Ploynapa Julagasigorn

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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

February 3, 2023

Asia Legal Awards 2023: Tilleke & Gibbins Earns Four Regional Nominations

The shortlist for the Asia Legal Awards 2023 from Law.com International has been released in full, and Tilleke & Gibbins has secured nominations in four core categories. The firm has been shortlisted for: Southeast Asia Firm of the Year Intellectual Property Firm of the Year (Asia-wide) Litigation Firm of the Year (Asia-wide) Technology, Media, and Telecommunications Firm of the Year (Asia-wide) Law.com International bills the Asia Legal Awards as “the most renowned ceremony for the legal elite” in Asia. The awards recognize the most complex and outstanding legal work from around the region and seek to identify the firms responsible for the most significant transactions and cases in the past year. The winners of the Asia Legal Awards 2023 are set to be announced at a ceremony hosted at The Fullerton Hotel Singapore on March 30, 2023. For more information on the Asia Legal Awards 2023, and to browse a full list of nominees in all categories, please visit the Law.com International website.

January 12, 2023

The Legal 500 Asia Pacific 2023: Tilleke & Gibbins a Leading Firm in All Its Jurisdictions

The newly released rankings in The Legal 500 Asia Pacific 2023 have identified Tilleke & Gibbins as a leading firm in all six of its jurisdictions in Southeast Asia. In addition to its strong performance in the practice area rankings, Tilleke & Gibbins had a record-breaking year in the individual rankings. The firm’s Thailand office was identified as a leader in all 15 of the practices areas ranked in the guide: Tier 1: Dispute Resolution, Intellectual Property, Labour and Employment, Tax, TMT Tier 2: Banking and Finance, Capital Markets, Corporate and M&A, Customs and International Trade, Insurance, Projects and Energy, Real Estate and Construction, Restructuring and Insolvency, Transport Tier 3: Dispute Resolution: International Arbitration Tilleke & Gibbins’ offices in Vietnam received rankings in nine practice areas: Tier 1: Data Protection, Intellectual Property (International Firms), TMT Tier 2: Corporate and M&A, Dispute Resolution: Litigation, Labour and Employment Tier 3: Dispute Resolution: International Arbitration Tier 4: Banking and Finance, Projects and Energy For Myanmar, Tilleke & Gibbins was ranked in two practices—including a new ranking for Projects: Tier 2: Corporate and M&A, Projects Tilleke & Gibbins earned one additional practice-area or firm ranking for each of its offices in Cambodia, Indonesia, and Laos: Tier 1: Laos (Leading Firms – single category) Tier 2: Cambodia (Leading Firms – single category); Indonesia (Intellectual Property) To browse the full rankings and read the accompanying editorial analysis, please view the firm rankings through the country links above or read more about the rankings on the Legal 500 Asia Pacific website.

December 15, 2022

Chambers Asia-Pacific 2023: Tilleke & Gibbins Earns Record Number of Rankings

Tilleke & Gibbins has earned high rankings across all of the firm’s jurisdictions in Southeast Asia in the recently released 2023 edition of Chambers Asia-Pacific. This year, individual practitioners from the firm’s offices across the region received a record total of 30 individual rankings. A full summary is below. Thailand Tilleke & Gibbins’ practice in Bangkok—the firm’s largest office—led the way with rankings in 12 different practices areas, including three Band 1 recognitions: Aviation – Band 1 Competition/Antitrust – Band 2 Corporate/M&A – Band 3 Dispute Resolution – Band 3 Employment – Band 1 Insurance – Band 2 Intellectual Property – Band 1 Projects & Energy – Band 3 Real Estate – Band 3 Restructuring/Insolvency – Band 2 Tax – Band 3 Technology, Media, Telecoms (TMT) – Band 2 Vietnam Tilleke & Gibbins’ offices in Vietnam (Hanoi and Ho Chi Minh City) earned a total of six rankings, two of which are Band 1: Corporate/M&A – Band 4 Dispute Resolution – Band 4 Employment – Band 2 Intellectual Property – Band 1 Real Estate – Band 4 Technology, Media, Telecoms (TMT) – Band 1 Cambodia, Indonesia, Laos, and Myanmar The firm’s offices in Jakarta, Phnom Penh, Vientiane, and Yangon were awarded one ranking each: Cambodia – General Business Law – Band 2 Indonesia – Intellectual Property – Band 4 Laos – General Business Law – Band 2 Myanmar – General Business Law – Band 4 Individual Rankings In the individual rankings for 2023, Tilleke & Gibbins lawyers received a total of 30 individual rankings—including seven individuals who are newly ranked this year. The ranked practitioners are recognized in 10 practice areas: Aviation: John Frangos (Thailand) Competition/Antitrust: Nutavit Sirikan (Thailand) Corporate/M&A: Charunun Sathitsuksomboon (Thailand), Chuyen Hong Huu Le (Vietnam), Cynthia M. Pornavalai (Thailand), Kien Trung Trinh (Vietnam) Dispute Resolution: Thawat

October 6, 2022

Managing IP Lists Two Tilleke & Gibbins Attorneys as Rising Stars

Managing IP magazine has released their 2022 list of Rising Stars, and the new edition of the rankings includes two Tilleke & Gibbins intellectual property attorneys: Ploynapa Julagasigorn, a senior associate in the firm’s Bangkok office, and Sokmean Chea, an associate in the Phnom Penh office. Ploynapa is one of only six rising stars listed for Thailand, and Sokmean is one of only two in Cambodia. The rankings are a high-profile reflection of Tilleke & Gibbins’ depth in intellectual property practice across the region. These rankings recognize the best up-and-coming intellectual property practitioners in private practice who have contributed to the success of their firms and clients, based on feedback from clients and peers in the markets and on the work submitted by the firm during the annual research process. Although primarily focused on an individual’s contributions and expertise, the researchers also take into account activities in the intellectual property legal community. Managing IP magazine is a market-leading publication that provides its reader base with the latest developments in IP from around the world. Each year, the magazine updates its flagship global directory of IP firms, IP Stars, and it routinely recognizes Tilleke & Gibbins as one of the top-performing intellectual property firms in Asia. To browse the full rankings, please visit the IP Stars website.

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