CHECKLIST OF ISSUES ON ENFORCEMENT[1]
Responses from Thailand
Civil and Administrative Procedures and
Remedies (Questions 1-14)
1. Specify
the courts which have jurisdiction
The Central Intellectual
Property and International Trade Court (CIPIT) and the Supreme Court
(Intellectual Property and International Trade Division) have jurisdiction over
disputes relating to intellectual property rights violations. The CIPIT acts as
the Court of First Instance and appeals are heard by the Supreme Court.
2. Which persons have standing to assert IPRs?
How may they be represented? Are there requirements for mandatory personal
appearance before the court by the right holders?
According to Section 55 of the
Civil Procedure Code B.E.2477 (1934), right holders or their authorized
representatives through a power of attorney have standing to assert IPRs. With
power of attorney, personal appearance before the court by the right holders is
not mandatory.
3. What authority do the judicial authorities
have to order, at the request of opposing party, a party to a proceeding to
produce evidence which lies within its control?
To ensure convenience,
expediency and fairness of proceedings, the Chief Justice of the Central
Intellectual Property and International Trade Court is empowered, subject to
the approval of the President of the Supreme Court, to issue rules on
proceedings and hearing of evidence provided that they do not impair the right
of defense of an accused in a criminal case. The Court may call any
knowledgeable persons or experts to appear and give their opinion for its consideration.
Where there are no such provisions and Rules on the issue, the provisions of
the Civil Procedure Code, the Criminal Procedure Code or the Act of the
Establishment of Kwaeng Court and its Criminal Procedure Code shall apply mutatis mutandis. (The Act on the Establishment
of and Procedure for Intellectual Property and International Trade Court
B.E.2539 (1996) (Sections 26, 30 and 31)).
4. What
means exist to identify and protect confidential information brought forward as
evidence?
In the appropriate case or for
the protection of intellectual property rights or the prevention of damage that
might be incurred to international business of a party, if a party requests, or
if the Court deems inappropriate to disclose in whole or any part of the facts
or circumstances in the case, the Court may issue the following order:
(1) Prohibiting the public from attending in whole
or in any part of the hearing, and holding the hearing in camera, or
(2) Prohibiting the publication of such facts or
circumstances.
Irrespective of whether the
Court has issued such order, the order or judgment of the Court adjudicating
the case shall be read in open court, and the publication, either in whole or
in part, of the order or judgment or an impartial and accurate summary thereof
shall not be deemed unlawful. (Rule 24 of the Rules for Intellectual Property
and International Trade Cases B.E.2540 (1997)).
This has to be read in
conjunction with Section 36 of the Civil Procedure Code B.E.2477 (1934) which
provides that the hearing shall be incurred to the parties and open to the
public, except in specific circumstances where the hearing may be close
session. Where appropriate, whole or any part of the facts or circumstances in
the case shall not be disclosed.
5. Describe the remedies that may be ordered by
the judicial authorities and criteria, legislative or jurisprudential, for
their use.
Injunctions
Under Section 65
of the Copyright Act B.E.2537 (1994), if there is an explicit evidence
that a person is doing or about to do any act which is an infringement of
copyright or performer's rights, the owner of copyright or performer's rights
may seek the injunction from the court to order the person to stop or refrain
from such act.
The injunction of the court
according to paragraph one does not prejudice the owner of copyright or
performer's rights to claim damages under Section 64.
Under Section 116
of the Trademark Act B.E.2534 (1991), if there is clear evidence
someone is committing or is about to commit an act under Sections 108, 109 or
110, the owner of the trademark, service mark, certification mark or collective
mark may apply to the court to stop or refrain from such act.
Under Section 77bis of
the Patent Act B.E.2522 (1979), if there is clear evidence that any
person is committing or about to commit any act in infringement of the rights of
the owner of a patent or petty patent under Section 36, 63 or Sections 65decies and
36, the owner of the patent or petty patent may request the court to order the
person to stop or refrain from committing such infringement. The order of the
court shall not deprive the owner of the patent or petty patent to claim
damages under Section 77ter.
Under Section 8 of
the Trade Secrets Act B.E.2545 (2002), where there is clear evidence
that an infringement of trade secrets has been committed or is imminent, the
affected or imminently to be affected controller of trade secrets has the
following remedies:
(1) Petition the court for an interim injunction,
temporarily to stop the infringement of trade secrets; and,
(2) File an action in the court for a permanent
injunction, permanently to stop the infringement of trade secrets and claim
damages from the wrongdoer.
