ard has six years of experience as
a finance/accounting manager at CP Group and over ten years of
experience as a highly successful trial and arbitration attorney
in commercial, trade, banking, construction, taxation, and white-collar
criminal cases. Some of Mr. Damsa-ard's most notable clients include
United Parcel Service, General Electric, Hyundai Corporation,
Jotun Thailand Limited, Nawarat Patanakarn Public Co. Ltd, Symrise
Pte. Ltd. (formerly Dragoco Asia Pacific), Lear Seating (Thailand),
and Mantrose-Hauser Co., Inc.
Practice Group Summary/Activity Report:
Headed up by Thawat Damsa-ard and Tiziana Sucharitkul, Tilleke
& Gibbins' Dispute Resolution Department handles a full range
of disputes, including international contract and trade disputes,
construction disputes (arbitration and litigation), banking, finance
and bankruptcy matters, and white-collar crime. The department
has a burgeoning labor practice and a strong tax and maritime
practice. Some recent matters include the following.
GENERAL CIVIL LITIGATION
T&G handles a full spectrum of general civil litigation (breach
of contract, joint venture and licensing disputes, shareholder
disputes, distributorship disputes, tort actions, defamation,
etc.).
- Retained as co-counsel with respect to a high profile, US$100
million civil suit against Rakesh Saxena, now being tried in
Vancouver, Canada. Mr. Saxena is facing civil and criminal charges
in Thailand, Canada, and Switzerland for his alleged role in
defrauding BBC of an estimated US$1.8 billion. (2005-present)
- Representing a multinational aircraft and automobile parts
manufacturer in a US$20 million contract dispute against its
former management company. (2000-present)
- Representing a foreign governmental agency in a US$7 million
debt recovery action against a major Thai agricultural importer.
(2006-present)
- Currently representing one of the largest US retailers of
imported household goods in claims against its Thai sales agent
totaling US$5.7 million. (2005-present)
- Representing one of Taiwan's largest wholesale computer parts
manufacturers in a US$4 million claim for breach of contract
against its Thai distributor. (2005-present)
- Prosecuting three civil cases totaling US$4 million on behalf
of a European manufacturer of bowling equipment. (2004-present)
- Currently representing a Dutch Financial Leasing company in
a Euro 3.8 million claim for repayments under a lease agreement
for a Ferris wheel and three tractors. (2006-present)
- Representing the world's largest shellac manufacturer in civil
litigation to recover approximately US$3 million in contract
and tort damages from a materials supplier and its testing/certification
company, SGS (Thailand) Limited. (2004-present)
- Advising a Japanese leather manufacturer in relation to an
approximately US$3 million debt claim. (2007)
- Advising an American manufacturing conglomerate in a US$2.5
million civil action related to the sale and purchase of allegedly
defective machinery and filed in connection with the Rojana
Industrial Estate. (2005-present)
- Represented the main contractor for the Ratchaburi Power Plant
Project in a dispute with the Electricity Generating Authority
of Thailand. (2003-2003)
- Representing a Japanese manufacturer of water pumps in a US$2.5
million dispute against its Thai partner relating to issues
of breach of contract, return of VAT refunds and import duties
and trademark/tradename infringement. (2006-present)
- Successfully obtained a judgment for the client in relation
to a US$1.2 million civil claim on behalf of a Hong Kong food
products manufacturer against three of its distributors and
their guarantors. (2004-2007).
- Retained by a multinational aircraft manufacturer to recover
Euro 750,000 from an insolvent airline and affiliated parties.
(2004-present)
- Advised a multinational insurance company in connection with
multiple claims arising from an April 2004 oil explosion that
destroyed a local manufacturing facility and the January 2005
subway collision in Bangkok. (2005)
- Litigated a US$500,000 tort action on behalf of a member of
the Siam Cement conglomerate. (2005-2005)
- Recently represented a multinational financial products company
and currently representing one of the largest medical services
companies in Southeast Asia in civil and criminal claims related
to the unauthorized actions of their former Thai directors.
