“Flawless cooperation between six regional offices ensures a consistently top-class service across the region” — Intellectual Asset Management
We help creators strategically position, protect, and profit from intellectual assets in diverse markets worldwide. Our success on our clients’ behalf has led to global recognition as a leading intellectual property practice by such surveys as Asialaw Profiles, Chambers Asia Pacific, The Legal 500 Asia Pacific, Managing Intellectual Property, Practical Law Company, World Trademark Review, Asia IP, Asian Legal Business, and others.
We are versatile practitioners—well-educated in the overlapping fields of science, technology, and the law by top universities and real-world practice in one of the toughest IP regions in the world. Our IP group includes lawyers and patent agents with backgrounds in chemistry, biology, computer science, food science, materials science, and physics; support personnel including investigators and government/police liaisons; and technical specialists in various scientific fields, on an as-needed basis.
Our practitioners have extensive experience in IP licensing and contracts, including agreements relating to franchising, licensing, distributorship, technology transfer, confidentiality, joint venture, and collaboration.
In addition, the firm’s expertise extends to IP due diligence issues, such as searches for infringement, audits to identify and protect IP assets including trade secrets, advice to avoid disputes when terminating dealers or distributors, consents and assignments for IP created by employees or contractors (work for hire), valuation of IP assets, IP risk assessments and management, and freedom-to-practice investigations.
In collaboration with our technology group, we provide services related to the clearance and licensing of intellectual property as it relates to film, television, radio, and internet content.
EXPERIENCE
- Assisted an American oncology treatment technology company with IP and consultancy service licensing of their groundbreaking proton therapy diagnosis and delivery system to a Thai medical device company, primarily for use in oncology treatment centers in Thailand. Once deployed, the technology could potentially contribute to significant improvements in cancer diagnosis and treatment in the nation.
- Represented a major pharmaceutical company by liaising with the Thai FDA on marketing compliance issues, verifying that the client’s marketing activities were in compliance with the complex regulations governing pharmaceutical practice in Thailand, and preventing and mitigating potential risk and loss to the client.
- Handling the entire trademark and patent portfolio in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam for one of the world’s largest pharmaceutical and life science companies, including the transfer of the entire agribusiness portfolios of one of their competitors following their acquisition of the competitor in 2018.
- Assisted hundreds of global franchisors on localizing their franchise agreements and facilitating their market entry into Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam, including many of the world’s best known convenience store, food and beverage, and retail brands.
- Appointed by the chemical flagship subsidiary of one of Thailand’s largest conglommerates as the sole firm to handle the filing of recordals of assignment and name changes after the purchase of a massive patent portfolio from an affiliated company in the US.
Tilleke & Gibbins continues to lead the way in developing new IP enforcement strategies. Our services in this area include investigation, staff training, market surveys, comprehensive turnkey anticounterfeiting and antipiracy campaigns, preventive strategies, civil and criminal action, police/excise/customs raids and seizure actions, negotiation and dispute resolution, mediation, arbitration, public relations/press management, government lobbying, law enforcement liaison, and cancellations.
Our investigators are constantly in the field, on the lookout for infringements, and employ creative strategies to track down traders, distributors, and manufacturers of infringing and counterfeit goods.
EXPERIENCE
- Tilleke & Gibbins regularly organizes product identification training sessions across Southeast Asia for our IP practitioners and clients to come together and train government officers on how to differentiate genuine products from counterfeit products for some of the world’s leading brand owners. Through these events, we help support educational programs, enhance border control measures, strengthen IP protection for our clients, and build collaborative relationships with officials from the operational to the executive level.
- Assisted a leading manufacturer of household and oral care products in taking action against imported shipments of potentially dangerous counterfeit healthcare products from China into Laos, Thailand, and Myanmar, working in collaboration with the customs department of each country to track and seize the shipments.