The petition under (1) may be
filed prior to the action under (2).
The above provisions have to be
read together with Rules 12 and 13 of the Rules
for Intellectual Property and International Trade Cases B.E.2540 (1997).
An application for the Court order under Section 65 of the Copyright Act, B.E.2537,
Section 77bis of the Patent Act,
B.E.2522, Section 116 of the Trademark Act, B.E.2534 or other intellectual
property legislation, shall state the facts establishing a prima facie
case and the reasons sufficient for the Court to believe that
it is appropriate to grant such order. The application also has to include a
statement confirming the facts of a person who witnessed the cause of the
application, in order to substantiate such application. In this connection, the
application will be granted if the Court believes that:
(1) There is reasonable ground for the application
and the time the application is filed, as well as sufficient reasons for the
Court to grant such application; and,
(2) The nature of the damage incurred by the
applicant is such that the damage cannot be restored by monetary measures or
any other form of indemnity or the prospective defendant is not in a position
to compensate the applicant for the damage, or it might be difficult to enforce
the judgment against the prospective defendant afterwards.
In considering the application,
the Court will take into account the balance of the extent of damage that might
be incurred by both parties.
Damages,
including recovery of profits, and expenses, including attorney's fees:
In the case of infringement of
copyright or performer's rights, the Court has the authority to order the
infringer to compensate the owner of copyright or performer's rights for damages
the amount which the Court considers appropriate by taking into account the seriousness
of injury including the loss of benefits and expenses necessary for the
enforcement of the right of the owner of copyright or performer's rights
(Section 64 of the Copyright Act B.E.2537 (1994)).
For trademark cases, the Court
will determine the manner and the extent of the compensation according to the
circumstances and the gravity of the wrongful act. Compensation may include
restitution of the property of which the injured person has been wrongfully
deprived or its value as well as damages for any injury caused (Section 438 of
the Civil and Commercial Code B.E.2468 (1925)).
In case of an infringement of
the rights of the owner of a patent or petty patent, the Court can order the
infringer to pay the owner of the patent or petty patent damages in an amount
deemed appropriate by the Court, taking into consideration the gravity of the
injury including the loss of benefits and expenses necessary to enforce the
rights of the owner of the patent or petty patent (Sections 36, 63, 65decies and
77ter
of the Patent Act B.E.2522 (1979)).
In trade secret cases, in
determining the measure of damages, the Court may:
(1) In addition to the damages for the actual
damage suffered, include in the damages for the plaintiff, account of profits
accrued from or in connection with the infringement by the infringer.
(2) In case where the Court is unable to measure
the damages under (1), order such amount of damages to the controller of trade
secrets, as it deems appropriate.
(3) In case where there is clear evidence that the
infringement of trade secrets is conducted wilfully or maliciously causing the
trade secrets to cease the quality of secrecy, order the infringer to pay
punitive damages in addition to the amount of damages granted under (1) and
(2). However, the punitive damages shall not exceed two times the amount of
damages under (1) or (2) (Sections 8(2) and 13 of the Trade Secrets Act B.E.2545
(2002)).
Destruction
or other disposal of infringing goods and materials/implement for their
production
Under Section 75
of the Copyright Act B.E.2537 (1994), all things made or imported
into the Kingdom which constitutes an infringement of copyright or performer's
rights within the meaning of the Copyright Act and the ownership of which are
still vested upon the offender will belong to the owner of copyright or
performer's rights provided that the things used for committing the offence
must be all forfeited.
Under Section 115
of the Trademark Act B.E.2534 (1991), all goods which are imported
for distribution or had in possession for distribution in violation of the Act
must be confiscated whether or not anyone has been convicted of the offence.
Under Section 77quarter
of the Patent Act B.E.2522 (1979), all goods in
the possession of the infringer which infringe the rights of the owner of a
patent or petty patent must be confiscated. The Court may order the destruction
of the goods or other measures to prevent further distribution of the goods.
