Despite frequent raids on vendors of counterfeit products, pirated products are still sold in Thailand. To more effectively combat piracy, Thailand's Department of Intellectual Property, Ministry of Commerce ("DIP"), has proposed amendments to current copyright and trademark laws which, if adopted, will bring more offences under the umbrella of the law.
Laws currently enforced to control these activities, the Copyright Act B.E. 2537 ("Copyright Act") and the Trademark Act B.E. 2534 as amended by the Trademark Act Volume II B.E. 2543 ("Trademark Act"), only stipulate punishment for persons who manufacture, distribute, obtain for distribution, offer for sale or import counterfeit products.
The DIP's proposed amendments to sections of the Copyright Act and Trademark Act aim to strength the enforcement of anti-counterfeit laws by broadening the scope of punishable offences to include buying or possessing counterfeit products and allowing the distribution of these imitations on one's premises.
The essence of the recommended changes are described below.
Purchasing or possessing counterfeit goods
The DIP has recommended that under both the Copyright Act and Trademark Act a person who knowingly buys or possesses counterfeit products, or should reasonably have known they were buying or had bought such products, shall be subject to a fine of 1,000 Baht or ordered to do community service or public interest work.
Renting out premises for the conduct of any act that violates the intellectual property rights of others
Under the draft amendment, a lessor who knowingly rents out, or should reasonably have known they were renting out, premises used for the sale of, offering for sale of, and/or possessing for sale of counterfeit products shall be liable to the following penalties:
Under the Copyright Act - imprisonment for at least three months or up to two years or fined from 50,000 baht to 400,000 baht, or both.
Under the Trademark Act - (a) Trademark forgery - imprisonment from two to four years or fined from 200,000 baht to 400,000 baht, or both; and (b) Trademark imitation - imprisonment of between six months and two years or fined from 50,000 to 200,000 baht, or both.
It is worth noting that the draft amendment is vague as to whether the term "lessor" includes the legal owner of the property, or if the legal owner should also be subject to punishment if the sub-lessee is found guilty of such acts.
The DIP is still in the process of submitting the draft changes to the working committee responsible for amendments to enacted laws, who will rectify any flaws prior to proposing the draft to the cabinet for consideration and then to parliament for final approval. This whole process will take a considerable amount of time, but if the draft amendment is approved by the cabinet ministers and parliament respectively, and is subsequently enforced, the eradication of intellectual property rights infringement will, arguably, become more effective.
However, in the author's opinion, this draft amendment may be opposed by consumers due to the ambiguity of some wording. For example, the exact number of counterfeit products possessed by the consumer is not stipulated and it is unclear whether possession that is not for distribution would be a violation.
The current draft also poses problems for lessors because not only is this group vaguely defined, its legal duties are also unclear. For example, it is unclear whether lessors are obligated to diligently check and ensure the rented premises are not being used in the counterfeit goods industry. Furthermore, the draft amendment does not clearly state whether or not rented premises also includes space on Internet websites.
While the DIP's draft amendments are certainly a step towards eradicating counterfeit products, these practical problems must also be solved if the war against piracy is ever to be won.
For inquiries related to this Client Alert, please contact:
Anurag Ramanat (firstname.lastname@example.org)
Wanchai Raksirivorakul (email@example.com)