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

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

April 1, 2022

Thailand Legal Basics

Thailand Legal Basics, a valuable primer for foreign investors, explores all aspects of living and doing business in Thailand. Written by specialists at Tilleke & Gibbins in Bangkok, it is the only comprehensive English-language guide to the Thai legal system with a focus on the concerns of foreign business and investment.

March 14, 2022

The 2022 Amendment of Thailand’s Copyright Act: The Good, the Bad, and the Backstory

The copyright law currently in effect in Thailand is the Copyright Act B.E. 2537 (1994), which came into force in March 1995. After 20 years, a new amendment came into effect in August 2015, with a focus on updating the law for the digital age, followed by a further amendment that became effective in March 2019 to comply with the Marrakesh Treaty providing exemptions to copyright infringement for people with disabilities. Recently, to comply with the World Intellectual Property Organization Copyright Treaty (WCT) and update practices in combating online infringement, the Thai Copyright Act has been amended once again. This article will explore the backstory behind this amendment, highlight the law’s successes and potential areas of concern, and explain what copyright owners, practitioners, and—most importantly—internet service providers (ISPs) should be aware of in order to comply with this law, which was published in the Government Gazette on February 24, 2022, and will become effective on August 23, 2022. The Backstory Despite the modernizing focus of the 2015 amendment, in recent years Thailand recognized the necessity of strengthening copyright protection and modernizing the law further to cope with online infringement problems fueled by today’s rapid technological change. Previously, the Copyright Act B.E. 2537 (1994), as amended in 2015, provided a specific mechanism to solve online copyright infringement. This mechanism, which appeared in Section 32/3 of the law, differed from the clearly defined notice-and-takedown system favored in several other countries by relying on the courts to resolve copyright infringement matters in relation to the provision on ISP liability and safe harbors. As the law did not include adequate notification procedures or rapid dispute resolution mechanisms, the implementation of Section 32/3 became impractical. In addition, the definition of an ISP was broad, so “mere conduit” (or intermediary) ISPs would often receive court

Awards & Rankings

September 19, 2022

Global IP Awards 2022: Two Firm of the Year Awards for Tilleke & Gibbins

Tilleke & Gibbins was awarded Firm of the Year honors for Thailand and Vietnam at the annual Global IP Awards, hosted by Intellectual Asset Management and World Trademark Review magazines. The Global IP Awards, first launched in 2019, recognize the outstanding achievements of law firms and attorneys in IP litigation, prosecution, and transactional work. The awards were announced at a ceremony in London on September 15. With a focus on trademark and patent work, the awards for Tilleke & Gibbins’ intellectual property practices in Thailand and Vietnam reflect the firm’s regional dominance in these fields. For more details on the awards, and to view a full list of this year’s winners, please visit the Intellectual Asset Management website.

September 19, 2022

Tilleke & Gibbins’ Regional Practices Stand Out in Asialaw Profiles 2023

In the recently released 2023 edition of the annual Asialaw Profiles guide, Tilleke & Gibbins dominates the rankings with a slate of recognitions that confirms the strong reputation of the firm’s various regional practices. Asialaw Profiles 2023 rates top domestic and international firms operating in Asian jurisdictions and headquartered in Asia, looking at firms’ performance and client service in both legal practices areas and various industries. In these detailed and comprehensive guide to the services of leading Asian law firms, Tilleke & Gibbins achieved a total of 45 industry and practice group rankings—20 of which are in the top tier—across Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam. Tilleke & Gibbins attorneys also received 25 individual rankings, with new recognitions for Linh Thai Mai Nguyen for intellectual property in Vietnam and Onunya Chanpen for capital markets in Thailand. In Thailand, Tilleke & Gibbins continues to be the only firm ranked in all 18 possible categories. The firm is also ranked in all available categories in Cambodia, Laos, and Myanmar. For more details and to browse the full rankings, please visit the Asialaw website.

August 26, 2022

Tilleke & Gibbins Retains Strong Regional Rankings in IFLR 1000 2023

International Financial Law Review (IFLR) has released the final installment of the 2023 edition of its annual IFLR1000 rankings of leading law firms in domestic and cross-border financial and transactional matters across the globe. Tilleke & Gibbins’ performance was consistent with last year’s results, as for the third consecutive year the firm’s regional corporate and commercial team was awarded 15 distinct practice rankings across Cambodia, Laos, Myanmar, Thailand, and Vietnam. Tilleke & Gibbins was ranked in the following practice areas: Thailand—Banking and Finance, Capital Markets, Mergers and Acquisitions, Project Development, Restructuring and Insolvency Vietnam—Banking and Finance, Mergers and Acquisitions, Project Development Myanmar—Financial and Corporate and Project Development Cambodia—Financial and Corporate, Project Development Laos—Financial and Corporate, Project Development In addition to the firmwide rankings, Tilleke & Gibbins’ representation in the individual has doubled, with five more attorneys listed in addition to the five retaining their rankings from previous years. The following 10 lawyers were recognized with individual rankings for their expertise in financial or transactional matters in their respective jurisdictions: Charunun Sathitsuksomboon – Thailand – M&A Dino Santaniello – Laos – Corporate and M&A David Mol – Cambodia – Insurance, Pharmaceuticals and Life Sciences Derrick Khoo – Myanmar – Financial and Corporate Jay Cohen – Cambodia – Energy, Aviation Joseph Tomkiewicz – Thailand – Coroporate and M&A, Project Development Onunya Chanpen – Thailand – M&A, Project Development Saithong Rattana – Laos – Project Development, M&A Santhapat Periera – Laos – Banking, Energy, M&A Yuwadee Thean-ngarm – Myanmar – Banking and Finance, M&A IFLR1000 ranks the world’s leading corporate and financial law firms, covering the core transactional practice areas of Banking and Finance, Capital Markets, Mergers and Acquisitions, Project Development, and Restructuring and Insolvency. Please visit the IFLR1000 website to review the full rankings for Cambodia, Laos, Myanmar, Thailand, and Vietnam.

July 4, 2022

Strong Regional Performance for Tilleke & Gibbins in Managing IP Patent Survey

Managing IP magazine, which has been rolling out its highly regarded IP Stars rankings in stages this year, recently released the results of its patent survey, and Tilleke & Gibbins earned high rankings across key Southeast Asian jurisdictions: Thailand – Tier 1 for the 20th consecutive year Vietnam – Tier 1 for the 8th consecutive year Indonesia – Tier 2 for the 3rd consecutive year The rankings show not only the firm’s excellence in patent work across the region but also its consistency—two decades in Tier 1 for Thailand, with the firm’s Vietnam practice getting close to a decade of its own. Even the relatively new Indonesia operations have been recognized in each of the past three years, and in this latest edition only two firms in Indonesia are ranked above Tilleke & Gibbins. Managing IP does not yet provide patent rankings for Tilleke & Gibbins’ other jurisdictions, Cambodia, Laos, and Myanmar. The trademark survey is a part of IP STARS, MIP’s specialist guide to the world’s leading intellectual property firms and practitioners. For more information and to browse the full copyright rankings, please see the IP STARS website.

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