Under Sections 8(2)
and 11 paragraph 3 and 4 of the Trade Secrets Act B.E.2545 (2002), in
an action for injunction, the controller of trade secret may request the court
to order the destruction or confiscation of materials, apparatus, tools or
other equipments used in the infringement of trade secrets. The products that
are manufactured by the infringement of trade secrets and are still owned by
the infringer will be transferred to the State or the controller of trade
secrets as so ordered by the Court. In case where the possession of such product
is illegal, the Court may order its destruction.
Under Sections
43(6), 44 and 45 of the Agricultural Standards Act B.E.2551 (2008),
the agricultural commodity seized by the authorized officer, the Agricultural
Standards Committee may:
(1) In the case where producer, exporter or
importer has not been granted a voluntary standard certificate and uses or
displays of a voluntary standard certification mark in violation, the Committee
may order to correct or recondition the agricultural commodity so as to be
complied with the voluntary standard, or to destroy the certification mark or
to remove it from the agricultural commodity. In the case where the mark cannot
be destroyed or removed from the agricultural commodity, the Committee may
order such commodity to be destroyed;
(2) In the case where the producer, exporter or
importer has not been granted a mandatory standard certificate for such
agricultural commodity stipulated by the Ministerial Regulation, the Committee
may order to destroy that agricultural commodity, or in the case of import, the
Committee may order to return or await for the mandatory standard certificate application
of the producer, exporter or importer, wherever the case may be. The producer, exporter
or importer will be liable for any incurred expenses in relation to the
correction, reconditioning, destruction, returning or awaiting for the
mandatory standard certificate application, or the destruction or removal of
voluntary standard certification mark from the agricultural commodity.
If the seized agricultural
commodity or articles are not claimed by the owner within 90 days or where the
public prosecutor issues the final order not to file a lawsuit, or where the
Court decides not to confiscate those articles, and the owner has not requested
for their return within 90 days from the date of acknowledgement of the final
order not to file the lawsuit or from the date of rendering the final judgment
by the Court or the date of being notified that no lawsuit has been filed, the
ownership will be vested in the State and administered by the authority as
appropriate.
If the seized articles are
perishable, or the holding of which may cause a risk of damage or incur
expenses more than their value, the authority may arrange public auction even before
the case is closed. The net proceeds from the sale after deduction of expenses
and any other charges will be retained instead.
6. In what circumstances, if any, do judicial
authorities have the authority to order the infringer to inform the right
holder of the identity of third persons involved in the production and
distribution of the goods or services found to be infringing and of their channels
of distribution?
In the interest of justice, the
Court may order, with or without a party request, any party to adduce and
present any evidence within control of a party, provided that such evidence is
necessary to any material issue in the case (Rule 39 of the Rules for
Intellectual Property and International Trade Cases B.E.2540 (1997)).
7. Describe provisions relating to the
indemnification of defendants wrongly enjoined. To what extent are public
authorities and/or officials liable in such a situation and what "remedial
measures" are applicable to them.
Where the injunctive relief is
granted, any damage that the prospective defendant might incur must be taken
into account. The Court can order the applicant to provide security for such
damage in the amount within the period and under the conditions which the Court
deems appropriate (Rule 15 of the Rules for Intellectual Property and
International Trade Cases B.E.2540 (1997)).
8. Describe provisions governing the length and
cost of proceedings. Provide any available data on the actual duration of
proceedings and costs.
Pursuant to
Section 27 of the Act on the Establishment of and Procedure for Intellectual Property
and International Trade Court B.E.2539 (1996), the Intellectual Property and International
Trade Court shall proceed with the hearing without adjournment until the
hearing is over, save in case of unavoidable necessity. After the hearing is
over, the Court shall promptly render a judgment or an order.
The Court's fee and other
charges in civil proceeding are provided in Table 1 and 2 annexed to the Civil
Procedure Code B.E.2477 (1934). The Court fee varies depending the type and
amount of claim for compensation. In practice, the proceedings usually take no
more than one year.
9. Reply to the above questions in relation to
any administrative procedures on the merits and remedies that may result from
these procedures.
Under Section 72
of Trademark Act B.E.2534, the Registrar can cancel the registration
of a license agreement upon request by the trademark owner together with the licensee
and if it can be proved to have expired.
Any interested person or the
Registrar may petition the Board of Trademark to cancel the registration of a
trademark license agreement if it is shown that:
(I) the use of trademark by the license has
confused or misled the public or is contrary to public order or morality or to
public policy, or
(2) the trademark owner can no longer exercise
effective control over the quality of the goods under license.
