Thailand has laws protecting the rights of copyright, patent and trademark holders, but the law is in need of much improvement. Enforcement is still a cause for much concern, and is a significant bilateral issue. Large quantities of infringing goods continue to be sold at the retail level.

Since November 1994, Thailand has been on the Special 301 "watch list". In September 1996, theThai Parliament passed a long-awaited law establishing an intellectual property and international trade court, which began operations in December 1997. Appeals procedures at the trademark and patent offices have also been streamlined.

Although allegations of irregularities continue to undermine confidence in local police authorities, co-operation and co-ordination among enforcement officials improved with the creation of an intergency committee on the suppression of IPR piracy. This committee unfortunately was mandated for only a year of operation, but the Thai government is now offering assurances that it will be made permanent.

PATENTS

Thailand promulgated its first patent law, the Patent Act, in 1979, with significant amendments added in 1992. The Act protects both inventions and product designs and pharmaceuticals. Thailand has numerous bilateral agreements enabling citizens of other countries to file patent applications in Thailand. However, Thailand is not a signatory to the Paris Convention for the Protection of Industrial Property nor a signatory of any other international convention for reciprocal protection of patents.

In December 1997 a new intellectual property and international trade court began operations, which has significantly improved enforcement. Appeals procedures at the trademark and patent offices have also been streamlined.

INVENTION PATENTS

For an invention to be patentable, it must

Therefore, the following would not qualify for patents:

– An invention widely known or used by others in Thailand before the filing of the patent application

– An invention, the subject matter of which was described in a document or printed publication, displayed or otherwise disclosed to the public, in any manner, whether inside or outside Thailand, and whenever the disclosure is by document, printed matter, exhibition or public disclosure by any means whatsoever *

– An invention that has been granted a patent inside or outside Thailand prior to the date of the patent application

– An invention that is the subject of an abandoned application in Thailand. This provision does not affect the rights of co-inventors and others who did not apply for such patent shall not be affected

– An invention for which an application for a patent was filed in a foreign country more than 12 months prior to the date of the patent application, the foreign patent not having been issued.

The revised Patents Act provides that the following are not patentable:

PATENTABLE PRODUCT DESIGNS

A product design must be novel in order to be patented: i.e., it must not fall under any of the following conditions:

PRODUCT DESIGNS WHICH ARE NOT PATENABLE

ELIGIBILITY

An inventor or product designer has the right to apply for a patent, as does a successor or assignee of the right. An assignment must be made in writing, signed by both the assignor and the assignee.

If, during the course of employment, an employee or contractor creates an invention or product design, the right to apply for a patent belongs to the employer unless otherwise provided by agreement.

The Patent Act requires that an applicant for a patent must be a Thai national or a national of a country which allows persons of Thai nationality to apply for patents in that country.

The patent holder or applicant is entitled to the following rights:

A patent for an invention is valid for a period of 20 years from the date of filing the application; a patent for a product design is valid for a period of 10 years from the date of filing the application. The time during which court proceedings regarding the issuance of the patent are in process may be excluded

During the period of the validity of the patent, the patent holder has the exclusive right to produce, use, sell, have for sale, offer for sale and import the patented invention or design. Any act performed before the patent is granted, that would otherwise constitute an infringement of the patent, is not deemed an infringement

A patent holder has an exclusive right to use the words “Thai Patent”, or an abbreviation or translation thereof

A patent holder may assign the patent to another holder

A patent holder may grant a license to another person, subject to restrictions:

Any assignment or license must be in writing and officially registered.

COMPULSARY LICENSES

To discourage monopolies and the acquisition of patents simply to prevent other persons from manufacturing or producing the patented inventions or product designs, Section 46 of the Patent Act provides that:

At any time after the expiration of three years from the grant of a patent or four years from the date of filing an application for a patent, any person may apply to the Director-General for a compulsory license if, at the time of the application, it appears that:

CANCELLATION OF PATENTS

A patent may be canceled under the following conditions:

Although a patent has been granted, any person who has an interest in the patent or the public prosecutor may challenge its validity by petitioning the Court for cancellation

The Director-General may ask the Board of Patents to cancel a patent in the following cases:

Before requesting the Board to cancel a patent, the Director-General shall order an inquiry and notify the patentee and licensees to submit their briefs within 60 days from the date of receipt of notification. The Director-General may summon any person to make statement or deliver any additional documents or items.