(2005-2006; 2005-present)
- Currently representing a special power producer in a lease
dispute against the Industrial Estate Authority of Thailand.
(2005-present)
- Defending a European aircraft lessor against claims by a Thai
lessee relating to the termination of an aircraft lease. (2006-present)
- Representing a large US manufacturer and distributor of specialty
toys and novelties in civil and criminal claims against its
Thai agent related to the inappropriate use of company funds.
- Successfully defended (at the lower court level) a Japan-based
chemical carrier in a maritime dispute against an insurance
company (pending whether the other party will appeal). (2005-present).
- Representing a large Japanese food product producer and distributor
in ongoing labor and criminal claims related to trade secret
theft and employee malfeasance. (2006-present)
- Ongoing dispute resolution representation of several client
entities, including a pending breach of contract claim for US$1.5
million related to the sale and purchase of industrial metal
goods in Thailand. (2006-present)
- Currently representing a multinational tire manufacturer and
distributor in a full range of dispute resolution engagements,
including labor and general civil claims. Also providing ongoing
legal advice on compliance with Thai regulatory and labor requirements.
(2006-present)
- Significant recent success in settling disputes outside of
litigation, including:
- Recently settled a Baht 70 million debt claim due to debtor's
default on a loan for the purchase of shares in a company
registered on the Stock Exchange of Thailand. (2007)
- Recently settled a US$660,000 civil case on behalf of
one of the world's largest software developers against its
Thai distributor. (2004 -2007)
BANKING, FINANCE, BANKRUPTCY AND REORGANIZATION
T&G represents numerous international lenders and corporate
investors in secured and unsecured financing disputes.
- Continued prosecution of several claims on behalf of two major
Southeast Asian banks against various Thai borrowers and guarantors.
Claims total US$72 million. (2000-present)
- Prosecuting a number of bankruptcy and reorganization proceedings
for various clients.
- Defended a Thai electrical manufacturer against two civil
actions filed by a Bank of Thailand certified asset management
company to enforce overdraft and guarantee agreements totaling
US$600,000. (2004-2007)
LABOR LITIGATION
T&G's labor litigation practice continues to burgeon under
our lead employment litigator, Ms. Sasirusm "Roll" B.
Chunhakasikarn. Representative labor clients include many leading
international conglomerates and Fortune 500 companies.
PRIVATE CLIENT SERVICE
T&G represents a growing number of individual clients in
relation to issues concerning immigration, nationality and family
law (marriage, divorce, child custody) and estate law (wills,
probate, estate administration).
WHITE-COLLAR CRIME
- Representing a multinational economics advisory firm and its
managing director in a highly publicized criminal case filed
by the SEC (2004-2007)
- Representing one of the world's largest automobile manufacturers
in several disputes, including defending such entity against
charges of criminal defamation. (2005-present)
- Obtained a 20-year prison term for embezzlement against a
former officer of our client (a foreign automaker); and now
prosecuting a US$2 million embezzlement action against the former
director of a construction materials company. (2003-2005)
- Concluded our defense of a prominent Thai executive accused
of committing a public fraud in the amount of Baht 500 million.
Successfully discharged the complaint at the police investigation
stage. (2004-2005)
- Representing a stone mining company in a Baht 90 million embezzlement
case against a former director. (2004-present)
- Presently defending a food additives company against charges
of document theft, the foreign director of an American subsidiary
against forgery charges; and an expatriate business developer
in a joint venture dispute that precipitated charges of forgery,
cheating and fraud. (2003/2004/2004-present)
- Obtained non-prosecution orders in two criminal actions filed
by the Food and Drug Administration against our clients (a multinational
chemical company and a manufacturer/distributor of health food
supplements). (2003-present)
- Representing two expatriates in separate money laundering
cases. Also advising expatriates in separate extradition proceedings
filed by the United States, Mexico, and the Netherlands. (2001-present)
ARBITRATION
T&G has long had a solid arbitration practice and continues
to see expansion in new arbitration claims and in enforcing foreign
arbitral awards. Members of our arbitration team have served on
the ICC (Thailand) Arbitration Commission and the Thailand Board
of Trade Commercial Arbitration Committee. Several of our attorneys
are founding members of the Chartered Institute of Arbitrators,
Thailand Branch, and a number have received specialized training
in UNCITRAL and ICC arbitration. Additionally we have an Of Counsel
who is a Chartered Arbitrator (Institute of Chartered Arbitrators,
London).