- Assisted a world-renowned coffee company in the client’s project to eliminate all online counterfeit merchandise in Cambodia, Laos, and Thailand. We regularly conduct comprehensive online market survey investigations, identify infringing online sellers, and subsequently send cease-and-desist notices, initiate raid actions in cooperation with local authorities, and send take-down notices for websites containing infringing content in an effort to entirely remove counterfeits from the market.
- Represented a client in a landmark website takedown request, based on online trademark infringement, made directly to Thailand’s Department of Intellectual Property under the Computer Crimes Act. This was the first request of its kind made to the DIP in Thailand, and the successful takedown opened an efficient new avenue for fighting online infringement in the jurisdiction.
- Acted for a leading agricultural machinery and product manufacturer in coordinating a raid action with the Cambodian Counter Counterfeit Committee (CCCC), which ended up being one of the largest raids in Cambodia to date in terms of number of products seized—upwards of 30,000 counterfeit products infringing our client’s trademarks.
Our IP litigation team handles a full range of criminal and civil IP disputes, including disputes related to patents, trademarks, copyrights, trade secrets, trade names, infringement, invalidity, cancellation, appeals of decisions by the trademark and patent offices, and other commercial disputes involving IP assets such as franchising and distributorship. Tilleke & Gibbins has successfully secured rare Anton Piller orders and emergency injunctions from Thailand’s Central Intellectual Property and International Trade (IP&IT) Court.
EXPERIENCE
- Won a landmark ruling from the Thai Central Intellectual Property and International Trade (IP&IT) Court for a leading Japanese automotive company in a design patent infringement case involving multiple infringing companies. This challenging case required the combined legal efforts of our IP litigation, enforcement, and in-house investigation teams in filing the case, requesting preliminary measures, liaising with authorities in raids and seizures, conducting market surveys to obtain evidence, and other work. Our teams ultimately secured a victory for our client, with the court awarding them the largest civil lawsuit compensation amount for a design patent infringement case to date in Thailand.
- Achieved a victory for a German multinational life sciences company in one of the first civil patent litigation cases in Vietnam. In the case, we brought a patent infringement charge against a local chemical manufacturer, with the court later ruling in our client’s favor.
- Represented Thailand’s largest cable and satellite television provider and sole Thai licensee of the broadcast right to the FIFA World Cup 2018 in a court case against subsidiaries of its main competitor, in complex copyright litigation relating to the broadcast of the World Cup under Thailand’s “must-carry” law. Our swift action and high-level knowledge resulted in an emergency injunction preventing the opposition parties from broadcasting the world cup through their digital channels, ceasing the infringing broadcasts early in the competition.
- Won a historic judgment from the IP&IT Court for a global technology leader against former employees who misappropriated our client’s tremendously valuable trade secret technology. In the IP&IT Court decision, our client was awarded an injunction against use and disclosure of its trade secret technologies, including machines, processes, and information. Our client also received substantial damages and recovery of legal fees amounting to over THB 52 million. The Supreme Court also affirmed the IP&IT Court’s ruling, in addition to ordering the defendants to destroy their infringing equipment and pay damages to our client.
- Assisting a major European pharmaceutical company, which discovered two locally made drugs in Vietnam contained an active ingredient in a form for which they hold an active patent. This unprecedented case marks the first time that infringement of a patented crystalline form of a compound has arisen in Vietnam; all other pharmaceutical patent disputes had concerned the patented compound itself. This is also the first patent case in Vietnam in which a foreign expert opinion was allowed to be used to support local expert opinions.
Tilleke & Gibbins handles a full range of work in relation to patents, petty patents, and designs. This includes patent and design searches, registration and prosecution of patents, petty patents, and designs throughout Southeast Asia and worldwide, recordal of changes/assignments, annuity payments, oppositions, cancellations, watch services, infringement assessments, freedom-to-operate analyses, validity and invalidity assessments, and registration of patent license agreements.
With a rise in litigation and invalidation actions in the region—some based on issues related to translations and terminology—it is increasingly important that patent translations be of the highest accuracy and in accordance with local technical terminology and conventions. In this regard, Tilleke & Gibbins has built an in-house translation team featuring experienced translation managers and technical translators. Our technical translators include professionals with engineering (mechanical, computer, electrical, etc.), medical, biology, and pharmacy degrees. Additionally, our translation process includes careful review by translation managers and patent attorneys prior to filing.
