Overview of Intellectual Property Infringement Enforcement of Trademarks, Patents and Copyrights Courts and Enforcement Authorities Police Complaint and Criminal Case Civil Case Customs Measures under Customs Act B.E. 2560 Takedown Notice Against Copyright Infringment Takedown Order Against Any IPR Infringement TIPS for IP Registration in Thailand TIPS for IP Enforcement in Thailand

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ENFORCEMENT OF TRADEMARKS, PATENTS AND
COPYRIGHTS
Kowit Somwaiya, Managing Partner
Paramee Kerativitayanan, Associate
LawPlus Ltd.
Unit 1401, 14th Floor, 990 Abdulrahim Place, Rama IV Road, Bangkok 10500, Thailand
Tel. +66 (0)2 636 0662, Fax +66 (0)2 636 0663
www.lawplusltd.com
25 January 2019

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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
LawPlus 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 use of or the reliance upon the information contained in this document
Copyright © 2019 LawPlus Ltd.

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Enforcement of Trademarks, Patents
and Copyrights

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 TRADEMARK
● Trademark Infringement:
• use (without authorization) a trademark which is identical or confusingly similar
to a trademark owned by another party, in relation to products or services which
are identical or similar to the products or services which the registration covers (for
registered trademarks only)
● Passing off:
• a misrepresentation on behalf of the offender that will lead or be likely to lead
those members of the general public to believe that the goods offered by him
are in fact the goods or services of the others (for both registered and
unregistered trademarks)
Source: scottsthotz.wordpress.com
Source: asiancorrespondent.com
Overview of Intellectual Property Infringement (1)

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 PATENT
– the commission of a prohibited act with respect to a patented invention without
permission from the patent holder, which typically includes using or selling the
patented invention
 COPYRIGHT
– use of works protected by copyright law without permission, infringing certain exclusive
rights granted to the copyright holder, such as the right to reproduce, distribute, display
or perform the protected work.
Source: www.bangkokpost.com Source: www.nytimes.com
Overview of Intellectual Property Infringement (2)

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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 of Trademarks, Patents 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
arrest warrant.
3. Police searches or raids
premises of infringer, seizes
counterfeits and arrests
infringer.
4. Police interrogates
infringer and sends case to
public prosecutor.
6. Trademark owner joins
case as co-plaintiff
(optional).
5. Public prosecutor
files a criminal case
against infringer.
1. Trademark owner
represented by attorney
files 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
accessible to CD offices
throughout 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 officers
may file a petition to the
public prosecutor for
further investigation and
prosecution.
5. Agent files action
request with CD within
24 hours. Otherwise,
the seized goods will be
released.
7. Public prosecutor files
criminal case with IPIT
Court against infringer.
1. Trademark owner files
request with DIP to record
trademark 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.
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.

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

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TIPS for IP Registration in Thailand
 Register trademarks and patents early.
● A smooth trademark application takes 1.5 – 2 years to reach registration.
● A smooth invention patent application takes around 5-8 years to reach
registration.
 A single-class trademark application is a better choice than a multi-class
application.
 International trademark registration under the Madrid System can be claimed
starting 7th November 2017.
 A PCT national phase application is faster than a local patent application.
 Use expert IP agents.

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 Compile evidence of use and advertising materials.
 Use trademark watching services and market survey services for your well-
known marks.
 Take all necessary actions against infringement activities and infringers in a swift
and decisive manner.
 Use local agents, lawyers and investigators.
 Allocate and treat a budget on IP protection and enforcement as an “investment”
and not as a burden and expense.
TIPS for IP Enforcement in Thailand