Ploynapa Julagasigorn

Go Back

Senior Associate

Biography

Ploynapa Julagasigorn is an accomplished and versatile senior associate in Tilleke & Gibbins’ intellectual property group. Her practice encompasses a wide range of domestic and cross-border intellectual property matters as a strategic advisor, an enforcer of intellectual property rights in Thailand, and a litigator in intellectual property prosecution and infringement disputes. With her broad expertise and experience working across all aspects of intellectual property law in Thailand, Ploynapa provides practical and actionable legal opinions on intellectual property matters and legal compliance issues, and executes complex legal research projects for international and transnational trade promotion organizations such as the Japan External Trade Organization, Korea Trade-Investment Promotion Agency, and others.

When companies discover or suspect infringement of their intellectual property in the Thailand market, Ploynapa conducts infringement analysis, drafts cease-and-desist letters and negotiates settlements with infringers, and coordinates with government authorities to enforce her clients’ rights. When negotiated solutions are not forthcoming, Ploynapa is a formidable litigator in Thailand’s Intellectual Property and International Trade Court, where she has a strong track record of securing favorable judgments for her clients.

The depth of her knowledge and experience representing clients in the Thai market makes Ploynapa a sought-after speaker in industry seminars and conferences, training initiatives for government authorities, and academic lectures at universities in Thailand. Ploynapa also regularly writes articles for both general readers and specialists, and she coauthored the Thailand chapter of International Copyright Law: A Practical Global Guide, Second Edition. Ploynapa has served as secretary of the Licensing Executives Society of Thailand since September 2021, and she is an active member of the INTA Emerging Issues Committee, for which she serves on the Blockchain Subcommittee group.

Experience

Helped to secure several out-of-court settlements for international clients against companies and people that were infringing our client’s IP rights. To achieve these strong outcomes, our team derived proof of infringement by investigating local marketplaces, acquiring infringing products, and providing extensive infringement analyses on the acquired products. The settlements we have reached on behalf of clients include immediate cessations of infringement, monetary damages, publication of apology notices and binding commitments to avoid future infringement.
Advised one of the largest integrated petrochemical companies in Asia on IP infringement and enforcement guidelines in Thailand. Among other things, our team assisted in creating tailor-made guidelines for the client and conducting staff training sessions in line with the client’s business model, interests, and ongoing projects.
Acted for a world-leading multinational imaging and optical products corporation in successful litigation against online infringers. The team employed a trailblazing strategy using Thailand’s Computer Crimes Act to successfully help enforce the client’s IP rights against multiple infringers that were selling counterfeit products online. Notably, this strategy had never been used to fight online infringement in Thailand before, representing a landmark case in the jurisdiction.
Conducted product identification seminars for government officers in Thailand and Laos, on behalf of a Japanese multinational electronics corporation, in order to raise awareness about the widespread impact of counterfeit goods, and reinforce the abilities of concerned officials to suppress the spread of infringing products.
Assisted a Thai food processing conglomerate to protect its renowned packaging design. Our representation of the client led to a court decision granting a landmark THB 20 million (approx. USD 670,000) compensation award for copyright infringement and trade dress protection.
Acted for a multinational electronic company to trace the origin of counterfeit batteries that were being sold through online channels and were ultimately able to identify the source of the supply chain. After identifying the source, we assisting the client in coordinating a successful raid action against the infringer, which resulted in the seizure of over 30,000 counterfeit products. This successful raid action prevented the distribution of fake goods to end users in the Thai market and served as a deterrent to other potential infringers.
Helped to successfully protect the IP rights of a world renowned coffee company against infringers that were using online marketplaces, social media platforms, and private websites to sell counterfeit products bearing our client’s valuable trademarks. We conducted a comprehensive online sweep project for the client which helped toidentify suspected infringers, classify them into different groups, and provide strategies to tackle the suspected infringers in each group. This project led to a significant decrease in the sale of counterfeit product bearing our client’s trademark by both online retailers and wholesalers.
Assisted a well-known energy drink company in negotiating with a business competitor based in Europe that had a confusingly similar brand logo. Despite several legal actions that were initiated by the opposing party, our negotiations on behalf of the client resulted in an amicable settlement of the worldwide dispute.
Helped to prepare a comprehensive report on IP enforcement in Thailand and co-authored an online enforcement action report in ASEAN for a Japanese government-related organization that promotes mutually beneficial trade and investment. These reports are provided as guides for Japanese businesses who are interested in protecting their IP rights in ASEAN.
Conducted an infringement analysis for a Japanese multinational corporation manufacturing automobiles, motorcycles, and power equipment regarding design patent infringement committed by an unauthorized distributor.
Advised and assisted the world’s largest international coffeehouse chain to protect its trademark against unauthorized use on the Internet.
Carried out research on counterfeit products in Thailand for a Japanese government organization involved in the promotion of business and investment.