FORIEGN PATENTS

A foreign patent that has not been granted a separate patent in Thailand receives no protection under the Patent Act. However, foreign patent holders or owners of rights to inventions or designs in foreign countries may enter into business transactions with parties in Thailand and seek equivalent protection through contractual obligations in the form of a licensing agreement.

Since foreign patents, inventions and designs receive no protection under the Patent Act, no civil or criminal action can be taken against a third party who produces products or sells a patented product in Thailand without paying fees to the holder of the foreign patent or who applies in Thailand for a patent on an invention or design already patented in other countries. Nevertheless, legal solutions to such conflicts may be available under separate legislation.

* Disclosure of the essentials or specifications due to or in consequence of an unlawful act, or disclosure of essentials or specifications by the inventor, including display of the inventor's work at an international exhibition or an official public exhibition provided such disclosure occurred within the period of 12 months prior to the date of filing the patent application shall not be deemed to be disclosure under subsection 2.

COPYRIGHTS

The Copyright Act of 1994 protects literary, artistic works, and performance rights by making it unlawful to reproduce or publish such works without the owner's permission.

WORK SUBJECT TO COPYRIGHT

The Copyright Act protects works in the categories of literary work, including computer programs; dramatic, artistic and musical work; audiovisual material, cinematic film, recorded material; disseminated pictures or disseminated sound; or any other works in the fields of literature, science or fine arts.

The Copyright Act protects computer software against reproduction or adaptation, publicity and rental of such software. Algorithms are not, however, protected.

The “copyright” as defined by the Act means “the exclusive right to take any action concerning the work created or made by the creator”. The Act also defines the word “creator” as meaning the person who does the work or creates the work, as defined by the Copyright Act.

A copyright belongs to the creator of a work, subject to the following conditions:

In the case of unpublished work, the creator must be of Thai nationality or reside in Thailand or be a national of or reside in a country which is a member of the Convention on the Protection of Copyright, of which Thailand is a member, provided that the residence at all times or most of the time is spent on the creation of the work

In the case of published work, the first publication must be made in Thailand or in a country that is a member of the Convention on the Protection of Copyright. In the case where the first publication was made outside Thailand or in a country which is not a member of the Convention, the work created must have been published in Thailand or in a country which is a member of the Convention within 30 days from the first publication, or the creator must have the qualification as prescribed above at the time of the first publication.

In cases where the creator is required to be a person of Thai nationality, and the creator is a juristic person, such juristic person must be established under the Civil and Commercial Code of Thailand.

COPYRIGHT INFRINGEMENT

The Copyright Act includes a comprehensive list of the types of infringement covered by law:

Infringement by reproduction. The Act defines the word “reproduction” as follows: “Reproduction includes copying by whatever means, imitating, duplicating, making printing blocks for, recording the sound of, taking pictures of, or recording the sound and taking pictures in substantial parts of the originals, from copies or from the publication, regardless of whether made in whole or in part.”

Infringement by adaptation. Adaptation, as defined by the Act, means a reproduction by conversion. Modification or emulation of the original work for the substantial part without a character of creating a new work whether wholly or partly.

Infringement by publicizing without permission - It is an infringement of copyright to publicize a work without the consent of the copyright owner. “Publicize” means “present to the public by showing, lecturing, praying, playing, presenting with by sound and/or picture, constructing, distributing, selling, or by other means, the works done or created.” The word “public” refers to the person or persons who are present, and not to the place where the performance occurs. A performance will not be regarded as being carried on in public if it is restricted to family and friends of the performer or whoever is responsible for the performance.

Infringement by producing audiovisual material, cinematic film, recorded material or dissemination of sound or picture or by rebroadcasting of sounds and visual images, wholly or in part, or arranging for dissemination of sound or picture in public with commercial purposes

EXCEPTIONS

Under the Act, any act that might ordinarily be deemed copyright infringement may not be so deemed if done for the following purposes:

In addition, citing, copying or imitating certain parts of the copyrighted works under the Act, with recognition of the copyright ownership of the work, shall not be deemed to be copyright infringement.

The Act also entitles librarians to reproduce works copyrighted under the Act, provided that complete reproduction is not done for commercial purposes.

WORK NOT SUBJECT TO COPYRIGHT UNDER THE COPYRIGHT ACT

The Act specifically provides that the following are not deemed eligible for copyright protection:

INTERNATIONAL COPYRIGHT

The Copyright Act of 1994 protects copyright works of a creator and the rights of a performer of a country party to conventions on copyright protection or conventions on performance rights protection to which Thailand is a party, or for works copyrighted under international organizations of which Thailand is a member.