- Presently representing two contractors in a construction dispute
against the main contractor in the controversial Samut Prakarn
Wastewater Management Project, which was canceled in 2003 by
the Pollution Control Department after 90% completion. Total
claims and counterclaims exceed Baht 1 billion. (2004-present)
- After first obtaining a Baht 175 million ICC arbitration award
in a construction dispute against PTT Public Co. Ltd. (formerly
the Petroleum Authority of Thailand), we are now prosecuting
the enforcement action. (1997-present)
- Represented a multinational electricity generator in an arbitration
against the Electricity Generating Authority of Thailand (EGAT).
The matter recently settled. (2004-2007)
- Representing a Philippines-based seasoning manufacturer in
a Baht 43 million arbitration case arising out of a construction
dispute against a Thai contractor. (2006-present)
- Negotiated settlement in full of a client's Baht 40 million
arbitration claim against Siam Cement Public Company Limited.
(2003-2005)
- Successfully represented the main contractor in an arbitration
at the Thai Arbitration Institute concerning the One Place/Mercury
Tower Building. (1997-present)

INTELLECTUAL
PROPERTY DEPARTMENT
Head of Department: Mrs. Darani Vachanavuttivong (formerly
Ms. Vipa Chuenjaipanich)
Number of Partners in Department: 3
Mrs. Darani Vachanavuttivong (formerly Ms. Vipa Chuenjaipanich),
Co-Managing Partner and Managing Director
Mr. Edward J. Kelly, Partner & Chief Client Relationship Officer
Mr. Srila Thongklang, Partner & Chief Litigator, IP Litigation
Number of lawyers/fee earners: 63
Best-known personalities:
Darani Vachanavuttivong (formerly Vipa Chuenjaipanich) and Edward
J. Kelly have been identified by the AsiaLaw Leading Lawyers Survey
as two of Asia's leading business lawyers in the area of Intellectual
Property, 2003-2007.
Both have been identified as pre-eminent practitioners in the
field of trademark law in the Guide to the World's Leading Trade
Mark Law Practitioners, in association with Managing Intellectual
Property, and as pre-eminent practitioners in the field of patent
law in the Guide to the World's Leading Patent Law Practitioners,
in association with Managing Intellectual Property.
Darani Vachanavuttivong (formerly Vipa Chuenjaipanich) was re-elected
as President of the Intellectual Property Association of Thailand
(IPAT). This is her second term in this position, which will run
from 2007 through 2009.
Tilleke & Gibbins International Ltd. was named AsiaLaw's
Thailand IP Firm 2004, 2005, 2006, and 2007; Managing Intellectual
Property's Thailand IP Firm of the Year for 2007; and Asian-Counsel's
IP Firm of 2007 for Thailand.
IP REGISTRATION AND PROSECUTION
Background information
Practice group head: Darani Vachanavuttivong (formerly
Vipa Chuenjaipanich), Co-Managing Partner and Managing Director
Phone: +66 2263 7735
Fax: +66 2263 7710
E-mail: darani.v@tillekeandgibbins.com
Number of fee-earners: 45
Practice group summary
Patents, Petty Patents, and Designs: Patent and Design Searches,
Registration and Prosecution of Patents, Petty Patents, and Designs
in Thailand, Indochina, and Other Countries, Recordal of Changes,
Annuity Payments, Oppositions, Cancellations, Watch Services,
Registration of Patent License Agreements
Trademarks: Mark Searches, Registration and Prosecution of Marks
in Thailand, Indochina, and Other Countries, Recordal of Changes,
Oppositions, Cancellations, Renewals, Registration of Trademark/Service
Mark License Agreements, Watch Services, Customs Recordal
Geographical Indications: Searches, Registration of Geographical
Indications
Trade Secrets and Thai Local Folk Intelligence: Searches and
Recordal of Trade Secrets and Thai Local Folk Intelligence
Activity report
T&G has over 5,000 patent and trademark owners and agents
worldwide in all businesses.