ABOUT Ploynapa

Languages

Thai

English

Korean

Education

LLM, Chulalongkorn University

LLB, Thammasat University

Insights

January 16, 2023

Thailand’s New Customs Recordation System

Thailand changed its system for customs recordation and various other customs procedures when its Customs Notification No. 106/2565 on the Export, Import, and Transit of Trademark- and Copyright-Infringing Goods came into effect on July 29, 2022. The revamped system updates the process by which entrepreneurs and brand owners can work with the Customs Department to protect their intellectual property rights (IPRs) from cross-border trade in counterfeit and pirated goods. To support these changes, the Customs Department launched a new platform called the Thai Customs IPR Recordation System (TCIRs) in September 2022. Trademark or copyright owners (or their representatives) can file new customs recordation applications, make changes to information, and renew customs recordation applications via this platform. The filed information will be kept confidential in Thai Customs’ database and will be used as evidence in cases of seizure of counterfeit or pirated goods. The new platform allows submission of information on genuine goods and inspection methods in the form of images and PDF files, which will enhance the effectiveness of the goods verification process of the Customs Department. Customs Recordation through TCIRs Trademark or copyright owners (or their representatives) may file an application specifying information that customs officers can use to verify the authenticity of the goods being exported, imported, or transited through Thailand. The application can be filed with the Enforcement Division of the Customs Department. The information in the application will be kept for three years from the date of receipt (or for the remaining period of trademark or copyright protection, if less than three years). Renewals can be filed no later than 30 days before the expiry date. Any changes in information must be made with the Enforcement Division. Key Takeaways As the legislation has changed to mandate that customs recordation applications go directly to the Customs

October 19, 2022

Practical Law: Intellectual Property Transactions in Thailand 2022

Tilleke & Gibbins’ intellectual property team in Bangkok has provided the latest updates to the Thailand chapter of Practical Law’s Intellectual Property Transactions Global Guide, a high-level comparative overview of intellectual property (IP) laws and regulations in 36 jurisdictions worldwide. The Intellectual Property Transactions in Thailand chapter focuses on business-related aspects of IP, such as the value of intellectual assets in M&A transactions and the licensing of IP portfolios. The topics covered include the following: IP assignment and licensing: Basis/scope and formalities, trade secrets and confidentiality, main terms for assignment/licensing Research and development collaborations: Improvements and derivatives, joint ownership Conducting IP audits to determine the contents of an IP portfolio IP aspects of mergers and acquisitions: IP due diligence, warranties and indemnities, transfer of IP rights Lending and security interests over IP rights Settlement agreements in IP litigation Agreements regarding rights over IP created by employees and consultants Competition law and exploitation of IP rights Tax (e.g., for IP licensing) and nontariff trade barriers To read the full Intellectual Property Transactions in Thailand chapter, please visit the Practical Law website.

September 6, 2022

Thailand Issues New Rules on Customs Recordation and Seizure of Counterfeit Goods

The Thai Customs Department has issued a notification that changes the customs recordation system and the customs procedures for the seizure of counterfeit and pirated goods. Customs Notification on the Export, Import, and Transit of Trademark- and Copyright-Infringing Goods was published in the Government Gazette on August 4, 2022, and had gone into effect on July 29, 2022. Previously, trademark owners seeking customs recordation needed to record the relevant information with the Department of Intellectual Property (DIP), but under the new notification, both trademark and copyright owners can record their intellectual property information with the Customs Department directly. The system and procedures established by the notification are detailed below. Customs Recordation System Trademark or copyright owners (or their representatives) may file an application specifying any information that customs officers can use to verify the authenticity of goods being exported, imported, or transited through Thailand. The application can be filed with the Enforcement Division of the Customs Department. The information in the application will be kept for three years from the date of receipt (or for the remaining period of trademark or copyright protection, if less than three years). Renewals can be filed no later than 30 days before the expiry date. Any changes in information must be made with the Enforcement Division. Ex Officio Impounding Procedure When customs officers suspect any goods of infringing intellectual property rights according to the information recorded, they will impound the goods and inform the exporter, importer, or transit person (or agent) as well as the trademark or copyright owner. If the customs officers cannot contact the exporter, importer, or transit person (or agent), or if this person does not oppose the action within three days, the impounded items will be deemed infringing goods. Importantly, if the exporter, importer, or transit person admits that

