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Somboon Earterasarun

Partner

Biography

Somboon Earterasarun is a partner in Tilleke & Gibbins’ regional intellectual property (IP) group, handling a diverse range of IP matters across Southeast Asia and beyond. He is an expert in formulating strategies for the successful management of global trademark portfolios as well as employing customized techniques for protecting and enforcing clients’ trademark rights on a global basis. Somboon also specializes in international trademark registration, trademark licensing and commercialization, assignments, copyright recordal, software recordal, and distributorship contracts.

Somboon has long been recognized as one of the region’s leading IP practitioners. He was named one of Asia’s top 40 lawyers under 40 by Thomson Reuters publication Asian Legal Business in 2015 and is consistently ranked as a leading IP lawyer in Southeast Asia by legal directories such as Chambers Asia Pacific (2023-), IAM Patent (2016-), IAM Strategy (2023-), Legal 500 Asia Pacific (2017-), World IP Review (2016-), and World Trademark Review (2015-), among others.

Somboon represents several Thai conglomerates in managing and protecting their trademarks in both domestic and overseas markets, and he also devotes much time to teaching Thai entrepreneurs about the importance of IP rights. Somboon is an active member of the Intellectual Property Association of Thailand (IPAT), the Association of European Trade Mark Owners (MARQUES), the ASEAN Intellectual Property Association (AIPA), and the Asian Patent Attorneys Association (APAA), and is a qualified patent agent certified by Thailand’s Department of Intellectual Property.

Experience

  • Managing the global trademark portfolio for one of Thailand’s leading beverage producers, including handling trademark registrations, oppositions, and cancellations in 40 countries worldwide.
  • Appointed by Tao Kae Noi, a Thai publicly listed producer of crispy seaweed and other snacks, to manage its global IP portfolio (i.e., trademarks, invention patents, and design patents) across 10+ countries.
  • Assisted a Thai media company with carrying out global IP due diligence ahead of its acquisition of a global beauty pageant brand.
  • Assisted a multinational company with a complex IP transaction involving the intracompany transfer of more than 1,000 IP assets (300 trademarks, and 700 copyrights and industrial designs).
  • Successfully represented Formula One (F1) Group in a rare cross-class trademark opposition against a potential infringer in Thailand that had filed for registration of a mark that was confusingly similar to our client’s mark and name.
  • Represented a food manufacturer in carrying out an international raid in Laos against trademark violations by local retailers and coordinated with local authorities to carry out the raid, seize all counterfeit products, and destroy them.
  • Secured a preliminary injunction against an infringing trademark in Israel at the Israel Court of First Instance.
  • Secured a preliminary injunction order by the Düsseldorf Court to prohibit the use of the infringing mark at the ANUGA Fair in Cologne, Germany.
  • Collaborated with government authorities to seize two containers of infringing products at the Ho Chi Minh port.
  • Overcame a U.S. Trademark Examiner’s refusal to register the clients’ mark.
  • Registered a famous Thai beer brand as a well-known trademark in Thailand.
ABOUT Somboon

Languages

    Thai

    English

Education

    LLB, Chulalongkorn University

    Master of Management, Chulalongkorn University

    BA, Thammasat University

Insights

Awards & Rankings

Other Professionals