Enforcement

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ENFORCEMENT OF TRADEMARKS AND
COPYRIGHTS IN THAILAND AND MYANMAR
Kowit Somwaiya
Managing Partner
LawPlus Ltd.
Seminar on Intellectual Property Law and Practice in China
ACLA Intellectual Property Committee Annual Conference 2018
7-9 December 2018
Nanning, China

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The information provided in this document is general in nature and may not
apply to any specific situation. Specific advice should be sought before taking
any action based on the information provided. Under no circumstances shall L
awPlus Ltd. or any of its directors, partners and lawyers be liable for any direct
or indirect, incidental or consequential loss or damage that results from the us
e of or the reliance upon the information contained in this document Copyright
© 2018 LawPlus Ltd.

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Kowit Somwaiya
Founder and Managing Partner, LawPlus Ltd.
Founder and Managing Partner, LawPlus Myanmar Ltd.
Vice President, IPAT
Board Member, INTA
• B.A. (Education – English), Ubon Ratchathani Rajbhat University, Thailand
• LL.B., Thammasat University, Thailand
• LL.M., University of Illinois, USA
• Certificate of Instruction for Lawyers, Harvard Law School, USA

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www.lawplusltd.com
 Established in 2003
 Professional, Practical, Prompt, Pro-active
 Major practices
● Banking and finance
● Corporate and M&A
● FDI and investment promotion
● IP and ICT
● Dispute resolution and litigation
 Rankings:

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 General Principles of Trademark and Copyright Infringement
 Negative Impacts of Trademark and Copyright Infringement
 Enforcement of Trademarks and Copyrights in Thailand
 Enforcement of Trademarks and Copyrights in Myanmar
Presentation Topics

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General Principles of Trademark and Copyright Infringement
 Trademark infringement
− unauthorized use of a trademark
− identical or confusingly similar to a trademark owned by another party
− products or services of the two trademarks are identical or similar
 Copyright infringement
− use of works protected by copyright law without permission from the copyright holder
− Infringing exclusive rights of the copyright holder to reproduce, distribute, display or perform the
protected work, or to make derivative works
Source: scottsthotz.wordpress.com Source: asiancorrespondent.com
Source: https://www.quora.com/

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Negative Impacts of Infringement
US$1.13 trillion US$2.81 trillion
US$597 billion US$1,244 billion
US$898 billion US$1,870 billion

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Enforcement of Trademarks and
Copyrights in Thailand

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Thailand – Geography and Statistics
•source: http://www.operationworld.org/thai
Area: 513,115 sq km
Capital: Bangkok
Population: 69 million (2018)
GDP (Nominal)
(2018 estimate)
- Total: US$514.70 billion
- Per capita: US$7,588
GDP Growth Rate
(2018 estimate): 4.20%
source: http://www.operationworld.org/thai

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 Both registered and unregistered trademarks are protected under the law.
 Registered trademarks receive considerably broader and stronger protection than
unregistered marks.
 Only passing off actions are allowed for an unregistered mark under the Trademark
Act.
 In practice, it is exceedingly difficult to enforce unregistered trademarks against
infringement.
 Copyright work is protected without recordation.
 Recordation of a copyright work is highly recommended.
 Recordation of a copyright work helps the author to establish a record date of ownership
and makes it easier to enforce rights.
Trademark and Copyright Protection in Thailand

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 Warning notice
 Cease and desist letter
 Police complaint and criminal case
 Civil case
 Customs measures
 Takedown notice against copyright infringement
 Takedown order against any IPR infringement
Enforcement Measures for Trademarks and Copyrights

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 Intellectual Property and International Trade Court (IPIT Court)
(established in 1996)
 Specialized Appeals Court (established in 2016)
 ECD (Economic Crime Suppression Division)
 DSI (Department of Special Investigation)
 CD (Customs Department)
Courts and Enforcement Authorities

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2. Police asks for IPIT
Court search and/or arr
est warrant.
3. Police searches or raids
premises of infringer, seizes
counterfeits and arrests infrin
ger.
4. Police interrogates
infringer and sends case to
public prosecutor.
6. Trademark owner joins
case as co-plaintiff (optio
nal).
5. Public prosecutor
files a criminal case aga
inst infringer.
1. Trademark owner
represented by attorney fil
es a police complaint.
Police Complaint and Criminal Case

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1. Plaintiff files civil court case with IPIT Court.
Civil Case
2. Defendant files an answer.
3. Court meeting(s).
4. Determination of Issues, Witness Hearings, Closing Briefs
3.1 Mediation
3.2 Settlement
Succeeded
Failed
5. Judgment
6. Appeal / Execution of Judgment