June 22, 2022

Thailand Lowers Market Value Threshold for DSI to Investigate IP Infringement

Thailand’s Department of Special Investigation (DSI) has recently changed the criteria for accepting cases under their jurisdiction, which greatly benefits intellectual property (IP) owners who wish to bring legal action before the DSI. Issued on June 9, 2022, and taking effect the following day, the Notification of the Board of Special Cases (No. 8) B.E. 2565 (2022) lowered the minimum threshold for the market value of IP-infringing goods from THB 10 million (approx. USD 242,400) to THB 5 million (approx. USD 121,200). DSI Jurisdiction The Special Case Investigation Act B.E. 2547 (2004) (as amended) and subsequent regulations lay out the DSI’s jurisdiction over “special cases,” giving DSI officers the authority to handle certain trademark, copyright, and patent infringement cases (among others). In order for the DSI to get involved, the alleged offender must be involved in, or suspected of involvement in, the manufacturing or purchasing of the items in question, or in relevant distribution facilities, warehouses, or importing businesses. Another condition for the DSI having jurisdiction is that the total market value of the articles or products possessed for use in the offense, acquired from the offense, or the possession of which is an offense, must exceed the minimum threshold specified in regulations. This minimum market value has now been lowered from THB 10 million to THB 5 million. The damages that can be reasonably expected from the commission of an offense have also been lowered from THB 10 million to THB 5 million. Impact of the New Criteria on IP Owners The DSI has substantial experience handling complex IP-infringement cases, and they have been especially active in fighting online infringement over the past several years. The lowering of the minimum benchmark to file a case from THB 10 million to THB 5 million means that more IP owners

Awards & Rankings

March 3, 2023

Tilleke & Gibbins Wins Diversity and Inclusion Firm of the Year Award from ALB

Tilleke & Gibbins has been recognized for its commitment to diversity and inclusion at the ALB Women in Law Awards held on March 2, 2023. The awards ceremony, organized by Asian Legal Business (ALB), celebrates the outstanding performance of female private practitioners and in-house counsel across the Asia-Pacific region.

February 24, 2023

Tilleke & Gibbins Shortlisted for Two Chambers Asia Pacific and Greater China Region Awards 2023

Tilleke & Gibbins has been named a finalist for two prestigious awards at the upcoming Chambers Asia Pacific and Greater China Region Awards 2023. The awards recognize and celebrate the achievements of firms, companies, and individuals who are driving the advancement of diversity and inclusion across the Asia Pacific region. Tilleke & Gibbins was shortlisted for the Diversity & Inclusion: Outstanding Firm award, which recognizes firms that have made exceptional strides in promoting diversity and inclusion across their organization. Additionally, Tilleke & Gibbins has been nominated for Thailand Firm of the Year, in recognition of the firm’s exceptional performance and outstanding achievements in providing legal services in Thailand. The Chambers Asia Pacific and Greater China Region Awards 2023will be held in person at Marina Bay Sands in Singapore on May 4, 2023. For more information on the awards and the shortlisted nominees, please see the Chambers website.

February 24, 2023

Tilleke & Gibbins Named One of Asia’s Most Innovative Law Firms

Tilleke & Gibbins has been named to the ALB Top 15 Innovative Law Firms list, an initiative from Asian Legal Business identifying the law firms in Asia that have incorporated new technologies and techniques to provide top legal and client services. Tilleke & Gibbins was recognized for its strength in emerging areas such as cannabis and digital assets—as well as recent landmark victories in court for the firm’s clients. Tilleke & Gibbins is dedicated to innovation in both client service and internal business operations, and is proud of its culture of innovation across all departments and offices throughout Southeast Asia. Asian Legal Business, owned by Thomson Reuters, is a leading source of information for businesses and professionals active in the region. To learn more about the ALB Top 15 Innovative Law Firms list, please see the January/February 2023 issue of Asian Legal Business magazine.

February 23, 2023

Tilleke & Gibbins Nominated for Five MIP 2023 Asia Pacific Awards

Managing Intellectual Property released the shortlists for its 2023 Asia Pacific Awards, and Tilleke & Gibbins was honored to be nominated for five awards—notably, the firm received a nomination in every category for which it was eligible. The nominations include the following: Firm Awards Asia-Pacific Firm of the Year (Domestic Firms) Indonesia Firm of the Year Thailand Firm of the Year Vietnam Firm of the Year Individual Awards Indonesia Practitioner of the Year: Wongrat Ratanaprayul The nomination for Thailand Firm of the Year marks the 17th consecutive year the firm has landed on the shortlist, winning 11 times. For Vietnam, this is the 15th straight nomination, with 9 wins, and for Indonesia, this is the fifth nomination overall. The winners of the awards will be announced at an in-person ceremony in Singapore in mid-May, with exact details still to be confirmed.

Other Professionals

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

Industries

Practices