- Negotiated and drafted a worldwide trademark settlement agreement
between Carabao Tawandang Co., Ltd., a leading Thai beverage
manufacturer, and Red Bull GmbH, the owner of "RED BULL
Energy Drink." (2006-2007)
- Appointed by Boon Rawd Brewery Co., Ltd., the owner of the
famous Thai beers "SINGHA" and "LEO", as
its sole trademark attorney in Thailand to be responsible for
the protection of its marks worldwide. Also represented this
company in drafting a petition and successfully canceling a
bad-faith registration of "SINGHA" trademark in Japan
registered by a Japanese individual. (2007)
- Represented a well-known Japanese restaurant and beverage
manufacturer, Oishi Trading Co., Ltd., in negotiating for a
worldwide settlement agreement with a Filipino snack manufacturer,
Liwayway Marketing Corporation. (2006-2007)
- Successfully obtained a favorable decision from the Court
of First Instance in the European Union for our client, Crisgo
(Thailand) Co., Ltd., in its trademark disputes with Grether
AG. (2006-2007)
- Successfully reclaimed "Double A" trademark of Double
A International Ltd. from its distributor in Turkey. (2006-2007)
- Appointed as legal counsel by the Thai Department of Intellectual
Property (DIP), Ministry of Commerce, to register the government's
service mark "OTOP one tambon one product" in various
overseas countries. (2006-present)
- Successfully represented Thanulux Public Co., Ltd. in a civil
case on trademark dispute "Louis Fontaine" in Belgium
at the Commercial Court. (2006-2007)
- Appointed in the year 2007 to be the IP firm for Sumitomo
Rubber Industries Ltd., the owner of the well-known mark "SUMITOMO"
for tires. (2007)
- Successfully filed well-known trademark recordation with the
Thai Trademark Office under the new Ministerial Regulation of
2005 for the marks KAPPA, KLEENEX, KOTEX, LACOSTE, and ISUZU.
Several applications are still pending. (2005-present)
- T&G, on behalf of Pierre Fabre Medicament, successfully
appealed to the Thai Board of Trademarks opposing a trademark
application for the pharmaceutical products of an Indian company
based on the fact that the trademark was confusingly similar
to an international drug name preserved by the World Health
Organization (WHO). (2006)
- Successfully proved the wide use of the trademark "VELVEETA"
of Kraft Foods in Thailand in the appeal procedure before the
Board of Trademarks to overturn the Registrar's decision accepting
the registration of the trademark application "VELVETA"
in Class 30, filed by a Thai company. The Board recognized that
the trademark "VELVEETA" is widely used in Thailand
and concluded that the Thai applicant filed its application
in bad faith. (2006)
- Represented General Media Communications, Inc., the owner
of the trademark "PENTHOUSE", in a cancellation action
before the Board of Trademarks filed by a Thai company. The
Board concluded that the trademark "PENTHOUSE" when
used with the goods in Class 16, covering magazines, is a distinctive
trademark and dismissed the cancellation petition. (2007)
- Recently achieved a favorable decision in an opposition against
a trademark application filed by an Australian company for the
mark "CIVIC VIDEO" for the goods in Class 9, covering
among other things cassette tapes and DVDs. T&G represented
Honda Motor Co., Ltd. in this case and demonstrated that the
"CIVIC" trademark rightfully belongs to Honda. Despite
the fact that Honda had registered its trademark in Class 12,
covering cars and motorcycles, the Board ruled that the "CIVIC"
trademark is well known and the registration of "CIVIC
VIDEO" trademark would cause confusion among the public
and, thus, the Board dismissed the Australian company's application.
