THAILAND Law and Practice Contributed by: Tirayu Songdacha, Nutchaya Khayan, Piyachat Suwanwihok and Lalita Sriboonruang, MSC International Law Office
Dealing With IP Issues in the JV Agreement The parties shall expressly agree on the ownership, usage rights, and management of IP. In the event of any dispute or issue arising, the enforcement shall be governed by the terms mutually agreed upon by the parties regarding IP management, dispute resolution, and the governing law. In the absence of such agree - ment, the matter shall be governed by the relevant laws applicable to the subject matter. Specific Considerations for the Transfer of Intellectual Property to or From Foreign Entities Thai intellectual property law permits the free transfer of IP rights between foreign and domestic entities, provided that such IP remains within the term of pro - tection prescribed by law. IP registered in a foreign jurisdiction will not be protected under Thai law unless it has been registered with the Department of Intel - lectual Property (DIP) of Thailand. However, in recognition of the importance of trade mark protection and registration, Thailand has acced - ed to the Madrid Protocol. As a result, trade marks registered in Thailand are protected in other mem - ber countries, and trade marks registered in member countries are likewise protected in Thailand, provided that registration is carried out in accordance with the Madrid Protocol. 8.2 Licensing v Assignment of IP Rights Under Thai intellectual property law, IP such as pat - ents and trade marks may be assigned in ownership as prescribed by law, or the rights therein may be granted for use to another party. An assignment means the complete transfer of own - ership in the IP from the original owner to another person. Once the transfer is completed, the original owner no longer retains any rights over such IP. A licence means that the rights-holder grants permis - sion to another person to use the IP while ownership remains with the rights-holder. Such permission may stipulate the scope of use, duration, and territorial lim - its. Unless it is specified as an exclusive licence, the rights-holder may grant the same rights to multiple parties.
conduct is expressly approved by the shareholders’ meeting. In the event of competing business activities, mecha - nisms to manage conflicts of interest (COI) may be implemented, such as entering into a non-compete agreement, clearly delineating the scope of each par - ty’s business operations, and establishing measures to prevent the use of inside information for personal benefit. 8. IP and ESG 8.1 Ownership and Use of IP Key IP Issues That Should Be Considered When Setting Up a JV Corporate Entity When setting up an IJV, the JV participants should clearly define important terms that align with the IJV’s goals and the nature of its business activities. The key issues that the JV participants need to agree on should include at least the following. • Capital contributions involving intellectual property (IP), where JV participants may contribute IP rights as part of their investment by transferring owner - ship or licensing the IP to the IJV. • Management and protection of IP, including defin - ing who is responsible for registering, enforcing, and defending the IP rights. • Ownership of existing IP brought into the JV, as well as any new IP created during the JV’s opera - tion. • How IP will be handled if the JV ends, such as agreeing on independent valuation methods to fairly divide IP and avoid disputes after termination. Key IP Issues That Should Be Considered in Contractual Collaborations For a UJV, the JV participants should agree on key IP issues similarly to an IJV. Since a UJV does not have a corporate entity to hold IP rights, the owner - ship of the IP can be agreed to belong to any one of the JV participants or to all of them jointly. If the IP is owned jointly by all JV participants, all JV participants shall have co-use, and if there is any dispute it will be considered and interpreted under the principle of ownership.
206 CHAMBERS.COM
Powered by FlippingBook