In early 2022 Thailand’s Department of Intellectual Property issued its new examination guidelines for trademark registration, replacing the previous guidelines dating from 2011. The new guidelines seek to ensure that the examination of trademark applications and the issuance of notifications by the trademark registrar are efficient, timely, in line with current practice and based on uniform standards. One of the major issues addressed in the new guidelines, which will be of interest to brand owners, is the distinctiveness of trademarks consisting solely of three/four letters or of numerals. Section 7 of Thailand’s Trademark Act states that a trademark containing a stylised letter or numeral as an essential element is distinctive. In the past, the trademark registrar interpreted this stipulation as meaning that marks made up solely of three/four letters or of numerals, which did not form words or could not be pronounced as words, were not registrable if they were not presented in a stylised form. Under the new guidelines, however, the Trademark Act’s wording “a stylised letter or numeral” is interpreted as referring to a letter or numeral (in any language) represented in an unusual manner. Moreover, the new guidelines state that an uncommon sequence of three or more letters or numerals (or a combination thereof) is in fact distinctive and registrable. One notable exception to the new standard is that marks that are descriptive of the nature or characteristics of the goods or services are not considered distinctive. The new guidelines provide several examples of marks that would be unregistrable for this reason, such as B12 for vitamins, XXL for clothing, 34B for bras, or 32GB for memory cards. The new guidelines also clearly state that the phonetic transcription of letters or numerals in Thai characters is not considered distinctive. Nonetheless, brand owners still have the right

Since the onset of the COVID-19 pandemic and the ensuing safety measures, many Thai retailers have shifted their sales toward online platforms. Unsurprisingly, counterfeiters have followed suit. The online sale of counterfeit healthcare and other life sciences products (e.g., food, cosmetics, and medical devices) is an area of significant concern, as it is particularly prevalent, damaging, and complex in relation to Thailand’s laws. This article outlines this type of counterfeiting activity in Thailand and explains some important tools brand owners have for fighting it. Counterfeiting Operations Although illicit operations seek to avoid being identified by authorities and brand owners, investigations by law enforcement and Tilleke & Gibbins on behalf of clients have yielded some insights into how these illegitimate sellers typically operate. Often, consumers are first exposed to these counterfeit life sciences products by paid social media advertisements that link to social media accounts set up by sellers impersonating brand owners. This brand impersonation may include unauthorized use of a trademark or trade name as part of the account name, and unauthorized reproduction of official advertisement artwork or product descriptions, taken directly from the official social media account. From the fake social media account, consumers are usually directed to a merchant website that contains consumer reviews, which are entirely fabricated. While not every counterfeiting operation follows this exact blueprint, employing some variation of these methods lends counterfeiting platforms the ability to proliferate through multiple iterations, as well as believability in the eyes of consumers. How Brand Owners Can Take Action Life sciences brand owners often discover that their products have been targeted by counterfeiters when a counterfeit item injures or negatively impacts a consumer. Thinking that the product is genuine, the consumer may then complain to the brand owner, or worse, file a complaint with the authorities. Many times

Trade dress, which refers to the visual appearance of a product and packaging, as well as the product’s placement at its point-of-sale (store layout), was at the center of an infringement case that recently obtained the highest damages award ever given for a trademark case in Thailand. Trade dress is an important branding consideration because it can create a commercial impression and enable the public to recognize the original source of goods and services, distinct from other traders. Trade dress comes in many different forms, but only a few of them find solid protection in Thailand, and only through creative use of existing intellectual property protections. For instance, a unique packaging design in the form of an unfolded paper box could be eligible for trademark registration. A distinctive product configuration or external design of a container might be eligible for registration as a three-dimensional trademark, or even as a design patent if it features lines or colors giving a special appearance to a novel product that has an industrial application. In addition, a product’s configuration could be subject to copyright protection as a “sculpture work” if it shows a figure with tangible volume. However, in Thailand, trade dress does not yet receive explicit recognition under the country’s Trademark Law—unlike in some other jurisdictions whose trademark laws permit the registration of trade dress. The protection and enforcement of trade dress in the form of “store layout” in particular has been a constant challenge in Thailand, given the lack of explicit laws and precedence. Consequently, brand owners may have a hard time protecting their trade dress in relation to their creative and unique store layout designs, despite a great deal of effort and financial investment. But now this appears to be changing: In December 2021, Tilleke & Gibbins successfully secured a

For years, an inadequate compensation mechanism has been a limitation in resolving IP infringement disputes in Vietnam through civil measures. This limitation was once again highlighted in an appellate trial at the Superior People’s Court of Ho Chi Minh City on February 21, 2022, in which the appellate court reviewed a judgment of the People’s Court of Ho Chi Minh City dated April 28, 2021. Outline of the Case The facts of the case are quite simple. A Ho Chi Minh City-based company that provides educational equipment was discovered by the Inspectorate of the Ministry of Culture, Sports and Tourism to be using, without authorization, a specialized computer program from a company based in the United States. The inspection agency issued a decision to administratively sanction the Vietnamese company. The sanction included a small fine of VND 30 million (approximately USD 1,315) and the forced removal of the infringing computer program, which the infringer readily complied with. Thus, the administrative aspect of the case was completed. The company behind the software then filed a civil case against the infringer at the People’s Court of Ho Chi Minh City. Among the plaintiff’s claims, the most important was the amount of compensation for damages: over USD 500,000, equivalent to the value of the full-module computer program that was found to be illegally installed and copied on the defendant’s computer. In fact, the plaintiff has sold software licenses for this full module version through resellers in Vietnam for the same amount. In addition to claiming compensation for damages, the plaintiff also demanded that the defendant make a public apology and pay an additional VND 300 million (USD 13,150) to cover the plaintiff’s legal fees. Court Judgments The first-instance court determined that the defendant had indeed infringed the IP rights of the plaintiff