(2007)
- Obtained a rare decision of the Board of Trademarks in the
non-use cancellation filed on behalf of Frente Co., Ltd. against
the registration of the trademark "KARAMUCHO" by a
Thai public company. The subject trademark had been registered
for almost 20 years. T&G successfully demonstrated through
a wide variety of evidence that the trademark owner had no intention
to use its trademark in Thailand. (2007)
- Represented the government of the Republic of Peru in filing
the Geographical Indication (GI) for the well-known "PISCO"
word. (2006)
- Represented Smith Naturals Co., Ltd. in filing an appeal petition
with the Board of Patents opposing patent application for "Butea
Superba Process Invention" filed by a Thai individual.
(2006-present)
- Successfully obtained a favorable decision of the Board of
Patents in the opposition on behalf of Reynolds against another
stationery manufacturer's application for a patent in Thailand.
(2007)
IP ENFORCEMENT, LICENSING AND TRANSACTIONS
Background Information
Practice group head: Edward J. Kelly, Partner & Chief
Client Relationship Officer
Phone: +66 2263 7773
Fax: +66 2263 7710
E-mail: edward.k@tillekeandgibbins.com
Number of fee-earners: 18
Practice group summary
Pre-Litigation and Arbitration: Investigation, Training for In-House
Staff, Market Surveys, Comprehensive Turnkey Anti-Counterfeiting
and Anti-Piracy Campaigns, Preventive Strategies, Civil and Criminal
Action, Police/Excise/Customs Raids and Seizure Actions, Negotiation
and Dispute Resolution, Mediation, Arbitration, Public Relations/Press
Management, Government Lobbying, Law Enforcement Liaison, Cancellations
IP Due Diligence: Searches for Infringement, Registrability and
Validity Analysis, Inventor Search, Audits to Identify and Protect
IP Assets including Trade Secrets, Advice to Avoid Disputes when
Terminating Dealers/Distributors, Consents and Assignments for
IP Created by Employees/Contractors (Work for Hire), Valuation
of Intellectual Property Assets and Due Diligence, IP Risk Assessments
and Management, Freedom-to-Practice Investigations
Cross-Border and Multi-Jurisdictional Transactions
IP Licensing and Contracts: Franchising Agreements, Licensing
Agreements, Distributorship Agreements, Technology Transfer Agreements,
Confidentiality Agreements, Joint Venture and Collaboration Agreements,
Employment Agreements, Asset Purchase Agreements, Incubator IP
Spin-Off Transactions, IP Financing, Restructuring of Internal
Corporate IP Licensing
Copyrights: Subsistence, Filing, Recording, Foreign Registration
and Filing, Licensing and Transactions, Enforcement
Pharmaceuticals and Life Sciences (in conjunction with our Commercial
Practice): Enforcement, Advertising and Marketing, Promotion to
Professionals, Clinical Trials, Commercial Agreement, Disputes
Resolution, Compulsory Licenses, Regulatory Requirements
Entertainment Law (in conjunction with our Commercial Practice):
Protection of Privacy Rights, Distribution Rights, Finance, Location
and Film Permits, Media and Advertising Law, Product Placement,
Music Rights, Script Clearance, Releases, Contract Management
and Administration, Chain of Title Reviews; Other issues: Consumer
Products, Foods and Beverages, Internet and Domain Name Disputes,
Trade Secret and Data Protection, CD Law, and many more.
