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Thailand

Contributing firm
Tilleke & Gibbins International Ltd

Authors unregistered trademarks are afforded Border measures
Siraprapha Rungpry protection under the law. Generally In addition to pursuing a criminal or civil
and Titirat Wattanachewanopakorn speaking, both civil and criminal remedies action against infringers, trademark owners
are available for trademark owners whose may seek the assistance of Thailand’s
IP infringement has been a problem in marks are being infringed. Registered Customs to stop counterfeit goods at the
Thailand for a number of years. Despite trademarks are mainly protected under the borders. The owner of a registered
collaboration between the government and Trademark Act BE 2534 (AD 1991) as trademark has three options in detaining
the private sector, counterfeiters have amended by the Trademark Act (2) BE 2543 suspect shipments of counterfeit goods.
demonstrated an ability to adapt and evolve, (AD 2000). In addition to legal protection
thus allowing them to withstand these for trademarks registered in Thailand, the The first route is through a general
efforts at suppression. Since 2006 each year Trademark Act also provides protection for recordal or notification to the Department
over 2,000 cases – mainly relating to well-known marks. Under Thai law, of Intellectual Property (DIP). This is the
trademark infringement – have been registered trademarks receive considerably most formal of the procedures available and
brought to justice, but still large numbers of broader and stronger protection than it results in long-term cooperation between
counterfeit goods continue to reach the unregistered marks, which are protected the DIP, Customs and the brand owner or its
market and are exported to other countries. through various provisions of the legal representative. The trademark owner
Infringement activities are frequently Thai Penal Code, and the Civil and must file an application directly with the
related to other crimes, such as illegal Commercial Code. The owner of an DIP. The application will be submitted to the
immigration, child labour and money unregistered mark cannot commence competent authorities at the DIP, notifying
laundering. This results in a complex web of a legal proceeding under the Trademark the trademark registrar of the trademark
interrelated legal, economic and social Act to prevent the use of, or to recover owner’s request to prohibit the
problems. damages for, infringement of unregistered importation/exportation of the products
marks. Only passing off actions under bearing the counterfeit mark. Then the
Legal framework the Civil and Commercial Code, or actions trademark registrar will officially forward
In Thailand, both registered and under applicable provisions of the Penal the request and all supporting documents to
Code are allowed. Customs for its records. Any trademark
owner that is not domiciled in Thailand, but
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Anti-counterfeiting 2008 – A Global Guide 165

