Thai IP court gets tough on infringers

Thailand

Two decisions issued by the Thai Intellectual Property and International Trade Court (IP Court) seem to signal a new regime of harsher punishment for convicted counterfeiters. The court has been the target of criticism, particularly from foreign commentators, suggesting that the sentences imposed on offenders have been too lenient and have done little to curb counterfeiting in Thailand.

The IP Court was created in 1997 and has been seen as an important milestone in the development of the Thai intellectual property enforcement regime. However, the court has been criticized for failing to impose harsher sentences on convicted counterfeiters, particularly as Thailand has continued to appear on the United States Trade Representative's (USTR) Special 301 Watch List that highlights countries with high incidences of counterfeiting and other intellectual property right infringement. Indeed, the USTR stated in its 2002 trade report on Thailand that "a cultural climate of leniency" offsets the efficacy of high conviction rates. The court is under further pressure because the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), of which Thailand is a signatory, requires member countries to enforce criminal penalties that create a deterrent effect.

Typically, punishment for first-time offenders in Thailand has amounted to a suspended prison sentence, forfeiture of infringing goods and nominal fines. It is rare for a convicted infringer to have ever spent time in jail. However, in the face of the increasing criticism, the IP Court has issued two decisions in trademark counterfeiting criminal prosecutions that may herald a new willingness to mete out truly deterrent judgments.

In the first case (Red Court Case 2208/44), police acted on a complaint from Levi Strauss & Co against two individuals - Maliwan Katanyoo and Nittaya Sanguanphonpirog - for their part in the manufacture of counterfeit Levi's clothing. At trial, the court imposed a fine of Bt700,000 (well over the maximum fine of Bt400,000 suggested in the Trademark Act) and a sentence of four years imprisonment. Because the defendants pleaded guilty, the sentence was reduced to two years and the fine cut to Bt350,000. However, the court took note that Sanguanphonpirog had a prior conviction for a similar offence, and thereafter increased her fine by one-third to Bt466,667 pursuant to Section 92 of the Penal Code of Thailand. This judgment shows that the court, when properly motivated, will strictly punish repeat offenders.

In the other complaint, again initiated by Levi Strauss (Red Court Case 977/46), against an individual named Pairoj Joiloi, police netted a record seizure of 109,178 counterfeit Levi's clothing products. At trial, the court imposed a sentence of eight months imprisonment, reduced to four months following a guilty plea. Although not a particularly lengthy sentence, it is significant that the court did not order a suspension.

It will be interesting to monitor events over the coming months, to see whether these judgments truly signal a growing recognition on the part of the Thai judiciary that trademark infringement must be treated as a serious offence.

Edward J Kelly, Tilleke & Gibbins International Ltd, Bangkok

Get unlimited access to all WTR content