Activity report
- Lead external counsel for PReMA (The Pharmaceutical Research
and Manufacturing Association) in Thailand, advising PReMA on
pharmaceutical and US-Thailand Free Trade Agreement legal issues,
including patent, compulsory license, data exclusivity, and
market access issues. The Association of 43 member companies
was founded as a non-profit, non-government organization to
represent Thailand's pharmaceutical manufacturers and associated
companies. (2006-present)
- Lead counsel for Pfizer, AstraZeneca, Novartis, Bristol Myers
Squibb, GSK, Sanofi-Aventis, Abbott Laboratories, and Merck
& Co., among others, in planning and execution of a defensive
strategy to respond to the Royal Thai Government's Ministry
of Public Health policy of imposing compulsory licenses on patented
medications. Developed and implemented enforcement of invention
and process patents for several blockbuster drugs against manufacturers
and distributors of infringing copy drug products. (2006-present)
- Represent the Business Software Alliance and other leading
software developers, such as Microsoft, Macromedia, Adobe, and
Autodesk Inc. to conduct "End-User" and retail raids
and vigorous enforcement actions against manufacturers, retailers,
and end-users of pirate unlicensed software. From 2003-2007,
T&G secured more than US$4,600,000 in fines, legalizations,
and settlements for copyright owners as a result of raids and
prosecutions of retail and institutional pirates, including
a record US$450,000 settlement for one well-known software developer.
The High-Tech team has also been a leader in raiding Thailand-based
Internet distributors of pirated CDs and counterfeit goods.
(2003-present)
- Lead counsel for various apparel, fashion, and sporting goods
brands, such as Adidas, Reebok, Puma, Levi's, Timberland, Lacoste,
Quiksilver, Roxy, Abercrombie, Hollister, Converse, Gucci, G-Star,
Gant, Dickies, DKNY, Ferrari, Fila, Lotto, NBA, No Fear, Billabong,
Ecko, Guess, and Playboy for enforcement actions, including
police raids, government lobbying, negotiations, Customs seizures,
media/press releases, and litigation matters.
- Represent Nokia Corporation and other world leading mobile
phone or electrical enhancement companies, such as Motorola,
Panasonic, and Samsung, in suppressing and stopping the counterfeit
products coming into Thailand through cooperation with Royal
Thai Customs. In 2006, there were about 500,000 items of these
products seized by the Customs officials. (2005-present)
- Lead counsel for Casio and Citizen in enforcement of counterfeit
calculators and wristwatches. In August 2007, T&G coordinated
with the Royal Thai Customs in a seizure of more than 100,000
counterfeit calculators bearing "Casio" and "Citizen"
marks from two shipments into the Kingdom of Thailand, which
represents a value of more than Baht 10 million.
- Lead counsel for major Electronics and Computer Accessories
companies, such as Hewlett Packard (HP), Canon, Epson, Samsung,
and Sharp, in enforcement of counterfeit toner/ink/ribbons products
against infringers, importers, and wholesalers.
- Lead counsel for Sanyo in enforcement of counterfeit batteries
in the Thai market.
- Lead counsel for DaimlerChrysler Mercedes Benz in enforcement
of trademarks in a criminal prosecution of a manufacturer of
counterfeit automobile parts. Police raids in October 2005 resulted
in seizures of manufacturing equipment and more than 50,000
fake parts and accessories valued by law enforcement officials
at more than US$25 million. The case is pending before the Public
Prosecutor. (2005-present). Also, in November 2006, T&G
coordinated with the Royal Thai Customs to file charges against
an importer of counterfeit DaimlerChrysler car parts. This case
involved the seizure of almost 2,000 items.
- Lead counsel for Yamaha Motor Corporation in enforcement of
industrial design rights in a criminal prosecution of a BOI
promoted manufacturer of infringing motorcycles. Department
of Special Investigation raids in March 2006 at a factory and
showrooms in Songkhla Province and Bangkok resulted in seizures
of more than 1,000 fully assembled motorcycles valued at more
than US$1 million. (2006-present)
- Lead counsel for several firms in the automobile industry,
including NGK, Denso, Honda, and SKF as well as the Japan Bearing
Industrial Association (consisting of Koyo, NSK, NTN, and Nachi),
in the suppression of counterfeit automobile parts against infringers,
importers, and wholesalers
- Lead counsel for Philip Morris International and other tobacco
brands such as British American Tobacco (BAT), 555, and Regal
in the suppression of counterfeit tobacco and cigarettes. In
2006, T&G in cooperation with the Royal Thai Customs successful
seized more than 500,000 packs of counterfeit "Marlboro"
full flavour King Size Soft Pack and "Marlboro Lights"
King Size at Klongtoey port in Bangkok.