LICENSING AND ASSIGNMENT OF COPYRIGHTS

The 1994 Act provides that a copyright owner is entitled to grant licenses to another person to use or exercise rights with respect to his copyrighted work. The Act requires that an assignment of copyright by means other than inheritance must be made in writing and signed by the copyright owner and the assignee. In the event the assignment is made without specifying the assignment period, the assignment shall be valid for 10 years. In the event of an assignment of a copyright, the creator of the copyrighted work retains the right to forbid the assignee to distort, delete from, adapt, or act otherwise in any manner against the work if such act would cause damage or injury to the reputation or prestige of the creator.

COPYRIGHT PROTECTION PERIOD

A copyright in literature, drama, artistry or music is valid throughout the lifetime of the creator, and for an additional 50 years thereafter. In the event the creator is a juristic person, the copyright will be valid for a period of 50 years following the creation of the work. The copyright for applied artistic work is valid for a period of 25 years following the creation of the work.

PENAL PROVISIONS

Persons who commit copyright infringement by means of reproduction without permission from the copyright owner may be fined 20,000 to 200,000 baht. If the copyright infringement was committed for business purposes, the offender may face punishment of imprisonment for a term from six months to four years, or a fine from 100,000 to 400,000 baht, or both.

TRADEMARKS

The Trademark Act of Thailand of 1991 governs registration of and provides protection for trademarks. The Act defines a trademark as a symbol used in connection with goods for the purpose of indicating that they are the goods of the owner of the trademark. The trademark must be “distinctive” and not identical or similar to those registered by others, and must not be prohibited by section 8 of the Trademark Act of 1991.

REGISTRATION PROCEDURE

A trademark application must be completed by the proprietor or his agent, in Thai, and filed with the Trademark Office on official forms. The proprietor or his agent must have a place of business or address in Thailand at which he can be contacted by the Trademark Office.

If the Trademark Office deems the trademark registrable, and provided that no opposition to the trademark arises within 90 days of its publication in the official journal, the Trademark Registrar will grant a trademark registration.

TRADEMARK REGISTRATION PERIOD

Trademark registration is effective for a period of 10 years. Owners of trademarks must file an application for renewal at least 90 days prior to the expiration of their current trademark registration. A renewed trademark will be effective for an additional 10 years.

A trademark may be registered even if it is not being actively used. However, failure to utilize the trademark entitles third parties to challenge the rights of the trademark owner.

PENAL PROVISIONS FOR TRADEMARK INFRINGEMENT

The owner of a registered trademark has the exclusive right to use the trademark, and may initiate legal action against violators. It is a criminal offense to represent a trademark as registered when it has not been legally registered, or to sell, possess for sale, or bring into the Kingdom objects under such a pretense. This offense is punishable by imprisonment of up to one year or a fine of up to 20,000 baht, or both. Presenting false evidence while registering a trademark is liable to a term of imprisonment not exceeding six months or a fine not exceeding 10,000 baht, or both.

Anyone who forges another person’s trademark, registered in the Kingdom, or who sells, possesses for sale, or brings into the Kingdom objects with a forged trademark, shall be punishable by imprisonment not exceeding four years or a fine not exceeding 400,000 baht, or both.

Anyone who imitates another person’s registered trademark in order to mislead the public into believing the imitation mark is that of the registered owner, or who sells, possesses for sale, or brings into the Kingdom objects with an imitated trademark, will be punishable by imprisonment not exceeding two years or a fine not exceeding 200,000 baht, or both. Whoever repeats these offenses within a five-year period is liable to double punishment.

THE BOARD OF TRADEMARK COMMITTEE

In 1991, the Board of Trademarks was established to have the power and duties specified hereunder:

SERVICE MARKS, CERTIFICATION MARKS AND COLECTIVE MARKS

As of February 1992, these variations on trademarks are covered under all the provisions the Act and, hence, receive the same protection as trademarks under the law. In the case of service marks, all the words “goods” mentioned in the Act's provisions shall mean “services”.
Certification Marks.
Applicants for certification marks must forward a copy of the regulations concerning the use of the certification mark together with the application for registration and demonstrate that they are well qualified to certify the merits of the goods or services.

The owner of a registered certification mark shall not use it for his own goods or services and shall not license any third person to grant certifications to use the mark, although they may license a third person to use the certification mark themselves. If they violate this rule, they are subject to a fine not exceeding 20,000 baht.

The regulations concerning the use of the certification marks must: