Satyapon Sachdecha

You are hailed as a pioneer in anti-counterfeiting and brand enforcement in Thailand, and offline counterfeiting is on the rise again as the effects of the pandemic ease. What are three initiatives your firm has taken to combat this issue cross-industry?

Unfortunately, the post-pandemic phase has indeed led to a continuous rise in offline counterfeiting. Our firm has consequently intensified our investigations and raid actions with the enforcement authorities. As a firm, we stand out in our ability to target the source and weed out the root of the cause instead of simply catching the small fish.

We are also aggressively registering our clients’ brands with Thai Customs. With the new regulations entering into force last year, all brands must be re-registered to continue enjoying border protection. The Customs recordations have been particularly helpful with the seizure of goods on the border, preventing them from entering the country.

Finally, we are continuing with our extremely successful offline-to-offline projects by uncovering online infringers, conducting trap purchases to secure evidence of infringing goods and taking strong legal actions against them.

As managing partner of your firm, what could the IP industry be doing to improve opportunities, hiring processes and diversity?

The IP industry can play a key role in promoting equal opportunities and diversity. Just as any person can create intellectual property and obtain protection for it, any person should also be able to work in the industry. The Thai IP industry is proud to have a large number of women and LGBTQ+ community members as IP practitioners, as well as government officers.

As a managing partner, I am conscious of my responsibility to provide opportunities to underrepresented individuals and promote diversity. Women comprise over half of the staff at our firm, and we also have several members from the LGBTQ+ community. I strongly believe that knowledge, skills as a legal practitioner and enthusiasm to work hard are the highest priorities, regardless of gender, sexual orientation or ethnicity.

You sat on the IP Law Development committee for the Thai Ministry of Commerce and helped to draft the current Trademark Act. How do you predict future legislative developments to influence the Thai IP landscape in the next 12 months?

I do not foresee any dramatic changes in the Thai IP landscape within the next 12 months. The next general elections will be held this May, after which the new government will form. In all likelihood, we will see legislative developments, if any, perhaps after one to two years.

Last year in Global Leaders you spoke perceptively about the impact of the MetaBirkin case. Now that the decision has been issued, what broader impact do you think it will have in relation to protecting brands in the virtual space, and how likely do you think it is that Asian jurisdictions will follow the US courts’ lead?

I believe the MetaBirkin decision will likely lead to brands paying more attention to protecting their intellectual property in the virtual space to ensure that third parties are not misusing the space to gain unfair commercial profit or mislead the general public. This is still uncharted territory, and future developments of IP protection in the digital space will be followed worldwide.

I do not expect the Thai courts to follow the US courts’ lead just yet. Rights granted to a registered owner in Thailand are strictly limited to goods registered under a trademark, and an infringement claim can only be raised if an unauthorised use of the mark is made in respect of those goods. Therefore, unless a brand owner specifically registers a trademark for such virtual assets, they cannot raise an infringement claim in the first place.

What are the biggest challenges rights holders face when seeking protection in Thailand, and what advice would you give to them?

The biggest challenge rights holders face is Thailand’s conservative examination practices, which frequently lead to objections for trademark applications, mostly for distinctiveness and specifications. I have seen several cases where trademarks that were allowed registration in foreign jurisdictions face refusals from the Thai Trademark Office. Eventually, applicants have to end up litigating, which leads to higher registration costs.

My advice to rights holders seeking protection in Thailand is to have a comprehensive pre-filing strategy from experienced legal professionals so that they limit the number of obstacles faced during prosecution.