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​ 

December 17, 2025
Vietnam’s National Assembly approved wide-ranging amendments to the Intellectual Property (IP) Law on December 10, 2025, marking one of the most significant overhauls of the country’s IP regime in recent years. The changes, which supplement and refine existing provisions, are designed to align Vietnam’s framework more closely with international standards while addressing practical challenges faced by rights holders and practitioners. The amendments will come into force on April 1, 2026. The most notable changes are detailed below. Recognition of partial and nonphysical industrial designs: Industrial design protection has been broadened to cover partial designs and nonphysical forms (class 32), explicitly extending rights to parts of products that are not independently circulated as well as digital and intangible product appearances. The law clarifies that the external appearances of nonphysical products are protected industrial designs, and circulation of digital copies of any part of that appearance will be treated as an act of using the industrial design. The provision on the industrial applicability of industrial designs has also been amended accordingly to include the uniform reproduction of nonphysical products in cyberspace. Resolving conflicts between overlapping rights: The IP Law provides a safeguard against conflicts when a single subject matter is protected by multiple IP rights. Where overlapping rights exist, the later-arising right will be terminated if its exercise interferes with the normal exploitation of an earlier right. The decision to terminate such a later right rests with the court. Use of published data for AI training: Organizations and individuals may use lawfully published and publicly accessible documents and data for scientific research, testing, and AI system training. Such use must not unreasonably prejudice the rights or legitimate interests of authors or IP rights holders. Where the documents and data fall under copyright or related rights protection, their use must also comply
Read More
December 5, 2025
One morning, a California-based company mapping its Southeast Asia rollout opened an unexpected cease-and-desist letter from a Vietnamese IP firm. To the company’s surprise, the letter asserted that a local client already owned the company’s brand in Vietnam and threatened legal action. This is not an isolated incident. In another recent matter in the sports industry, a squatter demanded at least USD 48,000 from our client to “resolve” a similar conflict. For brands entering Vietnam or expanding distribution there, these tactics can create acute risk at precisely the point at which market momentum is building. Vietnam’s rapid economic growth and deepening integration into global trade have made it an increasingly attractive destination for multinational brands. Those same dynamics have intensified a longstanding issue: trademark squatting. Vietnam has modernized its IP framework over the past decade, but its strict first-to-file trademark system continues to incentivize opportunistic filings by parties with no legitimate interest in a mark. As more foreign brands build their reputation abroad before turning to Vietnam, squatters remain alert to timing gaps and enforcement frictions. The First-to-File System: Advantages and Vulnerabilities Vietnam adheres closely to the first-to-file principle under its Law on Intellectual Property. In practice, exclusive trademark rights belong to whoever submits the earliest valid application to the Vietnam Intellectual Property Office, regardless of prior use in Vietnam. This approach offers administrative clarity and reduces evidentiary burdens compared to use-based jurisdictions. Yet it also creates fertile conditions for squatting. Bad-faith actors regularly monitor foreign markets, identify brands gaining traction, and move quickly to register those marks domestically, often long before the genuine owner enters the market or prioritizes local filings. By the time the true brand seeks protection, the squatter’s application (or registration) stands as a legal obstacle, pushing businesses toward costly oppositions, cancellations, or uncomfortable negotiations
Read More
November 26, 2025
On November 21, 2025, Myanmar’s Ministry of Commerce (MOC) issued Notification No. 103/2025 promulgating the Geographical Indication Rules (GI Rules), establishing a comprehensive framework for the registration and administration of geographical indications (GI), which are primarily governed by the Trademark Law of 2019. On the same day, the MOC released Notification No. 104/2025 specifying the required forms for GI-related matters. The GI Rules establish a comprehensive set of procedures for the entire GI application process, including filing applications, oppositions, cancellations, and invalidations, and appointing a local representative for GI-related matters. Under the Trademark Law and the GI Rules, domestic and foreign legal entities (organizations) that formally represent a defined group of stakeholders (such as producers or manufacturers of natural products or resources, agricultural products, handicrafts, or industrial products) and other competent authorities from government departments are eligible to apply for GI registration with the Intellectual Property Department (IPD) in Myanmar. Application A GI application can be submitted in either English or Myanmar language electronically, in person, or via post. Foreign applicants seeking to register a GI in Myanmar are required to submit a copy of the registration certificate from their country of origin with the GI application. This certificate must explicitly state the GI name of the protected product. Notably, foreign applicants are mandated to appoint a local representative in Myanmar to act on their behalf for GI-related matters with the IPD and appeal-related matters with the IP Agency. The form for appointing the local representative must be duly notarized in the applicant’s home country to ensure its legal validity and acceptance in accordance with the GI Rules. Application for Use of GI Logo Pursuant to the GI Rules, any interested individual, local or foreign, may submit an application to the IPD for authorization to use the GI logo,
Read More
November 21, 2025
Tilleke & Gibbins has contributed the Thailand chapter to Asia IP’s ASEAN Guide to IP Protection 2025, an annual reference covering key developments and practical considerations for intellectual property systems across Southeast Asia. The chapter offers an overview of Thailand’s current legal framework for the protection of trademarks, patents, industrial designs, and copyrights. It summarizes registration requirements, recent regulatory updates, and procedural considerations relevant to rights holders and practitioners. The chapter offers actionable insights for rights holders at every stage of the IP lifecycle and addresses practical strategies for managing portfolios, anticipating enforcement challenges, and maximizing the value of IP assets. The authors also highlight recent trends and developments in Thai IP law, ensuring that readers are equipped with the latest knowledge to inform their decisions. The complete Thailand chapter can be downloaded through the button below, and the chapter is also available on the Asia IP website.
Read More