Cancellation of trademark
licenses under this Section shall comply with the rules and procedures
prescribes in the Ministerial Regulation.
Section 77
of Copyright Act B.E.2537 (1994)
empowers the Director General of the Intellectual Property Department to
prescribe the fine for the offence according to Section 69 paragraph one and
Section 70 paragraph one.
Under Section 43
of the Geographical Indications Protection Act B.E.2546 (2003),
offences may be settled by a fine fixed by Director General of the Department
of Intellectual Property.
Under Sections 46,
47, 47bis,
49 and 50 of the Patent Act B.E.2522 (1979), at
any time after the expiration of 3 years from the grant of a patent or 4 years
from the date of application, whichever is later, any person may apply to the
Director-General of the Department of Intellectual Property for a license if it
appears, at the time when such application is filed, that the patentee
unjustifiably fails to exercise his legitimate rights as follows:
(1) that the patented product has not been produced
or the patented process has not been applied in the country, without any
legitimate reason; or
(2) that no product produced under the patent is
sold in any domestic market, or that such a product is sold but at unreasonably
high prices or does not meet the public demand, without any legitimate reason.
Whether it is an application
under (1) or (2), the applicant for a license must show that he has made an
effort to obtain a license from the patentee having proposed conditions and remuneration
reasonably sufficient under the circumstances but unable to reach an agreement within
a reasonable period.
Similarly if the working of any
claim in a patent is likely to constitute an infringement of a claim in a
patent of any other person, the patentee, desiring to exploit his own patent,
may apply to the Director-General for a license under the patent of the other
person under the criteria provided for in Section 47 of the Patent Act.
And if the working of any claim
in the patent having obtained a license under (1) and (2) is likely to
constitute an infringement of a claim in a patent of any other person, the
applicant for a license may apply to the Director-General for a license under
the patent of the other person under the criteria provided for in Section 47bis.
Where an application for a
license is filed under the above mentioned circumstances, the competent officer
may require the applicant, the patentee or the exclusive licensee to appear before
him to give any statement, or to hand over to him any document or any other
item. When the application has been considered by the competent officer and the
Director-General has made his decision, the applicant, the patentee and the
exclusive licensee shall be notified of the decision which is appealable to the
Board within 60 days of receipt of the notice. Where it is decided by the
Director-General that a license shall be granted to the applicant, the Director
General has to set the royalty and the conditions for the exploitation of the
patent and the restrictions on the rights of the patentee and the exclusive
licensee as agreed upon by the patentee and the applicant. If no agreement has
been reached by the parties within the period prescribed by the
Director-General, the Director-General has to fix the royalty and prescribed
the conditions and restriction as he deems appropriate subject to the following
requirements:
(1) the scope and duration of the license shall not
be more than necessary under the circumstances;
(2) the patentee shall be entitled to further
license others;
(3) the license shall not be entitled to assign the
license to others, except with that part of the enterprise or goodwill
particularly of the part under the license;
(4) the licensing shall be aimed predominantly for
the supply of the domestic market;
(5) the remuneration fixed shall be adequate for
the circumstances of the case.
The decision of the
Director-General is appealable to the Board within 60 days from the date on
which such decision is received.
10. Describe the types of provisional measures that
judicial authorities may order, and legal basis for such authority.
Under Section 65
of the Copyright Act B.E.2537 (1994), in case there is an explicit evidence
that a person is doing or about to do any act which is an infringement of
copyright or performer's rights, the owner of copyright or performer's rights
may seek the injunction from the court to order the person to stop or refrain
from such act. The injunction of the court should not prejudice the owner of
copyright or performer's rights to claim damages under Section 64.
Under Section 116
of the Trademark Act B.E.2534 (1991), if there is clear evidence
someone is committing or is about to commit an act under Sections 108, 109 or
110 of the Act (i.e., counterfeiting, imitation of a trademark, service mark
certification mark or collective mark; importation, distribution or having in
possession for distribution of goods bearing a counterfeit and imitated mark;
provision of a service under a counterfeit or imitated mark), the owner of the
trademark, service mark, certification mark or collective mark may apply to the
Court to stop or refrain from such act
Under Section 77bis of
the Patent Act B.E.2522 (1979), in case there is clear evidence that
any person is committing or about to commit any act in infringement of the
rights of the owner of a patent or petty patent under Sections 36, 63 or
Sections 65decies of the Act, the owner of the patent or petty
patent may request the Court to order the person to stop or refrain from
committing such infringement. The order of the Court shall not deprive the
owner of the patent or petty patent to claim damages under Section 77ter.
