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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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