Trademarks

It is possible to obtain protection for trademark by registering it with the Department to Intellectual Property, Ministry of Commerce under the Trademark Act B.E. 3534 (1991) as amended by the Trademark Act No., B.E. 2543 (2000). Although unregistered trademarks are also protected under general Thai law, registration under the Trademark Act significantly expedites the enforcement process and gives the trademark owner the surest protection against infringement and counterfeiting.

To qualify for registration, a mark must satisfy the definition of “trademark” in the Trademark Act. Thus, a trademark application must be distinctive and dissimilar from any other previously registered trademark Act also provides for trademark registration and protection for service marks, and collective marks.

Collective marks are defined as trademarks or service marks used or proposed to be used by companies in the same group or by members of an association, co-operative union, or any other public or private organization.

Once accepted, the trademark application is published in the trademark Gazette (published only in the Thai language). If no objection is filed within 90 days, the trademark application is then registered.

An application for the trademark filed in Thailand within six months of a corresponding application filed in a foreign country may claim priority based on such foreign application, provided that the corresponding country provides reciprocal treatment to Thai nationals.

The protection lasts for 10 years from the date of application and there is provision for renewal.

There are also specific provisions for licensing registered trademark rights. Licensing can be achieved by contract in accordance with the Civil and Commercial Code of Thailand. However, the licensing agreement must be in writing and registered with the Trademark Registrar.

Licensing agreements must have terms and conditions that enable the licensor to ensure sufficient quality control of products manufactured under the agreements in order to be registered. The Registrar may refuse to register a licensing agreement if an agreement might confuse the public or run contrary to public policy or Thai standards of morality. The Board of Trademarks is also empowered to revoke a licensing agreement’s registration if the licensor is not realistically able to control the quality of licensed products.

Registration is, in itself, no guarantee against infringement. Therefore, the owner of a trademark or the owner’s local distributor must monitor for possible trademark infringements. If detected, that party must also be responsible for initiating legal action against the infringing party. This might include filing an objection to an application to register a similar mark, lodging a complaint with the police, directly submitting a criminal complaint to the Court, or initiating a civil action. Penalties for trademark violations under Sections 108 and 109 of the Trademark Act include fines of up to Baht 400,000 and/ or four years of imprisonment, provided the trademark is registered in Thailand.

The Trademark Act imposes heavier penalties than those available under the Penal Code. According to the Trademark Act, if a juristic person criminal offense, the management of that juristic person will also be held liable and will thus be subject to any applicable penalties unless the management can prove that the offence took place without their knowledge or consent.

If a trademark owner discovers that infringing (or “counterfeit”) goods are about to be imported into or exported into or exported out of Thailand, the trademark owner can petition the Customs Department to make a “stop order” which will result in the freezing of the goods for further inspection and potential prosecution. Specific information to identify the importing vessel or exporting shipping agent is required because the Customs Department does not provide a standing monitoring service for trademark owners.

The penal Code also offers protection for unregistered trademarks or to foreign registered trademarks, whether they have been registered in Thailand or in a foreign country. For “forgery” the penalties are imprisonment for up to three years or a fine not exceeding Baht 6,000, or baht.

Patents

The Patent Act B.E. 2522 (1979) as amended by Patent Act No. 2, B.E. 2535 (1922) and Patent Act No.3, B.E. 2542 (1992) protects inventions, product designs, patents or petty patents granted in Thailand. In order to be patented, an invention must have novelty, involve an inventive step and be capable of industrial application. Similarly, a product design must have novelty and be able to be put to an industrial use, which includes handicrafts. Some inventions cannot be patented including those relating to innovations in biotechnology, scientific and mathematical rules and theories, computer programs, and inventions that might constitute a threat to public order, morality, health, or welfare.

A simpler alternative to the regular patent is the petty patent. In order for an invention to be considered for protection by a petty patent, it must have novelty and be capable of industrial application. However it need not involve an inventive step.

The patent Act only guarantees protection for patents granted by the Thai Department of Intellectual Property, Ministry of Commerce. Therefore, a Thai law does not protect a foreign patent unless it has been registered in Thailand. Moreover, the Department of Intellectual has been filed and has been pending for a year or more or been granted for that invention in another country or if the product design has already been disclosed and publicly circulated in documents or printed material.