Under Section 8 of
the Trade Secrets Act B.E.2545 (2002), where there is clear evidence
that an infringement of trade secrets has been committed or is imminent, the
affected or imminently to be affected controller of trade secrets has the
following remedies:
(1) Petition the court for an interim injunction,
temporarily to stop the infringement of trade secrets; and,
(2) File an action in the court for a permanent
injunction, permanently to stop the infringement of trade secrets and claim
damages from the wrongdoer.
The petition under (1) may be
filed prior to the action under (2).
11. In what circumstances may such measures be
ordered inaudita altera parte.
The Court may adopt provisional
measures inaudita altera parte in the
case of extreme emergency in accordance with provisions of Sections 266-267 of
the Civil Procedure Code B.E.2477 (1934).
12. Describe the main procedures for the
initiation, ordering and maintenance in force of provisional measures, in
particular, relevant time-limits and safeguards to protect the legitimate
interests of the defendant.
Rules 12-19 of the Rules for
Intellectual Property and International Trade Cases B.E.2540 (1997) govern the
entire procedures for provisional measures as follows:
Rule
12
An application for the Court
order under Section 65 of the Copyright Act, B.E.2537, Section 77bis of the Patent Act, B.E.2522, Section 116 of the
Trademark Act, B.E.2534 or other intellectual property legislation, shall state
the facts establishing a prima facie case and the reasons
sufficient for the Court to believe that it is appropriate to grant such order.
The application shall also include a statement confirming the facts of a person
who witnessed the cause of the application, in order to substantiate such
application.
Rule
13
In considering the application
under Rule 12, the Court will grant the application if (1) there is reasonable
ground for the application and the time the application is filed, as well as sufficient
reasons for the Court to grant such application, and (2) the nature of the
damage incurred by the applicant is such that the damage cannot be restituted
by monetary measures or any other form of indemnity or the prospective
defendant is not in a position to compensate the applicant for his damage, or
it might be difficult to enforce the judgment against the prospective defendant
afterwards. In considering the application, the Court shall take into account
the balance of the extent of damage that might be incurred by both parties. If
the Court issues an order dismissing the application, such order shall be
final.
Rule
14
In case where the Court grants
the application under Rule 13, the Court shall notify the prospective defendant
of the order without delay.
The order under paragraph one
shall immediately bind the prospective defendant even though the prospective
defendant has not been notified of the order.
Rule
15
In case where the Court grants
the application under Rule 13, taking into account any damage that the
prospective defendant might incur, the Court shall order the applicant to
provide security for such damage in the amount within the period and under the
conditions which the Court deems appropriate.
Rule
16
In case where the Court grants
the application under Rule 13, the defendant may file an application requesting
the Court to repeal or modify the provisional measures of protection. The order
of the Court repealing or modifying the measures shall be final. Within 30 days
from the date on which the Court issues an order repealing or modifying the
measures, a request for the Court order may be filed to direct the applicant to
compensate for the damage. If the Court finds, after making an inquiry, that
the order granting provisional measures of protection which has been repealed
or modified was granted due to the Court's misunderstanding that there is ground
for taking an action against the defendant or sufficient reason to grant such
provisional measures by the fault or negligence of the applicant, the Court may
order the applicant to compensate the defendant in the amount the Court deems
appropriate. If the applicant fails to comply with such Court order, the Court
may enforce such order as if the applicant is a judgment debtor.
Rule
17
In case where the Court grants
the application under Rule 13 but the applicant fails to institute an action
relating to the application within 15 days from the date on which the application
was granted or within the period prescribed by the Court, the provisional
measures shall lapse at the expiration of the said period. In this case, the
defendant may file with the Court, within 30 days from the date on which the
provisional measures is deemed to lapse, a request for the Court order
directing the applicant to compensate him for his damage in the amount the
Court deems appropriate. If the applicant fails to comply with such order, the
Court may enforce such order as if he is a judgment debtor.
