New Thai Trademarks Act

The new Trade Mark Act was published in the Royal Gazette on 29 April 2016 and will come into force in Thailand on 28 July 2016.  The new Act brings several changes, including the long-anticipated accession to the Madrid Protocol. 

Significant changes under the new Act are :
1. Sound marks: The new Act allows registration of sound marks, provided that they are not directly descriptive of the goods, the natural sound of the goods or the sound arising from the functionality of the goods.
2. Multi-class applications: Multi-class applications will be available.
3. Time frame for dealing with office actions and oppositions: The allowed time frame for dealing with office actions and oppositions will be reduced from 90 days to 60 days.
4. Association of marks no longer required: Association of marks will be abolished. This will affect all associated marks under the previous Act as if they were not registered as associated marks.
5. Partial assignment: Assignment either for the whole or parts of the goods will be allowed.
6. Official fees: Official fees, particularly for filing, registration and renewal will be increased.
7. Renewal grace period: A grace period for renewal of six months from the expiry date will be available. A 20% surcharge of the official renewal fee is required during the grace period.
8. Refilling: The new Act provides an offence for the unauthorized refilling of genuine packaging or container to mislead consumers about the origin of the goods.
9. Madrid Protocol: The new Act allows for international trade mark registration under the Madrid Protocol.  The accession to the Madrid Protocol will require a separate Royal Decree which is expected to be issued in Q4 of 2016.

Digital ISP liability in Thailand

There are several areas where control over netizens is exercised in Thailand. The first is insulting the monarchy, lèse majesté. In 2012 an Internet user was convicted of this when she failed to delete from a forum she administered, allegedly insulting comments. The other is the equally vague issue of free speech. There have been several instances of content removal for this reason. It is said that a lack of Safe Harbour protections for ISPs leave them with uncertain liability and therefore they prefer to take down content without much inquiry. Especially as the 2014 coup and martial law has made them more conservative.
 
2 Digital Economy laws recently passed by the Thai military government make changes. An amendment to the 2007 Computer Crime Act, which makes ISPs liable for offenses such as lèse majesté by their users now provides that ISPs avoid liability only if they can prove that they have complied with the warning and removed the content. In essence it makes removal necessary, to avoid risk. 
 
Another amendment is meant is for copyright. ISPs are not liable if they do not control, initiate or order the infringement. Only a court order can override this. So for copyright the ISP protection is wider than for the free speech areas. ISPs exercising no control, the so called 'public utility' approach escape liability. Only when they start to take on editorial responsibility will liability arise. 

For now trademarks attract no such specific protection. Secondary liability is not specifically set out, but in practice ISPs do comply with IP holder requests.
 
IP Holders and ISPs will like the clarity the amendments bring. But beyond this, it will also helps tackle the problem of online infringement by setting clear borders. Because of the influence of Thailand's control of content deemed inappropriate for royal or free speech reasons, ISPs may still find it easier to take content down than risk liability. Free speech advocates may complain, but Thailand is a country with widespread IP problems that may justify such an approach.  

Thailand IP law and IP department updates

Life in Thailand after the military takeover in May has largely returned to normal. Thailand’s new military government has been very active since it took office officially in September.

There have been numerous amendments to the IP laws. The Copyright Act is to have new provisions on enforcement and technology issues. The Trademarks Act expands trademark protection to non traditional marks and multiclass applications as well as implementing Madrid in Thailand. The Trade Secrets Act sets out amendments to the operation of the Trade Secrets Board. All these are due to be enacted soon. 

The DIP has new Director General, Ms. Malee Choklumlert. She will focus on reducing the backlog of trademark patent and design applications as well as improving pendency generally especially through recruitment of more patent examiners.

Thailand is very focused on its obligations under the proposed ASEAN Economic Community and joining Madrid is a good example of that.  

Thailand trade secrets damages

An article in the Bangkok Post on damages calculations doesn’t sound like usual mainstream media fare. But the article today

looks at this area, and the wrinkles that trade secrets cases have beyond the usual account of profits or compensation calculation based on the Plaintiffs’ losses.

The article points out two scenarios –

1. in many cases an existing product has been on the markets and so historical data on losses can be easily shown

2. if the trade secret breach doesn’t related to an existing product lost profits cannot be shown. Then Thailand’s Trade Secrets Act directs the court to look at other factors such as –

a.    The nature of the misappropriated trade secret

b.    Research and development costs

c.    Competition between the businesses of the plaintiff and the defendant

d.    The size of the markets and other factors which are difficult to quantify.

Thus trade secrets cases end up exploring many other areas of business apart from a straight sales net calculation. 

There is also an additional damages award beyond lost profits in the Thai Trade Secrets Act – it includes punitive damages for willfulness, extra damages for connected acts, even a fine payable to the government.

The article adds that although legal fees are not recoverable, given they are in other IP cases, they should be for trade secrets.

IP Komodo will publish some data on the Thai IP courts' caseload in the new year.