Siam Premier | Edward J. Kelly

Senior Counsel - LL.M (International Legal Studies), Juris Doctor

The Offices at Central World, 26th Floor, 999/9 Rama 1 Road, Pathumwan
BANGKOK 10330
Tel +66 2646 1888 ext: 1005 Fax +66 2646 1919
Email Edward.k@siamlaw.co.th
LinkedIn Thai IP Guy

Edward Kelly joined Siam Premier in 2010 as Co-Head for the Intellectual Property and IT & Telecom departments after having led practice groups at several renowned Law Firms throughout the world.

Edward Kelly is a valuable member of the Siam Premier Team with expert knowledge in Intellectual Property Enforcement (Foreign), Intellectual Property Dispute Resolution (Foreign), Transactional IP (Licensing, Tech Transfer and Franchising), Government Relations and Law Enforcement Training (Foreign), Pharmaceutical Law and Regulations (Foreign), Cross-Border Intellectual Property Consultation and Private Client Services.

Edward Kelly is recognized as a leading lawyer in his fields by publications such as Chambers Asia, Thomson Reuters, AsiaLaw Managing Intellectual Property and Asia Pacific Legal 500.

Recent Experience

Edward Kelly is an experienced litigator with a strong focus on copyright, trade marks, patent and confidentiality related disputes. He also provides IP and IT related advice to a range of clients including international conglomerates, SMEs, government-linked organizations, media owners, educational institutions, copyright licensing organizations and providers of electronic commerce and internet services.

In one high profile matter, he was the lead counsel in defense of Carlsberg A/S in UNCITRAL International Commercial Arbitration involving a US$500 million claim for alleged wrongful termination of license agreements. Edward was also lead external counsel for PReMA, the Pharmaceutical Research and Manufacturing Association in Thailand, advising PReMA on pharmaceutical and Free Trade Agreement legal issues, including patent, compulsory license, data exclusivity and market access issues. The Association of 43 member companies was founded as a non-profit, non-government organization to represent Thailand’s pharmaceutical manufacturers and associated companies.

For trademark disputes, Edward was lead counsel for Daimler AG in enforcement of Mercedes Benz trademarks in a criminal prosecution of a manufacturer of counterfeit automobile parts. Police raids resulted in seizures of manufacturing equipment, and more than 50,000 fake parts and accessories valued by law enforcement officials at more than US$25 million. Edward was also lead counsel for Yamaha Motor Corporation in enforcement of industrial design rights and invention patents in a criminal prosecution of a BOI promoted manufacturer of infringing motorcycles. Police raids resulted in seizures of more than 1000 fully assembled motorcycles valued at more than US$1 million.

Notable Cases & Transactions

Manages the prosecution and enforcement of the trademark portfolios of brand owners such as Levi Strauss & Co., Oakley, Luxottica, SC Johnson & Son, Inc., Diageo and Monster Cable.
Delivered the Keynote Address "Blood Money: The Steep Human Cost of the Counterfeit Culture", at the International Anti-Counterfeiting Coalition's (“IACC”) Annual Fall Conference, Dallas, Texas.
Lead counsel in defense of Carlsberg A/S in UNCITRAL International Commercial Arbitration involving a US$500 million claim for alleged wrongful termination of license agreements.
Lead external counsel for PReMA, the Pharmaceutical Research and Manufacturing Association in Thailand, advising PReMA on pharmaceutical and Free Trade Agreement legal issues, including patent, compulsory license, data exclusivity and market access issues. The Association of 43 member companies was founded as a non-profit, non-government organization to represent Thailand’s pharmaceutical manufacturers and associated companies.
Lead counsel for Yamaha Motor Corporation in enforcement of industrial design rights and invention patents in a criminal prosecution of a BOI promoted manufacturer of infringing motorcycles. Police raids in resulted in seizures of more than 1081 fully assembled motorcycles valued at more than US$1 million.
Lead counsel for Daimler AG in enforcement of trademarks in a criminal prosecution of a manufacturer of counterfeit automobile parts. Police raids resulted in seizures of manufacturing equipment, and more than 50,000 fake parts and accessories valued by law enforcement officials at more than US$25 million
Lead counsel for PReMA (an industry group including Pfizer, AstraZeneca, Novartis, Bristol Myers Squibb, GSK, sanofi-aventis, Abbott Laboratories and Merck & Co.), among others, in planning and execution of a defensive strategy to respond to the Royal Thai Government’s Ministry of Public Health policy of imposing compulsory licenses on patented medications. Developed and implemented enforcement of invention and process patents for several blockbuster drugs against manufacturers and distributors of infringing copy drug products.
Lead Counsel for Guccio Gucci SpA in 2008 in negotiating settlement of dispute over termination of Franchise Agreement in Thailand. Also planned and executed a criminal raid of a wholesale supplier of “super fakes” in the notorious Patpong market in Bangkok.
Lead counsel for Philip Morris International in coordinating an international criminal inquiry of the leader of an organized criminal syndicate known as the "Bandidos", operating from Pattaya, Thailand, arresting Mr. Robert Philip Johns on three occasions in Thailand and planning his eventual extradition to the US to face civil and criminal proceedings in the Southern District of New York.
Established a specialized High-Tech Enforcement Team that has been in the forefront of representing software developers in protecting copyrighted software code through vigorous enforcement actions against manufacturers, retailers and end-users of pirate unlicensed software. Between 2003-2008, secured more than US$5 Million in fines and settlements for copyright owners as a result of raids and prosecutions of retail and institutional end-user pirates, including a record US$450,000 settlement for one software developer.

Publications/Professional Lectures

Edward Kelly is the author of numerous book chapters, guides, articles, news releases and white papers on organized crime and IP issues, and is a popular speaker at international conferences, symposia, universities and professional training programs. A complete list of Edward's published works, presentations and interviews are available upon request.

Awards and Honors

Identified as pre-eminent practitioner in the field of patent law in the Guide to the World's Leading Patent Law Practitioners, in association with Managing Intellectual Property.
Identified as pre-eminent practitioner in the field of trademark law in the Guide to the World's Leading Trade Mark Law Practitioners, in association with Managing Intellectual Property.
Identified by the AsiaLaw Leading Lawyers Survey as one of Asia's leading business lawyers in the area of Intellectual Property.
Featured as a leading lawyer in intellectual property in Chambers Asia.
Recipient of the Victor J Garo Award for Public Service from the Boston University School of Law October 7, 2009.
Contributing Author: "Inside the Minds: IP Strategies for Asia and Australia" published by Reuters/Aspatore.
Member Association for Intelligence Officers.
International Chamber of Commerce: Counterfeiting Intelligence Bureau (ICC-CIB).
Appointed Chair, American Chamber of Commerce Tax & Legislation Committee, 2006.
Member American Society of Law, Medicine & Ethics 2006.
Fellow, Center for International Legal Studies.

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