Domnern Somgiat & Boonma Law Office Ltd

The firm: Domnern Somgiat & Boonma was established by Ina Wilhelmina Jorgensen. Born in Bangkok on 14 November 1905, Ina was the youngest of the four children of Carl and Wilhelmina Jorgensen, a Danish couple living in Thailand, which was then still known as Siam. At the age of 23 she joined the law firm of Tilleke & Gibbins as secretary to the partners, eventually becoming the office manager. In 1931 Thailand’s first Trade Marks Act was introduced, and the firm actively engaged in handling trade mark prosecution on behalf of its clients. When the Second World War broke out in 1939 and subsequently affected Thailand, the partners, all British subjects, dispersed, leaving Ina to look after the interests of the firm.

After the war ended in 1945, Brigadier Victor Henry Jaques, the last surviving partner, returned to Thailand to resume the law practice of the firm. On his retirement in 1947, he sold the name and part of the business to others and assigned the trademark side of the business to Ina, who then named it ‘Jorgensen & Co.’ At the outset, Brigadier Jaques still worked in partnership with Ina. When he died a few years later, she continued to keep the firm operating, serving clients with a small staff of about five people. The Trade Marks Act was at that time approaching its twentieth anniversary. Ina then enlisted Domnern Garden of Harvard Law School who had been admitted to the Thai Bar. He in turn brought in former Registrar of Trademarks Somgiat Sitthisiri and later Chulalongkorn Law School and Columbia Law School graduate Boonma Tejavanija. Ina retired in 1981 at the age of 76 and the firm became Domnern Somgiat & Boonma a few years later.

When Thailand’s first Patents Act was introduced in 1979, the firm began practicing patent law. It employed a panel of chemists, engineers and experts from other scientific fields, most of whom were connected with a university. Through its foreign associates, it also began handling trade mark and patent work outside Thailand, especially in Indo-China and other South-East Asian countries.

Areas of practice: Domnern Somgiat & Boonma is a law firm specialising in intellectual property laws which provide both IP prosecution and IP enforcement services. It currently has six partners consisting of five attorneys-at-law admitted to the Thai Bar, namely Rutorn Nopakun, Chakrapat Mongkolsit, Apiwatt Kongsoowan and Nathapong Tongkaew, and a patent attorney with both legal and technical backgrounds, Prabjote Busdee. It has 136 full-time members (including the partners) and 42 outside experts from various technical fields with whom it consults regularly on technical issues. About 12.5% of trade mark applications filed in Thailand and 50% of patent applications filed by foreign companies in Thailand are handled by the firm. The firm also regularly handles trade mark and patent work through associates in Vietnam, Laos Cambodia and Myanmar.

The firm can arrange police raids against manufacturers, distributors and retailers of counterfeit goods and is capable of handling criminal and/or civil proceedings in court. For police raids, the firm has a team consisting of two-four raid co-ordinators. It also has a good relationship with the Economic Crime Division (ECD, the police unit specifically charged with enforcing IP rights), and the Department of Special Investigation (DSI, a non-police law enforcement agency charged with handling, among other things, large, high-profile IP enforcement cases).

The firm also has experience in handling customs seizure cases. Its customs coordinators regularly respond to requests from the Thai Customs Department to inspect seized goods believed to be counterfeit, and, if possible, file formal complaints against importers and/or exporters.

The firm has an IP litigation team consisting of four experienced attorneys at law specializing in handling court cases relating to IP issues.

In addition to IP, the firm has expanded to other fields including corporate, contract, telecommunication and labour laws.