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2. DIP records
trademark details for CD
to access online.
3. CD records details of
trademark in CD database a
ccessible to CD offices thro
ughout Thailand.
4. Customs officers watch and
seize suspected counterfeits and
contact appointed agent of
trademark owner.
6. In case the seized goods are
counterfeit or pirated, the CD o
fficers may file a petition to the
public prosecutor for further in
vestigation and prosecution.
5. Agent files action request
with CD within 24 hours. Oth
erwise, the seized goods will
be released.
7. Public prosecutor files
criminal case with IPIT Co
urt against infringer.
1. Trademark owner files
request with DIP to record tra
demark for customs measure
protection.
Customs Measures under Customs Act B.E. 2560

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Takedown Notice Against Copyright Infringement
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1. Copyright owner files a motion to IPIT Court
under Section 32/3 of Copyright Act.
1. Copyright owner files a motion to IPIT Court
under Section 32/3 of Copyright Act.
2. IPIT Court grants an interim injunction order to the internet
service provider to comply within a specific period of time.
2. IPIT Court grants an interim injunction order to the internet
service provider to comply within a specific period of time.
3. Copyright owner initiates a lawsuit against the infringer within
the period of time specified by IPIT court.
3. Copyright owner initiates a lawsuit against the infringer within
the period of time specified by IPIT court.

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1. IP owner notifies
MDES officer under
Section 20(3) of
Computer Crimes Act.
1. IP owner notifies
MDES officer under
Section 20(3) of
Computer Crimes Act.
2. MDES officer asks
for approval from
MDES Minister.
2. MDES officer asks
for approval from
MDES Minister.
3. MDES Minister
gives approval.
3. MDES Minister
gives approval.
6. MDES officer
orders ISP to
remove or delete
infringing data.
6. MDES officer
orders ISP to
remove or delete
infringing data.
5. IPIT Court grants
a takedown order.
5. IPIT Court grants
a takedown order.
4. MDES officer files
a motion to IPIT
Court.
4. MDES officer files
a motion to IPIT
Court.
Takedown Order Against Any IPR Infringement

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Enforcement of Trademarks and
Copyrights in Myanmar

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Myanmar – Geography and Statistics
source: http://www.operationworld.org/myanmar
Area: 676,577 sq km
Capital: Naypyidaw
Population: 50 million
GDP (nominal) 2017 estimate
- Total: US$62.368 billion
- Per capita: US$1,374
GDP Growth Rate
(2018 estimate): 7.50%

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Laws on Intellectual Property Rights
IP Rights Laws
Trademarks
Patents
Industrial Designs
No specific law.
Drafts of laws on trademark, patent and industrial design
are being reviewed by the Myanmar Union Assembly.
Relevant Laws:
Penal Code 1816
Specific Relief Act 1877
Sea Customs Act 1878
Myanmar Merchandise Marks Act 1889
Registration Act 1908
Copyrights Copyright Act 1914
Draft of new Copyright Law is being reviewed by the
Myanmar Union Assembly.

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Enforcement of Trademarks and Copyrights (1)
 Criminal and civil actions are possible but slow.
 Actions are filed with the local courts mainly in Yangon.
 Customs regulations against counterfeits exist but are rarely enforced.
 No specific mechanisms exist for search, seizure and disposal of counterfeits and
pirated goods. The general provisions of the Criminal Procedure Code relating to search,
seizure and disposal of property are applicable but rarely used.
 There is no official trademark search system. But an unofficial trademark search is
available by a search on copies of cautionary notices collected by search companies.

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Enforcement of Trademarks and Copyrights (2)
 Market searches and investigations are normally recommended prior to legal action.
 Public warning notice in local newspapers in Myanmar and English languages is
recommended
• to warn the public of infringers and infringing products and
• to warn the infringers so that they cease the infringing activities to avoid legal actions
being taken against them.
 Cease-and-desist letter is normally sent to the infringer to demand cease of the infringing
activities.

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Draft Trademark Law
 Trademark Law is expected to be passed by the Myanmar Union Assembly within 2018.
 Myanmar Intellectual Property Office will be established.
 The current first-to-use system will be replaced by the first-to-file system for trademark
protection.
 The trademarks registered under the current system must be re-filed.
 There will be examination and opposition procedures.
 There will be provisions on civil and criminal liabilities of trademark infringements and
procedures for actions against trademark infringement.
 There will be provisions on customs measures against import and export of infringing
goods.

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