EXPERIENCE
- Retained to assist world-leading Japanese automobile and motorcycle manufacturers and distributors to draft new patent specifications and handle the filing of several of international patent applications under Patent Cooperation Treaties.
- Handled a significant project for a major industrial group in Thailand involving the change in ownership of the firm’s patents. We verified 205 patents and filed recordals for 150 patent applications pertaining to assignment, merger, change of legal entity, and change of name and address.
- Appointed to represent the Thai National Innovation Agency, under the Ministry of Science and Technology, in their Mind Credit funding program to protect the intellectual property of Thai SMEs. We are currently assisting a number of fund recipients in registering patents across the region.
- Representing one of the world’s leading chemical manufacturers on patent matters in Indonesia, in addition to managing a portion of the client’s IP portfolio in the region.
- Handling the entire trademark and patent portfolio in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam for one of the world’s largest pharmaceutical and life science companies, including the transfer of the entire agribusiness portfolios of one of their competitors following their acquisition of the competitor in 2018.
Leading global companies rely on Tilleke & Gibbins for their trademark needs across Southeast Asia. Our firm manages one of the largest trademark practices in the region, with over 100,000 active trademark matters for more than 14,000 brand owners. Each year, we file an average of over 7,500 trademark applications in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam. We file directly—not through agents.
Our firm currently represents more than half of the Fortune Global 500 across a range of industries, including automotive, consumer goods, energy, fashion, food and beverages, hospitality, life sciences, luxury goods, media, and technology.
When you instruct Tilleke & Gibbins to manage your trademark portfolio, you can expect comprehensive services tailored to your specific needs, a strong team with deep local knowledge of the trademark systems in each country, and an integrated approach using modern technology.
EXPERIENCE
- Handling over 100,000 active trademark matters in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam, for more than 14,000 brand owners, and directly filing an average of 7,500 new applications in each jurisdiction.
- Represented a Japanese pharmaceutical company, a Korean automotive manufacturer, a Finnish technology company, and a Japanese consumer goods company in registering their sound marks after a ministerial regulation allowed for such registration in late 2017, and was the first law firm in Thailand to successfully register such marks.
- Conducted international registration of a trademark shortly after the Madrid Protocol became effective in Thailand in late 2017, and was the first law firm in Thailand to register through the Madrid route.
- Became the first firm to successfully re-file a trademark during the soft-opening period of the Myanmar Department of Intellectual Property (DIP) under the country’s new trademark law.
- Handling the entire trademark and patent portfolio in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam for one of the world’s largest pharmaceutical and life science companies, including the transfer of the entire agribusiness portfolios of one of their competitors following their acquisition of the competitor in 2018.
- Appointed to represent the Thai National Innovation Agency, under the Ministry of Science and Technology, in their Mind Credit funding program to protect the intellectual property of Thai SMEs. We are currently assisting a number of fund recipients in registering their trademarks across the region.
- Secured the first ever registrations of Geographical Indication (GI) in Laos–the first for “Champagne” and the second for “Scotch Whisky” on behalf of trade organizations representing the industries that produce the products.
- Acting as the sole external IP firm for a leading global manufacturer of energy drinks, which has trademarks registered in over 150 countries. We manage the client’s full range of trademark needs, including registrations, renewals, recordals, assignments, license agreements, and enforcement measures. We continually assist the client in its goal of becoming a global brand by effectively managing their global IP portfolio, and ensuring strong protection as the brand grows internationally.
- Successfully registered a three-dimensional mark used as jewelry packaging for a French luxury goods conglomerate. The registration of three-dimensional marks in Vietnam is quite rare, and extensive evidence of fame and use is required. Our work may pave the way for more 3-D trademarks to secure registration in Vietnam, and has also contributed to the government’s understanding of 3-D marks