Tilleke & Gibbins International Ltd

that wishes to apply for protection must regulations, customs officials have only 24 of goods or services that can provide a basis
have a local representative where it can be hours from the date of detention to obtain for an action under the Trademark Act, the
contacted by the trademark registrar. confirmation that the goods are counterfeit. mark owner may pursue a criminal action
If the goods are not inspected before the under the Penal Code. The code provides
The second route is more of a case-by- expiry of the 24-hour deadline, the several bases for criminal passing off type
case procedure and pre-supposes that the suspected counterfeit items are subject to actions. Section 271 broadly prohibits
trademark owner has complied with the release to the importer – which is an “fraudulent or deceitful means” in selling
general recordal or notification to the DIP as undesirable result for the trademark owner. goods so as to deceive a buyer as to the
described above. This option is available in However, in practice, Customs may extend source of origin, nature, quality, or quantity
cases where: the time for the trademark owner or its of such goods. Section 272 further proscribes
• the trademark owner has specifically representative to identify whether the goods the use of a name, figure, artificial mark, or
are counterfeit, if this is considered any wording used in connection with the
identified a counterfeit shipment that it reasonable. The application to participate in trade or business of another person in order
knows is due to arrive in Thailand or be the Customs Watch List does not require to make the public believe that the
shipped from Thailand; and periodic renewals. If a new trademark has goods/services belong to such other person.
• it has grounds to show that the goods are been launched, the applicant may simply Furthermore, under Sections 273 to 275,
counterfeit. submit an updated list of existing forgery, passing off and various commercial
trademarks at any time. dealings in forged or imitated marks which
In this case, the trademark owner may have been registered anywhere in the world
petition Customs to inspect the shipment If the seized goods are confirmed to be are considered criminal offences.
prior to the release or delivery of the goods. counterfeit, the customs official will file a
The trademark owner will be required to claim against the importer based on Preliminary measures
provide customs officials with specific and importing restricted and prohibited goods, Preliminary measures in criminal actions
detailed information regarding the in violation of the Customs Act and the are limited to raids and seizures of
shipment – for example: Trademark Act. The Customs Committee has infringing goods. To do this, a formal
• the name or identity of the vessel the authority to fine the importer. If the complaint must be filed with the police.
importer does not comply with the Customs When the police determine that there is
suspected of carrying the counterfeit Committee’s order, the case will be referred sufficient evidence of infringement, they
goods; to the Intellectual Property and will coordinate their efforts with the IP
• the time of arrival in Thailand; International Trade (IP & IT) Court. The court owner and its legal representative to request
• the place where the goods are to be kept; has the authority to fine an importer up to a search warrant from the IP & IT Court to
and four times the value of the seized goods. The search the raid target’s premises and seize
• the name of the importer. fine will then be paid to the state. The the counterfeit goods.
importer or exporter will have a criminal
If the customs official finds the petition record and can face maximum sentences if Remedies
credible, then an inspection or examination it reoffends. The seized goods will be kept in Remedies available under criminal
of the suspect counterfeit goods will be custody, to be destroyed later. prosecution are in the form of fines and
conducted in the presence of the applicant. imprisonment.
Criminal prosecution
Since it is often difficult for a trademark Penalties for infringement of a
owner to provide specific details about the Key points trademark registered in Thailand can
suspected shipment, or the name of the Registered trademarks: Section 44 of the include fines up to Bt400,000 and up to
importer or exporter of the counterfeit Trademark Act provides that the owner of a four years’ imprisonment (usually reduced
goods, a short-form recordal procedure registered mark has the exclusive right to its or suspended for first-time offenders).
before Customs has been developed. This is use for the goods in respect of which
known as the ‘Customs Watch List’. This form registration has been granted. Thus, any Penalties for offences under Sections 271
of recordal was created based on unauthorized use of a registered trademark to 275 of the Penal Code include fines up to
cooperation between customs authorities, in connection with the goods or services for Bt6,000 and up to three years’
brand owners and local trademark which it has been registered constitutes a imprisonment.
representatives in an effort to clamp down trademark infringement actionable by the
on piracy and counterfeiting. This short- owner of the mark. Sections 108 to 111 of the The infringing products seized will be
form recordal represents a convenient Trademark Act criminalize forgery and destroyed after the final judgment.
alternative to filing the more formal imitation of registered trademarks, as well as
application with the DIP. An expedited various acts of commercial dealing in forged Civil enforcement
application is directly submitted to or imitated marks. In the event that the
Customs, including a letter requesting infringement is committed by a company, Key points
specific cooperation in monitoring and which results from an order or action, or lack Registered trademarks: In addition to
seizure of shipments of specific goods or of an order or action of the directors or criminal prosecution under the Trademark
goods bearing a specific trademark. The management, the directors or managers will Act, the owner of a registered mark may also
letter of request will then be copied to each also be subject to criminal liability. pursue a civil action against an infringer
customs port of entry and exit around based on Section 420 of the Civil and
Thailand. This short-form recordal typically Unregistered trademarks: If the mark is Commercial Code. Section 420 is a basic
takes about three to four weeks, while the not registered in Thailand, or is registered torts provision, which reads “[a] person who,
formal recordal/notification to the DIP takes but not in connection with relevant classes wilfully or negligently, unlawfully injures
approximately two to three months. the life, body, health, liberty, property, or any

According to the letter of Customs’

