Fight against counterfeiting to be strengthened under proposed amendments

As part of the country's fight against counterfeiting, Thailand's Department of Intellectual Property has proposed amendments to the copyright and trademark laws.
The current Copyright Act (BE 2537) and Trademark Act (BE 2534), as amended by the Trademark Act (Volume II BE 2543), provide only that individuals who manufacture, distribute, obtain for distribution, offer for sale or import counterfeit products will be subject to punishment.
The proposed amendments aim to strengthen the enforcement of anti-counterfeiting laws by broadening the scope of punishable offences to include:
  • buying or possessing counterfeit products; and
  • allowing the distribution of counterfeit products on one's premises.
Moreover, the DIP recommended that both acts be amended to provide that a person who knowingly buys or possesses counterfeit products, or should reasonably have known that the goods in question were counterfeit, will be subject to a fine of Bt1,000 or be ordered to carry out community service or public interest work.
Under the draft amendments, renting premises for the conduct of any infringing activity will be prohibited. Moreover, a lessor which knowingly rents out, or should reasonably have known that it was renting out, premises used for the sale, offering for sale and/or possessing for sale of counterfeit products shall be liable to the following penalties:
  • Under the Copyright Act - imprisonment for a term of no less than three months and up to two years, and/or a fine ranging from Bt50,000 to Bt400,000.
  • Under the Trademark Act:
    • a term of imprisonment of two to four years and/or a fine from Bt200,000 to Bt400,000 for trademark forgery; and
    • a term of imprisonment of six months to two years and/or a fine ranging from Bt50,000 to Bt200,000 for trademark imitation.
However, the draft amendments do not clarify whether:
  • the term 'lessor' includes the legal owner of the property; and
  • 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 the law. The committee will rectify any flaws before presenting the draft to cabinet ministers for consideration and to Parliament for final approval. The whole process is expected to take a considerable amount of time. However, if the draft amendment is approved by the cabinet and Parliament, IP rights owners should be able to enforce their rights in Thailand more effectively.
Nevertheless, the draft amendments may be opposed by consumers because of the ambiguity of the wording. For example, the law does not stipulate the exact number of counterfeit goods that a consumer must have in his or her possession to be found guilty under the law. Moreover, it is unclear whether possession of counterfeit goods for personal use only will fall within the scope of the law.
In addition, the draft does not clearly define the term 'lessor' and does not clarify the legal duties of lessors. For example, it is unclear whether lessors are required to ensure that rented premises are not being used for counterfeiting activities. Furthermore, the draft amendments do not clearly state whether rented premises include internet websites.
Although the draft amendments represent a step forward in the fight against counterfeiting, these practical problems must also be solved.
Anurag Ramanat and Wanchai Raksirivorakul, JSM, Bangkok

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