You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

May 24, 2018

Landmark Victory in Design Patent Infringement Case

Subscribe to Updates
Informed Counsel

Tilleke & Gibbins is the main external counsel for intellectual property (IP) enforcement work for Honda Access Corporation, a developer, manufacturer, and seller of automotive and motorcycle parts and accessories, and a subsidiary of Honda Motor Co., Ltd. Our firm recently assisted the client in several related design patent infringement matters, which culminated in a civil suit filed with Thailand’s Central Intellectual Property and International Trade (IP&IT) Court against infringing Thai companies. Through the combined efforts of our IP litigation and enforcement lawyers, and our in-house investigation team, we secured a resounding victory for our client in the IP&IT Court in November 2017. In its landmark ruling, the Court awarded our client the largest civil lawsuit compensation amount to date for a design patent infringement case in Thailand at THB 68.65 million (about USD 2.11 million), plus interest, and attorney and court fees.

Previously, Honda Access Corporation claimed rights on four protected design patents for genuine spoilers, used in one of their parent company’s highly popular CITY 2014 model automobile, which were being infringed upon through similar products that were being manufactured and distributed for sale in the Thai market by several infringing companies. The automobile model for which the accessories were made is a valuable commercial product that is consistently ranked first in sales in its market segment in Thailand.

As an initial remedy, the Tilleke & Gibbins IP enforcement team sent warning letters to the infringers. Since the infringer did not respond or cease its infringement, we then proceeded with the case through the IP&IT Court, and successfully obtained a preliminary team, in collaboration with the execution officers, to inspect and seize the infringing goods at all locations that they could be found.

To execute the Court order, our firm’s in-house investigation team conducted an investigation to determine the location of the warehouse and/or factory of such infringing goods, and was able to lead authorities to seize 1,280 infringing car accessories at a warehouse. Later, the company that claimed to own the seized products filed a motion asking to join in the case, with the Court granting the motion and allowing the company to join as an interpleader. The preliminary measure that our team obtained enabled our client to disrupt the infringers’ activities without waiting for the entire time-consuming litigation process.

At the same time, our IP litigation team filed a civil lawsuit with the IP&IT Court requesting damages, including all of Honda Access Corporation’s legal and execution fees, from the infringers. After completion of the hearing of witnesses and waiting for judgment on the merits of the case, our client found that the defendants were still distributing their infringing goods in Thailand through another company. In response to this offense, our firm requested and obtained a preliminary injunction from the IP&IT Court to order the infringers to cease further manufacturing and distribution operations.

In considering the sound arguments and case presented by our lawyers, the substantial evidence gathered by our in-house investigation team, and the defendants’ continued infringement and seeming disregard for the law, the Court rendered a judgment in our client’s favor in November 2017 by deciding that the defendants had indeed infringed on our client’s design patents.

In the landmark ruling, the Court awarded Honda Access Corporation the largest civil lawsuit compensation amount to date for a design patent infringement case in Thailand at THB 68.65 million (about USD 2.11 million), plus 7.5 percent interest per year from September 2016 until the completion of the defendants’ and interpleader’s payments. The Court also ordered the defendants and interpleader to pay our client’s court fees and THB 500,000 (about USD 15,400) in attorney fees.

The Court further ruled that all infringing car accessories in the possession of the defendants and interpleader must be seized and destroyed, with the infringers paying for the destruction. The case marks one of the rare instances in Thai court proceedings in which court officials visited the infringers’ premises to inspect the seized products first-hand.

Tilleke & Gibbins’ efforts not only achieved a landmark ruling for Honda Access Corporation, but also prevented infringers from continuing to manufacture and distribute their design-infringing products, helping to protect our client’s genuine accessories and their strong market position in Thailand, as well as serving as a deterrent against other potential infringers in the future.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