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Thailand

right of another person, is said to commit a preventive injunction under IP legislation including various online infringement
wrongful act and is bound to make can be requested prior to the filing of a monitoring programmes.
compensation therefor”. This section is statement of claim or the prosecution. An
generally used as a basis for a civil action, application for a preventive injunction is Preventative measures/strategies
which involves infringements of IP rights. made on an ex parte basis. In sum, the IP
owner must provide the court: Use of local counsel and investigators
Unregistered trademarks: In the • with proof of ownership in the There are several international and local law
absence of registered rights, a civil passing firms specializing in IP practice in Thailand.
off or unfair competition claim may be intellectual property and infringement There are a few renowned law firms with
formulated under Sections 420 and 421 of thereof; and long-standing experience and well-
the Civil and Commercial Code. An action • with reasons sufficient for the court to established credentials, as well as some new
for passing off does not strictly depend on conclude that the preventive injunction entrants to the market. Some law firms
use of the trademark, but rather the overall is appropriate. provide only a trademark execution service,
presentation of the products and the intent while others offer a one-stop service,
to represent the products as those of The court’s decision will also depend on including trademark consultation, litigation
another. However, it should be noted that the extent of damage that might be incurred and investigation. The number of IP
unregistered rights such as those giving rise by both parties and the difficulty of enforcing investigation firms is quite small, but there
to passing off actions receive very thin the judgment against the alleged infringer. has been continual growth in recent years.
protection and are based on very onerous
evidential requisites. The chance of success Unfortunately, in Thailand interim relief Controlling contractual relationships
in bringing a civil suit is generally low. is difficult to obtain. Anton Piller orders and with third parties
preventive injunctions are rarely granted. A trademark owner must select business
In addition, Section 47 of the Consumer The IP owner tends to face stringent partners and set up a trading relationship
Protection Act makes it illegal intentionally evidential hurdles which would practically carefully. To ensure that the contractual
to cause the public to be misled about the prevent it from obtaining immediate relief. rights of both parties are recognized and
origin, condition, quality, quantity or other enforceable under the law, Section 68 of the
material parts of the goods or services of Remedies Trademark Act requires that a trademark
others or of one’s own. However, the In civil proceedings, remedies include licence agreement must be made in writing
Consumer Protection Act does not provide permanent injunctions and awards of and registered with the DIP. In addition, both
consumers or competing business operators damages. The ability to obtain such relief parties may have to consider the details of
with the right to bring an action directly in will depend on the remedies claimed by the the terms and conditions of the agreement
court. Rather, a complaint must be brought plaintiff in its pleadings and as introduced as regulated by other related laws, such as:
before the Consumer Protection Board. during trial. • the Unfair Contract Term Act;
• the Trade Competition Act;
Preliminary measures The trademark owner may seek a • the Consumer Protection Act; and
Available interim reliefs include an ex parte permanent injunction under Section 116 of • the Customs Act.
order for search and seizure of evidence of the Trademark Act. Damages are generally
infringement, known as an Anton Piller order, awarded on an actual basis (ie, the Effective use of technology
and a preventive injunction. trademark owner would have to prove the The agencies involved in anti-counterfeiting
actual amount of damages suffered as a efforts have been adopting more advanced
An Anton Piller order to seize evidence of direct result of the infringement). It is not technologies to enhance the abilities of
infringement may be applied for by an IP possible to recoup lost profits. officials to prevent IP infringement in
owner facing the immediate risk that the Thailand. The latest technologies have also
evidence will be destroyed, damaged or Anti-counterfeiting online been implemented, with devices applied to
concealed, or will otherwise disappear. The genuine products in all sectors, from fashion
order preserves the evidence for when a civil Unauthorized internet commerce and consumer products to the
action is initiated by the IP owner. To Thailand does not have a statute which pharmaceutical and automotive industries,
support a motion for an Anton Piller order, specifically regulates online activities. IP in order to indicate authentic articles.
the IP owner must be able to show that the statutes and principles have generally been
circumstances are urgent (ie, if the other applied to prevent infringing activities Cooperation with national
party or the third party involved is notified conducted via the Internet. Unauthorized anti-counterfeiting agencies
beforehand, the evidence of infringement use of registered marks and various acts of The relevant anti-counterfeiting agencies
will be damaged, lost or destroyed, or will passing off which occur online would be are as follows:
otherwise become difficult to be adduced at subject to criminal and/or civil liabilities • the DIP (www.ipthailand.org);
a later stage). The court may also require under the current law. However, the virtual • the Central IP & IT Court
proof of the IP right at stake and proof of nature of the Internet makes it difficult to
infringement sufficient to establish the IP control online counterfeiting effectively. (www.cipitc.or.th);
owner’s prima facie case against the alleged • the Royal Thai Police Bureau
infringer. Internet security and online
investigation strategies (www.royalthaipolice.go.th);
While applying for the Anton Piller order, Internet security and online investigation • the Customs Department
the IP owner may simultaneously seek a strategies have recently attracted increasing
preventive injunction to stop further interest among IP owners. As a result, a (www.customs.go.th); and
infringement. A preventive injunction is number of private firms offer services • the Department of Special Investigation
available under each of the IP statutes in according to the needs of the IP owners,
Thailand, including the Trademark Act. A (www.dsi.go.th). WTR

www.WorldTrademarkReview.com Anti-counterfeiting 2008 – A Global Guide 167

Biographies Tilleke & Gibbins International Ltd
Tilleke & Gibbins International Ltd 64/1Soi Tonson, Ploenchit Road,
Lumpini, Patumwan, Bangkok 10330,
Thailand
Tel +66 2263 7700
Fax +66 2263 7710-7713
Web www.tillekeandgibbins.com

Siraprapha Rungpry Titirat Wattanachewanopakorn
Legal consultant Attorney-at-law
[email protected] [email protected]

Siraprapha Rungpry is an associate in the Titirat Wattanachewanopakorn is an
IP department of Tilleke & Gibbins associate in Tilleke & Gibbins International
International Ltd. She earned her juris Ltd’s IP enforcement department. He
doctor degree at Boston College Law School, graduated with an LLB from Thammasat
where she focused her studies on IP and University, an MSA from Central Michigan
commercial law. She attended the LLM University and an LLM from American
programme in trade regulation focusing on University. He joined the IP team of Tilleke
IP law at New York University School of Law & Gibbins in 2002. His areas of particular
and received her LLM with distinction in IP experience include the entertainment,
2005. She joined Tilleke & Gibbins’ IP team automotive, software, consumer products,
in 2006. Her practice focuses on IP law, cosmetics and fashion industries.
pharmaceutical law, and IT and internet
matters.

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