- T&G has also been involved with projects managed by Universal
Studios, Dreamworks SKG, and Twentieth Century Fox International
Ltd. and advised action star Mr. Steven Seagal in several matters.
- Advised on the validity, enforceability, and necessary modifications
to the Software Reseller Arrangements and Master License Agreement
to be entered into between UniServity and its appointed distributor
in Thailand. (2007)
- Advised on a game development agreement between a UK game
publisher and a Thai software developer. (2007)
- T&G also represented Miss Universe LLP, Viacom Inc. in
connection with broadcasts of pageants and award shows from
Thailand. (2005)
- T&G handled the defense of Carlsberg A/S in connection
with an arbitration involving Carlsberg's termination of its
license with the former Thai licensee, Carlsberg Thai Co., Ltd.,
owned by Mr. Charoen Sirivadhanibhakdi, one of Thailand's wealthiest
individual businessmen. The case involved a claim of some US$500
million in alleged damages. (2005)
- T&G organized more than ten Product Identification training
sessions during the year 2006 for government officials both
in Bangkok and in other regions of Thailand. In 2007, T&G
continues to organize training sessions for officers at Customs
ports and also in major events, such as Project SILK - Strengthening
EU-Thai fight against counterfeiting seminar.
- T&G also has lawyers on the Advisory Board of Factory
Watch, a California-based initiative for industry intelligence
on anti-counterfeiting and anti-piracy.
- Edward Kelly delivered the Keynote Address "Blood Money:
The Steep Human Cost of the Counterfeit Culture" at the
International Anti-Counterfeiting Coalition's ("IACC")
Annual Fall Conference, Dallas, Texas, October 4-6, 2006.
IP LITIGATION
Background Information
Practice group head: Srila Thongklang, Partner & Chief
Litigator, IP Litigation
Phone: +66 2263 7700
Fax: +66 2263 7710
E-mail: srila.t@tillekeandgibbins.com
Number of fee-earners: 8
Practice group summary
The IP litigation group handles a full range of IP disputes both
in criminal action and civil action, including trademark disputes,
patent disputes, copyright disputes, trade secret disputes, trade
name disputes, infringements, invalidity, cancellation, appealing
Board of Trademarks' and/or Board of Patents' decisions, and other
commercial disputes involving IP assets such as franchising agreement
and distributorship agreement. T&G has been successful in
obtaining rare Anton Pillar orders and emergency injunctions in
patent infringement claims from the Central Intellectual Property
& International Trade Court (IP & IT Court).
Activity report
- Successfully obtained a favorable compromise agreement and
consent judgment from the IP & IT Court on behalf of a Swiss
consumer and healthcare products company to prohibit the use
and registration of a confusingly similar trademark by a Thai
competitor company. (2003-present)
- Representing a German artist in a criminal copyright lawsuit
against a huge sculpture gallery in Bangkok and its factory
in Samutsakorn province based on the seizure of 67 counterfeit
sculptures by the police in 2003. Further investigation demonstrated
that the counterfeit sculptures from this company have been
exported to several countries and have been sold in art galleries
in Europe and America. (2003-present)
- Successful in obtaining a precedent judgment on behalf of
a leading Japanese electrical appliances company in a civil
case against the Board of Patents' decision refusing our client's
request to restore the lapsed Thai patent, which had been dismissed
due to the failure in payment of an annuity fee. T&G successfully
proved that our client, as the inventor, would not intentionally
surrender, neglect, or avoid payments for annuity fees, and
would have wished to continuously secure protection by law for
both of its Thai patents. Therefore, the IP & IT Court rendered
a precedent judgment cancelling the Board's decision and ordering
the Board to reimburse an amount of court fees and lawyer fee
to the Plaintiff. Given the result of this case, the Board of
Patents has become less strict in considering this type of request
of the patent owners. (2004-2006)
- Representing a Thai public company, engaged in manufacturing
and distributing concrete floors, to protect its Thai patent
from use by another public company. Also, defense for patent
invalidity as claimed by the opposing party in another civil
lawsuit. The total amount of claim in these two cases is approximately
US$22 million. (2004-present)
- Representing a Norwegian paint manufacturing company in two
trademark litigations against its major competitor in the Thai
market. (2004-present)
- Successfully acquired a house mark of a German dental equipment
company through the negotiation method from an individual person
after the mark had been registered for twelve years in Thailand.
