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Jurisdiction Which courts are empowered to hear trademark disputes?
Since 1997, the Central Intellectual Property and International Trade Court (IPIT Court), a specialised IP court, has been the main adjudicator of trademark disputes. The Supreme Court is the final level of adjudication available for trademark disputes.
Actions What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
The owner of a registered mark can initiate administrative and judicial actions in case of infringement.
Administrative actions In addition to the opposition and cancellation procedures described above, administrative actions include mostly alternative dispute resolution procedures through the Department of Intellectual Property. The alternative dispute resolution procedure can be requested by either party and consists of mediation between the infringer and the plaintiff. Although alternative dispute resolution is a cost-effective procedure, it is rarely used as plaintiffs usually prefer criminal enforcement.
Criminal actions Judicial actions include criminal and civil actions. Criminal prosecution represents the majority of trademark infringement enforcement efforts in Thailand. It is a cost-effective and quick and efficient remedy. Criminal actions are initiated with the filing of a criminal complaint with the police. The police can then petition the court for a search warrant. If a warrant is issued, a police raid is carried out to collect evidence of the infringement and arrest the infringers.
Thailand’s enforcement bodies include:
- the Department of Special Investigation, which was established in October 2002;
- the Economic Crime Investigation Division, a specialised police unit widely used by trademark owners;
- the Metropolitan Police Bureau;
- the Provincial Police Bureau; and
- the Food and Drug Administration.
Under the Trademark Act, the maximum penalty for trademark infringement is four years’ imprisonment and a fine of Bt400,000. The maximum penalties for trademark imitation are two years’ imprisonment and a fine of Bt200,000.
Civil actions Registered trademark owners may also commence a civil suit based on the Civil and Commercial Code. However, civil actions for trademark infringement are still relatively rare in Thailand. Strategically, a civil action can be helpful for preliminary measures. For example, the registered trademark owner can petition the court for an order to preserve relevant evidence in relation to the alleged infringement (ie, an Anton Pillar order) or for an injunction order.
Who can file a trademark infringement action?
The owner or a registered trademark licensee authorised by the owner can file a trademark infringement action in Thailand.
What is the statute of limitations for filing infringement actions?
Different statutes of limitations apply to civil and criminal cases in Thailand. For criminal cases, statutes of limitation depend on:
- the nature of the infringement (whether it is a compoundable or non-compoundable offence); and
- the maximum penalties under the Trademark Act or the Criminal Code.
In general, speaking, the statute of limitation is 10 years for offences punishable by imprisonment of one to seven years (ie, trademark infringement).
However, for compoundable offences, if the injured person fails to lodge a complaint within three months from the date of the offence and the offender is known by the injured person, criminal prosecution is precluded by prescription.
For civil cases, a claim for damages arising from a wrongful act is barred by prescription after:
- one year from the day on which the wrongful act and the person bound to make compensation became known to the injured person; or
- 10 years from the date on which the wrongful act was committed.
However, if the damages are claimed on account of an act punishable under the criminal law for which a longer prescription is provided, the longer prescription will apply.
What is the usual timeframe for infringement actions?
The timeframe for infringement actions is generally one to two years for criminal and civil cases, depending on other circumstances surrounding the case.
Injunctions What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
It is possible, yet difficult, to obtain a temporary injunction to minimise the effects of trademark infringement in Thailand. There are two types of preliminary injunction in Thailand:
- the conventional type under the Civil Procedural Code; and
- the provisional injunction under the rules of the IPIT Court.
Under the Civil and Procedural Code, an application for a provisional injunction can be executed ex parte at any time before the granting of the decision, but after the filing of the claim. Two conditions must be met:
- there must be clear and convincing evidence that the party against which injunctive relief is sought has engaged in the infringing activities; and
- there must be proof of irreparable harm if the relief were not granted promptly.
In the case of a preliminary injunction under the rules of the IPIT Court, the applicant may file an ex parte application at any time before the filing of the claim if:
- there are reasonable grounds for filing the application and sufficient reasons for the court to grant such application;
- the nature of the damage incurred cannot be resituated by financial measures or any other form of indemnity; or
- the prospective defendant is unable to compensate the applicant for the damage or it might be difficult to enforce the judgment against the prospective defendants afterwards.
In practice, temporary injunctions are hard to obtain and granted only in exceptional circumstances.
Remedies What remedies are available to owners of infringed marks? Are punitive damages allowed?
Civil and criminal remedies are available to owners of infringed marks. Under the Trademark Act, the maximum penalties for trademark infringement are four years’ imprisonment and a fine of Bt400,000. The maximum penalties for the imitation of a registered trademark are up to two years’ imprisonment and a fine of up to Bt200,000.
Punitive damages are not allowed in typical trademark infringement cases. However, punitive damages may be claimed under the Product Liability Law in the case of “knowing or reckless behaviour or failure to take appropriate action after learning that goods were unsafe; provided that punitive damages may not exceed two times the actual compensation”.
Customs enforcement What customs enforcement measures are available to halt the import or export of infringing goods?
Border measures may be utilised against counterfeited trademarked and copyrighted products. Trademark owners or their representatives in Thailand can file a trademark notice with Customs to request that officers seize and prosecute infringers. They can also file a request to detain a suspected shipment. In the case of seizure, the trademark owner must confirm within 24 hours whether the seized products are counterfeit.
Customs officers also regularly perform ex officio customs actions. As there is no customs trademark registry, it is important that trademark owners provide customs officers with updated contact details of their representative in Thailand. Doing so aids a timely inspection of the suspected counterfeit products. Customs will usually issue fines based on the market value of the infringing trademarked goods.
Defence What defences are available to infringers?
Most infringers, particularly first-time offenders in trademark infringement cases, plead guilty in order to receive a more lenient penalty. Alternatively, infringers will usually try to build a non-infringement case, claiming that their mark is not identical or similar to the registered mark (ie, the passing-off defence) or that the mark is registered for different products or services than the infringing products. In civil cases, the infringers will usually try to conceal or hide evidence of the sale of infringing products.
Appeal What is the appeal procedure for infringement decisions?
Infringement cases decided by the IPIT Court can be appealed to the Supreme Court by either party within one month of the IPIT Court decision.
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