April 29, 2026
Across the region, local brands have become key drivers of economic growth, cultural identity, and innovation, and Myanmar is no exception. From traditional products and creative industries to modern startups and small and medium‑sized enterprises (SMEs), Myanmar’s local brands are increasingly shaping domestic markets. However, as local brands grow, they also face higher risks of imitation, misuse, and unfair competition. In this context, protecting brand identity, creativity, and innovation through proper intellectual property (IP) strategies is essential to ensure that Myanmar’s homegrown businesses can grow sustainably, compete confidently, and retain the value of what they create. The Key IP Laws for Local Brands In 2019, Myanmar enacted a comprehensive suite of four IP laws, aligning the nation’s IP enforcement framework with international standards. Trademark Law 2019: This law introduced the “first-to-file” system into the country, with trademark rights primarily obtained through registration with the Intellectual Property Department (IPD). Trademarks protect brand names, logos, and other signs that distinguish goods or services. Registration grants the exclusive rights to use the mark and to prevent others from using identical or confusingly similar marks. Each registration lasts for 10 years from the filing date and can be renewed for subsequent 10-year periods. Copyright Law 2019: Copyright, which arises automatically upon creation, protects literary, artistic, musical, and audiovisual works, including software, advertisements, artwork, and social media content. While registration with the IPD is not mandatory under this law, it can be helpful for establishing evidence and supporting any future enforcement. The terms of protection for economic rights associated with copyrights vary depending on the type of work involved. In contrast, the protection for moral rights lasts indefinitely—continuing even after the author’s death. Industrial Design Law 2019: Under this law, any industrial design that is new and independently created can be filed with the
Read More
April 21, 2026
Vietnam continues to refine its intellectual property framework to align with the 2025 amendments to the Law on Intellectual Property (IP Law). On March 31, 2026, the government issued Decree 100/2026/ND-CP (Decree 100), which substantially amends Decree 65/2023/ND-CP detailing the implementation of the IP Law (Decree 65). On the same day, the Ministry of Science and Technology released Circular 10/2026/TT-BKHCN (Circular 10), providing detailed procedural guidance and new forms. Both instruments took effect on April 1, 2026, along with the amended IP Law. While the updates touch on every IP right, trademark owners and brand strategists will find several practical and forward-looking changes that directly affect filing strategy, examination timelines, portfolio management, and enforcement readiness. 1. Fast-Track Substantive Examination for Eligible Applications One of the most business-friendly innovations is the new fast-track substantive examination pathway for applications meeting specified eligibility criteria. Successful fast-track applications enjoy a shortened substantive examination period of three months. This offers a significant competitive edge for tech-driven or regulated-sector brands. If the mark is identical or similar to a mark in another person’s trademark application with an earlier filing date in the case of a priority application that has not yet been processed, the fast-track process will return to the ordinary process. However, the law does not touch on cases where marks under fast-track examination face office action due to other reasons (i.e. lack of distinctiveness, confusingly similar to others’ copyright, trade name, industrial design, etc.) 2. AI-Generated Trademarks Receive Clear Protection Pathway Decree 100 explicitly addresses the use of artificial intelligence (AI) in IP creation, amending Article 10a of Decree 65 to confirm that trademarks created with AI systems are fully protectable, provided they meet the standard requirements of registration. Trademarks face no additional “human authorship” hurdle (unlike patents or industrial designs). Brand owners
Read More
April 20, 2026
Myanmar’s industrial design registration regime has been steadily gaining momentum since the country officially began accepting applications under the Industrial Design Law of 2019. The Industrial Design Division of Myanmar’s Intellectual Property Department (IPD) has actively advanced examination and registration procedures, and as of March 2026, approximately 300 industrial design applications have been published in the IPD’s publicly accessible database—a meaningful milestone in the development of Myanmar’s emerging intellectual property framework. This figure reflects only published applications; additional filings remain pending and will be published after the conclusion of ongoing examination. Filing Requirements in Practice Compliance with a defined set of mandatory requirements is the foundation for filing a valid design application. These mandatory particulars must be provided at the time of filing in order to establish a filing date. These include the applicant’s and creator’s identifying details, a notarized appointment of representative form, the Locarno Classification of the associated product, and a set of graphic representations of the design across multiple standard views. Applicants must also provide a written description of the design and, where applicable, information relating to any priority claim or request for deferred publication. Filing fees are payable at the time of submission. Beyond these core requirements, applicants typically need to provide supplementary documentation, either at the time of filing or in response to a formality examination. This may include evidence of the applicant’s legal entitlement to the design—particularly where the applicant and creator are different parties—as well as supporting corporate and authorization documents. Where priority rights are claimed, the relevant documents must generally be submitted within three months of the Myanmar filing date, with certified English translations required for any non-English priority applications. The supplementary requirements may vary depending on the nature of the application and the examiner’s requests during the formality examination process.
Read More
April 3, 2026
On March 16, 2026, Vietnam’s Ministry of Public Security released a draft version of a new Decree on the Prevention and Combating of Cybercrime and High-Tech Crime to replace the currently effective Decree 25/2014/ND-CP. In the draft, the ministry has proposed a comprehensive regulatory framework aimed at addressing violations occurring within the cybersecurity domain, including measures related to intellectual property. Acts of Online IP Infringement Article 9 of the draft decree notably introduces specific provisions addressing online intellectual property infringement, with detailed lists of acts considered to constitute infringement in the online environment. Copyright and related rights infringement includes: Uploading or sharing works, performances, sound recordings, video recordings, broadcasts, computer programs, software, research, documents, theses, or other intellectual creations on digital platforms without the consent of the rights holder. Unauthorized livestreaming of copyrighted television programs, sporting events, or artistic performances. Uploading, sharing, storing, transmitting, or providing links to infringing works or digital content via websites, social networks, applications, or digital platforms. Providing or using software, tools, devices, or access codes to circumvent technological protection measures or evade lawful control mechanisms implemented by rights holders. Using artificial intelligence (AI) tools to replicate the ideas or structure of another person’s work without significant new creativity or without proper attribution, thereby causing damage to the original author. Industrial property infringement includes: Manufacturing, trading, advertising, or distributing counterfeit goods bearing counterfeit trademarks, geographical indications, or industrial designs, as well as goods infringing industrial property rights through online platforms. Unauthorized registration, appropriation, or use of domain names, account names, or digital identifiers that create confusion regarding the rights holder or the origin of goods or services. Producing, using, or offering for sale products containing all or part of a patented invention via online platforms. Advertising or introducing products with technical features or characteristics identical
Read More