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Protection of IPRs and Litigation over IP Cases in Thailand

Visit SripiboolWaseda University, Japan

12 October 2005

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Thailand IP LawThailand IP Law1. Copyright Act2. Trademark Act3. Patent Act4. Trade Secrets Act5. Geographical Indication Protection Act6. Plant Varieties Protection Act7. Protection of Layout-Designs of

Integrated Circuits Act

8. Thai Traditional Medicine and Local Knowledge Protection and Promotion Act

9. The Production of CDs Product Act

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Copyright

• Infringed Work – Cartoon– Game– Computer Program– Musical Work– Book

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Copyright Cases

• Non copyrighted work– Superman (JSC 368/1969)– Winnie the Pooh (JSC 2000/2000)

The creative idea of a cartoon inspired by the beauty of natural animals was not protected

• Copyrighted Work– An Elephant Roundup Ceremony

Painting (JSC 3240/2000)

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Copyright Cases

• Infringement Action– The Photocopy Shop copied

excerpts from books, and produced 43 packs of compiled excerpts for the student who needed the copies for research or study of the university nearby to buy not fair use (JSC 5843/2000)

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Trademark

• Infringed Trademark – Mobile Accessory– Car Parts– Medicine– Women Accessory

• Louis Vuitton• Christian Dior• Ferragamo

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Trademark Cases

• “SONY IMPEX” identical with or similar to “SONY” (JSC 542/2003)

• The mark “ ” is the 2 dimensional picture

(height and width) ,therefore is not shape and configuration (3 dimensional – depth, height and width) but such mark was the invented picture can be registered as a trademark (JIP&ITC IP.66/2004)

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Patent

Infringed Goods v. Genuine Goods

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Patent Cases

• White Kwao Krua (Pueraria mirifica)Thai Herb, White Kwao Krua is the ingredient for Thai

traditional medicine. The dried White Kwao Krua will be sliced and blended with the other herb, used for prolong life and strengthen body.

The recipe in dispute which is the blend of White Kwao Krua and the other herbs is not the new invention but traditional knowledge of the Thai people not patentable (JIP&IT IP 131/2002)

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Trade Secrets Cases2 cases were filed to the CIP&IT Court now

1. Disclosure of the Consumer list without the consent of the owner in a manner contrary to honest trade practices

2. The usage of Trade Secrets “the Japanese Sauce”

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Registration of IP

• Registration as the Condition for the Protection– Trademark – Patent

• Registration of Copyright– is evidence that the work is

protected by copyright and that the person registered, are the owner

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Registration of IP

• Registration of GIs– For the protection of

manufacturers and public

– Thai Jasmine Rice Hommali Rice

– Petchaboon Tamarind

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Licensing Agreement

• Verbal / Implied / Written Agreement– Copyright

• Written Form + Register with Department of Intellectual Property– Trademark – Service Mark

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Litigation over IP Cases In Thailand

1. Institute the case before the court• Civil and / or Criminal Cases• By public prosecutor or injured person • To the Central IP&IT Court, appeal to

the Supreme Court2. Alternative Dispute Resolution

• Negotiation• Mediation in court / out court• Arbitration

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Institute IP Cases 2 ways

1. Public Prosecutor enters a charge to the court

Injured Person

Police Officer

Public Prosecutor

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Protection of IPRs 2 ways

2. Injured Person himself institutes the case

Injured Person

Criminal CaseAnd / orCivil Case

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IP Law of Thailand and the other Asian Countries

• Thailand the injured person can himself bring the criminal case

• Singapore / Indonesia / China only the government authority can bring the criminal case

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Malaysia• Copyright copyright law is not concerned with the

reproduction of ideas, but with the reproduction of the form in which ideas are expressed. The plaintiffs' claim for copyright infringement failed since they were seeking to protect the idea of the function of the tyre and not its artistic value. (Goodyear Tire & Rubber Co. & Anor. v. Silverstone Tire & Rubber Co. Sdn. Bhd.1994)

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Malaysia

• Franchising under Franchise Act 1998• Trade Secrets protected under Contract

Act 1950

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Philippines

• Granting the registration of the discovery of micro-organism

• Thailand naturally occurring microorganisms and their components are not protected under the Patent Act (art 9.)

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Vietnam

• The IP cases is under the Civil and Commercial Code

• The IP Law is drafting

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India

• Copyright sixty years after the death of the author

• No Trade Secrets Law

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New Trend of Thai IP Law

• Copyright infringement will be non compoundable offence

• One half of the fine paid in accordance with the judgment will not be paid to the copyright owner

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New Trend of Thai IP Law

• The Collecting Society for copyrighted works

• Copyright Infringement in the digital environment

• The protection of sound and scent marks are discussed

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• Thailand is the IP protection countries.This year 180,300 itemsof the infringed good, worth 37,596,715 baht were destroyed.

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