Rule
18
In case where the Court grants
the application under Rule 13 and an action is instituted in relation to the
application within 15 days from the date on which the application was granted
or within the period prescribed by the Court, the provisional measures granted
or modified under Rule 16 shall continue to be in force, unless the Court
issues an order repealing or modifying the measures according to a request of
the defendant. In this case, Sections 260, 261 and 263 of the Civil Procedure
Code shall apply mutatis mutandis.
Rule
19
The provisions on in-camera
proceedings and prohibition of publication under Rule 24 and on hearing of a
witness by means of videoconference under Rule 32 shall apply to the proceedings
under Rule 13 and Rules 15-18 mutatis
mutandis.
13. Describe provisions governing the length and
cost of proceedings. Provide any available data on the actual duration of
proceedings and their cost.
With reference to Sections
266-267 of the Civil Procedure Code B.E.2477 (1934), and Section 27 of the Act
on the Establishment of and Procedure for Intellectual Property and International
Trade Court B.E.2539 (1996), the Intellectual Property and International Trade Court
has to proceed with the hearing without adjournment until the hearing is over,
except in case of unavoidable necessity. After the hearing is over, the court
shall promptly render a judgment or an order. The proceedings are subject to
filing fees, and in some cases, bonds or securities (Section 98 of the Customs
Act B.E.2469).
14. Reply to the above questions in relation to
any administrative provisional measures.
Section 67 of Copyright Act
B.E.2537 (1994) allows authorized officials according to the Penal Code:
(1) to enter a building, office, factory or
warehouse of any person during sunrise and sunset or during the working hours of
such place or to enter a vehicle to search or examine the merchandise when
there is a reasonable suspicion that an offence under this Act is committed,
(2) to seize or forfeit documents or materials
relating to the offence for the benefit of proceeding a litigation where there
is a reasonable suspicion that an offence under this Act is committed,
(3) to order any person to testify or submit
accounting books, documents or other evidences when there is a reasonable
suspicion that the testimony, accounting books, documents or such evidences
shall be useful for the finding or the use as evidence for proving the offence under
this Act.
Applicants of provisional
measures in an administrative procedure are not required to pay any fees.
Special Requirements Related to Border
Measures (Question 15-19)
15. Indicate for which goods it is possible to
apply for the suspension by the customs authorities of the release into free
circulation, in particular whether these procedures are available also in
respect of goods which involve infringements of intellectual property rights
other than counterfeit trademark or pirated copyright goods as defined in the
TRIPS Agreement (footnote to Article 51). Specify, together with relevant criteria,
any imports excluded from the application of such procedures (such as goods
from another member of a customs union, goods in transit or de minimis imports). Do the procedures
apply to imports of goods put on the market in another country by or with the consent
of the right holder and to goods destined for exportation?
According to the Notifications
and Regulations of Ministry of Commerce on Export and Import of Goods from and
to the Kingdom of Thailand, the intellectual property rights protected by the
Customs include right to trademark and copyright. The right holders can therefore
made a request to the customs authority for suspension of any import and export
of goods infringing trademark and copyright. The border measures will not apply
to the goods carried or posted across the border by an individual within the
reasonable amount for self-using.
Customs control and border
measures have not yet applied to transit and transshipment of goods infringing
intellectual property right.
16. Provide a description of the main elements
of the procedures relating to the suspension of the release of goods by customs
authorities, in particular the competent authorities (Article 51), the
requirements for an application (Article 52) and various requirements related
to the duration of suspension (Article 55). How have Articles 53 (security or
equivalent assurance), 56 (indemnification of the importer and of the owner of the
goods) and 57 (right of inspection and information) been implemented?
Any right holder initiating
procedures for suspension by the Customs authorities of the release of
suspected counterfeit trademark or pirated copyright goods into free
circulation is required to provide adequate evidence and sufficient information
which includes a suspicion of infringement of the right holder's intellectual
property right in order to make the suspension of goods by Customs authorities.
The requirement to provide information shall not unreasonably deter recourse to
these procedures.
The Customs authorities also
require a right holder initiating procedures to suspend the release of
suspected counterfeit trademarked goods or pirated copyright goods to provide a
guarantee, in order to protect the defendant and the authorities and to prevent
abuse.
17. Describe provisions governing the length and cost
of proceedings. Provide any available data on the actual duration of
proceedings and their cost. How long is the validity of decisions by the
competent authorities for the suspension of the release of goods into free
circulation?