Patents are valid for 20 years for patented inventions, 10 years for patented product designs, or 6 years for petty patented inventions and to use the words “Thai Patent” or “Thai Patent Pending” The period of validity commences from the date of application. It may take some time for the application to be considered and the patent approved.

Under certain circumstances a patent holder can give a license or compulsory license may be issued to another party for a patent. This may occur if a patented or patent-pending invention or design is not being produced, sold, or publicly offered or if it is being sold at an unreasonable high price three years after the patent has been issued or four years after the patent application has been pending. The license agreement for and the assignment of the patent must be in writing and must be registered in compliance with the requirements and procedures stipulated in the relevant Ministerial Regulation.

Penalties for infringement of patents registered in Thailand may involve imprisonment for up to two years, a fine not exceeding Baht 400,000, or both.

If the infringing party is a juristic person, the operator or representative may also be subject to punishment unless it can be proved tat the juristic person carried out the infringing activities without the operator’s or representative’s knowledge or consent.

Copyright

Copyright in Thailand are governed by the Copyright Act, B.E. 2537 (1994). The Copy right Act provides copyright protection to a range of creative works, expressed in the form of literature, drama, visual and graphic arts, music, audio-visual works, cinema, sound recordings, sound, video, and other broadcasts, or any other work in the literary, scientific, or artistic domain of the author, irrespective of the mode or manner in which the works are expressed including rights of performers. The Copyright Act provides expanded definitions for each category.

Copyright protection does not extend to steps, processes, systems, organizations, or instructions for use. Nor does copyright protection cover thoughts, principles, findings, or theories in science or mathematics.

The author of a work holds the copyright to that work. The Copyright Act defines “author” as the person who makes or causes to come into being any creative work in which copyright subsist. Under the Copyright Act, the acquisition of copyright is automatic and need not be registered.

Generally the Copyright Act project against infringement by reproducing, adapting, publishing, or renting a copyrighted work. However, the Copyright Act states that certain uses of a creative work, such as for research, education, teaching, or personal purpose do not constitute a copyright infringement.

The Copyright Act stipulates that Thailand will also accord copyright protection under “National Treatment” basis to citizens of and works created or first published within the countries that are parties to international copyright conventions to which Thailand is also a party. Thailand is a signatory member of the Berne Convention for the Protection of Literary and Artistic Works, the World Trade Organization (WTO) and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Under the principle of in general, a copyright is mostly valid for the life of the creator, plus 50 years. When the creator is a juristic person, protection extends for 50 years from the date of creation first publication. The period of protection is reduced to 25 years for applied artistic work.

A copyright can be transferred or assigned either partially to in whole. It can also be licensed to another person for use or for exercising rights in relation to it.

The maximum penalties for copyright infringement are a fine of up to Baht 800,000 a prison sentence of up to four years, or both. Copyright infringement includes reproducing, adapting, or communicating a copyrighted work to the public without the copyright owner’s authorization. It also includes selling, offering for sale, leasing, importing, publishing or distributing unauthorized duplicates of a copyrighted work.

If the offence is committed by a juristic person, all directors and managers must be able to prove that the act of the juristic person was done without their knowledge or consent. If they cannot satisfy the court accordingly, they will be considered joint offenders.

Plant Varieties

The Plant Varieties Protection Act B.E. 2542 (1999) defines a plant variety as “a group of plants with the same or similar genetics and botanical description with constant and fixed specific qualities. The subject must be different from any other group of plants of the same kind. This includes plant stems than can be propagated to obtain a group of plants with those qualities.” The Plant Varieties Act goes on to define certain set features that constitute a plant variety, such as morphology, physiology, or other properties that are the result of the genetic nature specific one plant variety. However, it should be noted that novelty requirements must be met.

Priority date can be claimed based on an overseas application to register a new plant variety, provided that an application is filed in Thailand within one year of the overseas application. This provision only applies to applications filed in countries that would extend the same rights to Thai nationals. The period of protection can last from 12 to 27 years, depending on the plant variety. The validity of the certificate of registration of a new plant variety begins on the date on which the certificate is issued. Annual fees must be paid to maintain the registration.

Right holders can permit anyone to use their rights and can assign the rights to others. Assignment or permission to others must be made in writing and lodged with the competent official. The holder of the rights in a new plant variety has sole right to produce, sell or dispose of, import and export, and hold the propagating material of the new plant variety for the purpose of doing any of those acts.

