Piracy Prevention at the Thai Border gets a New Look
Tanakrit Tangburanakij, Praewpan Hinchiranan, Baker McKenzie (Bangkok Office) (Thailand)
Following the ratification of the Regional Comprehensive Economic Partnership (RCEP) by Thailand, which recently came into force in January 2022, the Thai Cabinet approved the draft Notification of the Ministry of Commerce (MOC) re: Determination of Goods Infringing Trademark and/or Copyright to be Prohibited for Export, Import and Transit through the Kingdom (“Draft Notification of the MOC”) in January 2022. It aims to promote the measures on prevention and suppression of counterfeit and pirated goods at the border, and will bring Thai laws regarding prohibited goods for import/export in line with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (particularly Part 3: Enforcement of Intellectual Property Rights, Section 4: Special Requirements Related to Border Measures), and the RCEP (particularly Chapter 11: Intellectual Property, Section J: Enforcement of Intellectual Property Rights, Subsection 3: Border Measures).
Although Thailand already has regulations and measures implementing bans on the import/export of counterfeit and pirated goods effective as of 1987 and 1993 (“Current Regulations”), the Draft Notification of the MOC is intended to consolidate the Current Regulations, which are separately incorporated in various different legislations, into one all-encompassing legislation. Although the full texts of the Draft Notification of the MOC are not publicly available yet, it holds the following significant points:
- The Current Regulations are to be replaced with the Draft Notification of the MOC.
- Goods infringing trademarks and/or copyrights are prohibited to be exported, imported and transited through Thailand.
- In order to enable the inspection of suspect goods, owners of trademarks and/or copyrights are entitled to directly notify the Customs Department of their trademark or copyright particulars (Customs recordal), instead of notifying to the Department of Intellectual Property (DIP) under the Current Regulations. The new criteria, procedures and conditions regarding the Customs recordal will be prescribed and enforced by the Customs Department upon/after the effective date of the Draft Notification of the MOC. As far as it could be checked, the new criteria, procedures and conditions are now in the drafting process. It remains to be seen whether the right owners, who already recorded their Thai-registered trademarks under the Current Regulations, will be required to re-record the same with the Customs Department following its new criteria, procedures and conditions regarding the Customs recordal.
Other than the above, it is foreseen that the Draft Notification of the MOC would maintain the key provisions including, among others, rights of trademark/copyright owners to request for detention and inspection of goods, procedures of the detention and inspection of goods, as well as liabilities of right owners in case of any damage incurred to exporters, importers and/or the Customs Department, as presently stipulated in the Current Regulations.
Nevertheless, under the Draft Notification of the MOC, more clarity can be expected of the provisions than those set out in the Current Regulations in order to assist trademark and/or copyright owners in protecting their rights at the border. In any case, to protect trademarks/copyrights at the borders, the right owners are encouraged to proceed with Customs recordal of their rights.
The content of the Draft Notification of the MOC is currently being reviewed by the Council of State and will be subsequently published in the Government Gazette, after which it will come into effect 90 days from the publication date. It is anticipated that the Draft Notification of the MOC will be published soon, likely by the end of the first quarter of 2022.