There's no cost involved. The
right holder has to request for suspension of goods within 24 hours after being
notified by Customs authorities. The duration of suspension is 10 days which
can be extended for another 10 days.
18. Are competent authorities required to act upon their
own initiative and, if so, in what circumstances? Are there any special
provisions applicable to ex officio action?
The competent authorities are
permitted to initiate border measures ex
officio, without the need for a formal request from a person or
right holder. Such measures shall be used when there is reason to believe or
suspect that goods being imported or exported are counterfeit or pirated.
19. Describe the remedies that the competent
authorities have the authority to order and any criteria regulating their use.
Section 25 of the Customs Act
B.E.2469 (1926) provides that all goods or articles seized under the Act shall
be delivered into the custody of the competent Customs official. If there is no
such official within a reasonable distance, they shall be delivered into the
custody of the nearest Amphoe, who
shall hold them on behalf of the Customs. All good seized or forfeited under
this Act or other laws relating to the Customs shall be disposed of as
instructed by the Director-General.
If the goods seized are of
perishable or their detention poses a risk of damage or the expense of
detention is more than reasonable, the Director-General or the person
authorized by him may instruct the competent official to sell them by auction
or by other means as appropriate before they become property of the State, and
the proceeds thereof, deducted by all expenses and charges, shall be retained
instead of the goods.
Also, Section 17 of the Customs
Act (No. 9) B.E.2482 (1939) provides that any goods shall in respect of which
an offence has been committed under Section 27 of the Customs Law B.E.2469 take
in conjunction with Section 16 of the Customs Act (No. 9) B.E.2482 shall be
forfeited, irrespective of the conviction or non-conviction of any particular person.
Remarks:
Section 27 of the Customs Act
B.E.2469 (1926) provides that "Any person imports or brings into the
Kingdom any tax unpaid, restricted, or prohibited goods, or any goods which has
not duly passed through the Customs, or exports or takes such goods out of the
Kingdom or assists in any way in importing or exporting or removing or
assisting to removal without permission from any ship, quay, go down,
warehouse, place of security, or store room, or provide the place to keep, or
conceals such goods, or arranges other persons to do so or is involved in any
manner in carrying, removing, or dealing with such goods in any manner to avoid
or attempt to avoid the payment of Customs tax or of any duties of avoid or
attempt to avoid any provisions of law and restrictions relating to the
importation, exportation, landing, warehousing, and delivery of goods with the
intention to defraud the government tax of His Majesty the King with must be
paid for such goods or avoids the prohibition or restriction of such goods, for
each offence the shall be a fine of four times the amount of price of the goods
including duty, or to imprisonment for a term not exceeding ten years, or to
both."
This has to be read in
conjunction with Section 16 of the Customs Act (No. 9) B.E.2482 (1939) which
states that the execution of any act provided in Section 27 and Section 99 of the
Customs Law B.E.2469 shall be deemed to be an offence, irrespective of the
existence or non-existence of any wilful intent or negligence.
Criminal Procedures (Question 20-25)
20. Specify the courts which have jurisdiction over
criminal acts of infringement of IPRs.
The only court that has
jurisdiction over criminal acts of IPRs infringement in Thailand is the Central
Intellectual Property and International Trade Court.
21. In respect of which infringements of which
intellectual property rights are criminal procedures and penalties available?
The type of IPR infringements
which employ criminal procedures and criminal penalties are as follows:
21.1
Trademark infringement under the
Trademark Act B.E.2534 (1991)
21.2
Copyright infringement under the
Copyright Act B.E.2537 (1994)
21.3
Patent infringement under the Patent
Act B.E.2522 (1979)
21.4 Geographical Indications
infringement under the Geographical Indications Protection Act B.E.2546 (2003)
21.5 Layout-designs of Integrated
Circuits infringement under The Protection of Layout-designs of Integrated
Circuits Act B.E.2543 (2000)
21.6
Plant Varieties infringement under
The Plant Varieties Protection Act B.E.2542 (1999)
21.7
Trade Secret infringement under The
Trade Secret Act B.E.2545 (2002)
22. Which public authorities are responsible for
initiating criminal proceedings? Are they required to do this on their own
initiative and/or in response to complaints?
Generally, investigation
officers are responsible for the initiation of criminal proceedings. In case of
copyright and trade secret (Section 33 of the Trade Secrets Act B.E.2545 (2002)),
complaints by the right holders are required to enable investigation officers
to initiate criminal prosecution. Otherwise, the investigation is considered
unlawful. Other types of IPRs infringement cases can, however, be commenced by
the own initiation of investigation officers without any involvement of the
right holders.
