Satyapon Sachdecha

How has your 10-year-strong position as vice president of the AIPPI in Thailand and five-term seat as president of the country’s IP Association contributed to your overall professional development?

Serving as vice president of the AIPPI and president of the IP Association for so long was a distinguished honour. I am extremely grateful to my fellow lawyers and the esteemed members for having trust and faith in me. Representing Thailand at international forums while managing domestic affairs did pose challenges but was exhilarating nonetheless. My tenure in these positions has helped me immensely to grow as a leader and practitioner. 

They provided me with a valuable platform to actively address my peers’ concerns and interests, as well as understand international policies on IP protection and work towards developing and strengthening regulations in Thailand. It was also exciting to meet with IP professionals, business owners, government authorities and academics to understand firsthand their concerns about IP protection and work towards a shared goal of a strong regime in Thailand. 

Big events (eg, the 2024 Olympics, UEFA Euros 2024) are taking place this year, with counterfeiting around these expected to surge. As an anti-counterfeiting expert, how can brand owners prepare and mitigate this?

When global international sporting events take place, there is a high risk of counterfeiting activities involving fake merchandise – clothing or sporting equipment – both in retail markets and on e-commerce and social media platforms. Another issue is the illegal third-party streaming of these events, which infringes copyright. 

Brand owners must be extra vigilant as these events approach, carefully reviewing their IP portfolios, strengthening trademark protection and working closely with enforcement authorities in the physical and digital arenas to ensure that fakes do not flood the market. They should also be prepared to send take-down notices to online platforms illegally streaming the events, block URLs if possible and monitor social media for any infringing activities. 

What has been your most memorable case to date, and what makes it stand out?

In my nearly four-decade-long career, I’ve had the honour of handling several memorable cases. If I must choose one, it would be my first-ever IP case involving a contentious trademark matter. I represented a US client in filing a cancellation action in court against a Thai national that had registered an identical version of the client’s trademark in bad faith. During litigation, the registrant agreed to transfer the trademark for minimal compensation, which the client was happy to accept. 

This was the earliest case of my professional career that gave me a glimpse of what would follow in the next 40 years and strengthened my resolve to fight for the IP holders’ rights and protect their interests in Thailand.    

You previously said that the biggest challenge that rights holders face in Thailand is the country’s conservative examination practices. If you could change anything about Thailand’s prosecution regime, what would it be and do you think it is likely to happen?

Though some issues persist, I am happy to say that examination practices are improving, especially with the launch of the Examination Guidelines. Recruitment and training of new registrars – to increase the workforce and reduce the burden on existing registrars, especially in the Madrid Department – would be a welcome step forward and I’m sure the Thai Trademark Office is working on it.

However, I feel that Thailand could take a leaf out of the books of more developed jurisdictions in more liberal examination of distinctiveness. Brand owners frequently raise concerns about facing more stringent objections in Thailand compared to other countries due to its conservative approach and strict interpretations, which results in their applications getting rejected and increases prosecution costs.

What aspects of your work do you enjoy most, and why?

It would be difficult to choose any single aspect as I truly cherish every facet of the work. If I must choose, it would be enforcement work. Counterfeits in the market is a serious threat, not only to the economy but to the public’s health and safety, which is why I am extremely keen on having a strong enforcement team. 

My firm is one of the few in Thailand to have an in-house enforcement team. Our work in this sector has made us one of Thailand’s most successful firms in IP enforcement. Removal of hazardous fake goods and preventing them from entering the market are the aspects I enjoy the most as it both protects clients’ IP rights and safeguards consumers and the general public.