A person that holds a certificate of registration for a plant variety is expected at some point to sell a propagating material for the plant variety or to sell, at a reasonable price, enough of the plant variety to satisfy public demand in Thailand. If the certificate holder has not done so within three years of obtaining the certificate, other parties may apply for and obtain the rights to that plant variety.

The penalties for infringement of the rights to registered plant variety are a term of imprisonment not exceeding two years, a fine not exceeding Baht 400,000 or both. The same penalties apply to anyone that violates community rights to a local indigenous variety or that fails to obtain permission in respect of general indigenous and forest plant varieties.

The penalties for forging a plant variety registration mark are imprisonment for six months to five years, a fine not exceeding Baht 400,000, or both.

Layout Designs of Integrated Circuits

The Layout Designs of Integrated Circuits Act B.E. 2543 (2000) defines integrated circuits as “ready or pre-ready products that have electronic functionality, either alone or with other products, and that are composed of electronic-pulsing parts and connecting parts that wholly or partly lay upon or within the same product with semi-conductor material. ” Layout-designs are defines as a “…pattern, chart or picture that is created in any form to show the overview of integrated circuits in three dimensions.”

In order to be eligible for registration, a layout-design that has been registered in Thailand. Therefore, a foreign layout-design has no protection under Thai law unless it has also been registered in Thailand. Moreover, if the layout-design has neither been registered nor exploited within 15 years from its creation, it is not eligible for registration in Thailand I a layout-design has already been commercially exploited, in order to qualify for registration in Thailand, an applicant must file a registration application in Thailand within two years from the date of its first exploitation.

A layout-design registration, once conferred, is valid for 10 years from the filing date writing and registered in compliance with the requirements and procedures stipulated.

The penalty for infringement of the rights to a registered layout-design is a fine not exceeding Baht 500,000

Trade Secrets

Generally, there are two types of trade secrets protected under the Trade Secrets Act B.E. 2545 (2002): information and data or test result.

Information includes formulae, technical procedures and designs, compiled or assembled works or business operation methods of which the proprietor normally preserves from disclosure. Information must have commercial value. Information must not yet be widely known or known by people in the trade, The proprietor of the information must also have lawfully taken steps appropriate to the situation to keep the information secret.

Data or test results require considerable effort to appear and are submitted to state agencies as a condition for granting approval to import, export or sell drugs or new agricultural chemical substance.

Generally, infringement under the Act is subject to civil action. Only in certain circumstance will the infringement also be subject to criminal action. All infringement, both civil and criminal under the Act, can be submitted to the Trade Secrets Committee set up under the Act for conciliation or settlement out of court.

The plaintiff or injured party eligible to bring lawsuits is the person who has legitimate control of the trade secret at the time of the infringement, not the proprietor; unless both of them are one and the same person.

The infringement of trade secrets entitles the proprietor to bring lawsuit against the infringers for compensation. Compensation includes the actual damages incurred by the plaintiff, and the legal fees and expense to enforce the case. Infringement can also be subject to criminal penalties. The penalties are up to 1 year imprisonment or fine of up to Baht 200,000, or both

The Intellectual Property and International Trade Court

Prompted in part by its desire to tighten intellectual property rights protection, the government passed the Intellectual Property and International Trade Court Establishment Act (“IP/IT Act”) in October 1996, which laid out the framework for establishing the Intellectual Property and International Trade Court (“IP/IT Court”) The IP/IT Court was established on 1 December 1997.

The government believed that a specialized judicial tribunal was required because intellectual property and international trade cases generally involve more complex technical issues than do other criminal and civil cases. Proponents of the IP/IT Act also felt that such cases should be considered by judges with expertise in intellectual property and international trade. The IP/IT Court is dedicated to resolving international trade disputes efficiently, to prompting technology transfers, and to ensure justice in cases of intellectual property right violations. The IP/IT Court observes different procedures from those set forth in the country’s civil and criminal procedural codes.

Controlling Legislation

The IP/IT Court is empowered under the IP/IT Act, which covers copyrights, trademarks, patents, international sale, financial instruments, international carriage, insurance etc. The IP/IT Court’s criminal rulings depend on criminal offences as defined by Articles 271 of the Penal Code.

For the purpose of expediency and fairness of proceedings, the Chief Justice of the IP/IT Court is empowered subject to the approval of the President of the Supreme Court, to issue rules of the Court, which are not in accordance with the rules of proceedings of other courts, if such rules do not impair the right of defense of an accused in a criminal case.