The negotiations were conducted after the civil action had been
filed and were concluded without compensation. (2005-2006)
- Representing a leading US pharmaceutical company in two separate
civil actions against two Thai companies and their authorized
directors for the infringement of our client's patent for the
"invention process of drug". The total amount of claim
for each case is approximately US$500,000. (2005-present)
- Defending one of the world's largest direct sales companies
against criminal trademark infringement claims in Thailand.
(2005-present)
- Representing a major American media company to protect its
non-registered trademark from the unauthorized use as a logo
and trademark of a Thai company. (2005-present)
- Representing a huge fashion house in a civil action filed
by two Thai fashion models to prove that the theories of performance
rights should not be applied in their case. (2005-present)
- Representing a Hong Kong-based beverage company in a trademark
non-use cancellation action filed by a leading Thai beverage
and soy products manufacturing company. (2005-present)
- Representing one of the largest American TV and entertainment
companies in proving the well-known status of its house brand
in Thailand after the Board of Trademarks rejected its applications
in several classifications. (2005-present)
- Successfully proved a better right over the trademark of a
Swedish clothing and fashion company and thus acquired the trademark
from a clothing wholesaler in Thailand. Given the favorable
result, our client was able to open its shops at Siam Paragon,
a huge shopping center in Bangkok, as per its previous business
plan. (2005-present)
- Representing a Japanese automobile and engine manufacturing
company in trademark litigation against a company in Thailand
after having found that the Thai company has used and registered
a trademark for agricultural engines, which is confusingly similar
to an international well-known trademark of our client. (2005-present)
- Successfully demonstrated the better right over the mark of
a Taiwanese company in a trademark litigation action against
a Thai company involved in manufacturing air conditioners and
hardware accessories which had registered and used this mark
in Thailand. (2005-present)
- Successfully defended the rights over the disputed mark in
a civil litigation filed by a US fabric manufacturing company
to oppose and cancel the registration of the trademark of our
client, a Filipino company engaged in manufacturing and distributing
socks. The Court ruled that the Plaintiff failed to demonstrate
its right to the disputed mark. (2005-present)
- Recently obtained a favorable judgment of the IP & IT
Court, whereupon the Court upheld the Board of Trademarks' decision
and rendered a judgment confirming that the trademark of our
Italian client is registrable because it is not confusingly
similar to the registered trademark of a Dutch company, despite
the fact that both marks consisted of the same word. (2005-present)
- Representing a motorcycle accessories company in a civil action
against a Thai company which had requested a distribution relationship.
This company made continued attempts to mislead the public by
using the same trademark and trade name as our client. (2006-present)
- Representing a Thai healthcare products company in a trademark
litigation case initiated by its former employee and former
authorized manufacturing company, who claimed to be the owner
of our client's trademarks as well as the solution for production
of haemodialysis solutions. (2006-present)
- Representing a French electrical equipment and accessories
company in a civil action against a Thai company to prohibit
the use and sale of circuit breakers infringing our client's
trademark and product design. (2006-present)
- Representing a well-known Swiss luxury wristwatch company
in a trademark litigation case against a Thai individual who
attempted to use and register a word mark and device which are
confusingly similar to our client's well-known mark and device.
(2007)
- The T&G IP litigation team is representing several clients
in civil cases filed against the Department of Intellectual
Property (DIP), the governing agency for the Trademark Registrar
and Board of Trademarks, to appeal the Registrar's and the Board's
decisions objecting to the registration of trademarks.

November
2007
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