The Trademark Act B.E. 2534 (1991) ("the Act") currently in force in Thailand is widely perceived as outdated. Since 2006, the Department of Intellectual Property (DIP) has been attempting to fully revise the Act with some success. Already numerous changes have been made that pave the way for greater trademark protection in Thailand and further Thailand's aim of fully complying with the Madrid Protocol regulations.
For instance, changes in the new Draft Trademark Bill ("the Bill") address the definition of "mark" and "Director General", as well as fee amounts, registration processes and time frame, multi-class applications, the filing of lawsuits, registration of trademark license agreements, counterfeit packaging, and penalties. In this article, we focus exclusively on the amendment relating to counterfeit packaging, a crucial issue that many trademark owners fail to adequately protect.
Under current practice, most trademark owners register their trademarks to cover only their main products or services, but often neglect to separately register protection for their packaging as well. This has led to legal difficulties when attempting to seize counterfeit packaging during police raids of infringing facilities. In certain instances, if the relevant trademark owner did not properly register for protection of their packaging, they cannot rely on the Act to take action against the infringer. In such cases, trademark owners must resort to the Thai Penal Code ("the Code") in order to seize the counterfeit packaging and stop it from being printed.
Section 272(1) of the Code prohibits anyone from using a name, figure, mark, or any wording on packaging or wrapping material, with the intent of making the public believe they are the goods of another person. The penalties for violating this provision are up to 1-year imprisonment and/or a fine not exceeding Baht 2,000 (USD 64).
In order to successfully take action against infringers under the Code, the trademark owner must prove the trademark is exactly forged with an intent to mislead the public. Unfortunately however, these penalties are relatively low and, importantly, do not extend to trademark imitation.
In view of these difficulties, the current Bill has been extended to cover trademark infringement on packaging. Section 110/1(1) of the Bill specifically prohibits the representation of forged/imitated trademarks on the covering or packaging of products with the intention to use them as a container and make the public believe that they are goods of another person. Additionally, Section 110/1(2) of the Bill prohibits anyone from using packaging that displays
another person's registered trademark for their own products or a third-person's products in order to make the public believe that they are the goods of the registered mark owner. Penalties for both these offenses are equivalent to those in section 108 and 109 of the Trademark Act.
It is obvious that the Bill has extended protection to cover not only products bearing registered trademarks but also the packaging of such products. Additionally, the Bill extends protection against the "passing off" of products in Thailand, providing criminal penalties for anyone who uses packaging that is similar to registered trademarks of trademark owners. It should be noted that the current Act does not have criminal remedies for "passing off."
This version of the Bill will clearly provide trademark owners with broader protections, as well as enhance trademark enforcement in Thailand, if it becomes law. The Bill is currently being resubmitted to Parliament for further consideration and approval. Following approval from Parliament, it will be announced in the Government Gazette before it comes into effect. It is expected that the Bill will come into force in 2012 or 2013.