Under Section 28 of Criminal
Procedure Code B.E.2477 (1934), (1) the public prosecutor and (2) the victim or
injured person, including the intellectual property rights holder are entitled
to institute criminal prosecution in court. "Injured Person" means a
person who has received injury through the commission of any offence. This
includes any other person who has the power to act on his or her behalf.
23. Do private persons have standing to initiate
criminal proceedings and, if so, who?
Yes. Under Section 28 of
Criminal Procedure Code B.E.2477 (1934), (1) the public prosecutor and (2) the
victim or injured person, including the intellectual property rights holder are
entitled to institute criminal prosecution in court. "Injured Person"
means a person who has received injury through the commission of any offence.
This includes any other person who has the power to act on his or her behalf.
24. Specify, by category of IPR and type of
infringement where necessary, the penalties and other remedies that may be
imposed:
- imprisonment;
- monetary fines;
- seizure,
forfeiture and destruction of infringing goods and materials and implements for
their production;
- other.
Penalties to be imposed against
each IPRs infringement actually vary, depending on the charges. The information
below is only an example of the penalties for each type of IPR.
Trademark
Primary infringement (such as
manufacturing of infringing goods) and secondary infringement (such as selling
infringing goods) contain identical penalties, i.e. maximum penalty of 4 years'
imprisonment, or 400,000 baht fine, or both. In case of repeat offenders who recommit
trademark infringement within 5 years after the date the punishment of previous
judgment has been served, double punishment will be imposed. After the judgment
is rendered, infringing goods will be forfeited and subsequently destructed
(Section 115).
Copyright
Primary infringement: maximum
penalty of 6 months to 4 years' imprisonment, or 100,000-800,000 Baht fine, or
both (Section 69). Secondary infringement: maximum penalty of 3 months-2 years'
imprisonment, or 50,000-400,000 Baht fine, or both. (Section 71) In case of conviction,
the right holders shall have the right of ownership over the infringing goods
and over half of the fine paid by the defendant under the judgment. Other
materials used in the wrongdoing shall be forfeited (Section 75). Similar to
trademark infringement, in case of repeat offenders who recommit trademark
infringement within 5 years after the date the punishment of previous judgment
has been served, double punishment will be imposed.
Patent
Primary
infringement and secondary infringement: maximum penalty of 2 years' imprisonment,
or 400,000 Baht fine, or both (Section 85). Equipments, tools or materials used
or to be used in patent infringement shall be forfeited under Criminal Code
Section 33.
Geographical Indications
Primary infringement: maximum
penalty is 200,000 Baht fine (Section 39). Secondary infringement does not
exist in the Geographical Indications Protection Act B.E.2546 (2003).
Trade Secrets
Maximum penalty for trade secret
infringement is 1 year imprisonment, or 200,000 Baht fine, or both (Section
33). It should be noted that the offense is compoundable (Section 37), which
means it can be mutually settled between the right holder and the infringer.
Layout-designs of Integrated Circuits
Primary infringement: maximum
penalty of 50,000-500,000 Baht fine (Section 22(1), 48). Secondary
infringement: maximum penalty of 20,000-200,000 Baht fine (Section 22(2), 49).
The Plant Varieties Protection Act
Primary infringement and
secondary infringement: maximum penalty of 2 years' imprisonment, or 400,000
Baht fine, or both (Section 33).
If the Court imposes a fine of
less than 80,000 Baht and the fined person is not a juridical person and is
unable to pay for the fine, that person may file a petition with the Court of First
Instance and ask for an order to perform specific hours of community service instead
(Section 30(1) of Penal Code).
25. Describe provisions governing the length and
any cost of proceedings. Provide any available data on the actual duration of
proceedings and their cost, if any.
Length of criminal proceedings
for IPRs infringement is not prescribed in written laws as it tends to be a
practical matter. In general, however, it takes approximately 4-5 months before
prosecutors can file the case to the court. In case of guilty plea, the court
will render judgment immediately. However, if the defendant pleads not guilty, trials
begin and generally take about 6 months to 3 years depending on the
schedule of both parties and complexity of a particular case. There are no
costs for IPRs prosecution.
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