You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

September 3, 2019

IP&IT Court Awards Historic Patent Damages as Thailand Strengthens IP Protection

Subscribe to Updates
Informed Counsel

A steady increase in the number of companies transferring their IP assets to Thailand has seen an increase in the need for these companies to rely on the courts to protect their complex scientific and technological advancements. Recent developments have seen Thailand’s court system rising to the challenge, using international standards of protection including:

  1. robust injunctive relief to stop infringement of their IP; and
  2. substantial increases in compensation to cover damages sustained and legal fees, including a record high award for patent infringement in 2019.

By ensuring proportional responses, these developments in the court are encouraging for the promotion of fair competition in business and R&D investment.

Advancement in IP Protection by the IP&IT Court   

The Central Intellectual Property and International Trade Court (IP&IT Court) has jurisdiction over IP disputes in Thailand. As Southeast Asia’s first dedicated IP-specialized court, established in December 1997, the IP&IT Court drives development of the Thai IP regime by serving both domestic and foreign IP owners from all industries, including those handling complex technologies. Some of its key attributes are detailed below.

  • Specialized judges: In recent years, the IP cases handled by the IP&IT Court have become more complex due to the steady pace of technological developments in Thailand and increased foreign investment. Judges of the IP&IT Court specialize in IP and are well versed in this body of law. They are well positioned to analyze the ramifications of new technologies and grant fair judgments on the cases brought before them. A heavier IP caseload led to enhancement of the appeal system in October 2016, when a Court of Appeal for Specialized Cases was established, further shortening the time needed to attain final judgments in IP cases.   
  • Associate (expert) judges:  The professional judges on the IP&IT Court are advised on technological issues by “associate judges.” These judicial officers, appointed by the Judicial Commission, are experts in many technological and business fields, including engineering, science, pharmacy, and more.
  • Expert witnesses: Foreign and local experts in academia or business can provide expert testimony on the relevant technological issues.
  • Mediation: After a complaint is submitted, parties have the option of pursuing mediation at the IP&IT Court rather than traditional court proceedings. Mediation is one effective means of resolving a case involving complex technologies. The process is convenient and uncomplicated, and is handled by experienced mediators—often senior personnel from government offices, academia, or other trustworthy organizations.
  • Closed hearings: Where necessary, parties may apply for closed court proceedings to protect the confidentiality of sensitive information.

Effective Civil Procedures

Since the establishment of the IP&IT Court in December 1997, the majority of its cases have been criminal cases.        In recent years, however, the number of civil cases has increased significantly. Several IP owners have successfully protected their valuable IP rights through effective civil procedures at the IP&IT Court, and this route has therefore become quite popular among IP owners.

Some of the highly effective orders available under civil procedural rules include:

  • Preliminary injunctions: A preliminary injunction requires an infringer to immediately stop their infringement of an IP owner’s rights. An application for a preliminary injunction can be filed either prior to or during the court proceedings. Preliminary injunctions are available under each of the major IP laws in Thailand: the Copyright Act, the Patent Act, the Trademark Act, and the Trade Secrets Act. 
  • Anton Piller orders: An Anton Piller order is an ex parte order for the search and seizure of evidence prior to the filing of a complaint. This mechanism allows for the immediate seizure of evidence of IP infringement from an infringer. Similar to a civil search warrant, an Anton Piller order requires the alleged infringer to allow the IP owners and their lawyers to inspect the evidence in the alleged infringer’s possession at the infringer’s premises.
  • Damages: The IP owner, as the plaintiff, is entitled to demonstrate all the potential causes of losses suffered by the infringed party in order to recover monetary damages. However, Thai law does not provide fixed criteria for the court’s consideration with regard to methods for assessing and calculating damages. Therefore, any assessment of damages typically relies on the sole discretion of the court. The court must evaluate the “circumstances and the gravity of the wrongful act” and determine the damages accordingly.

Highest Damages Awards at the IP&IT Court

The impact of IP&IT Court decisions continues to grow with the award of landmark damages to aggrieved IP owners. The most recent landmark award was made to INVE Technologies N.V., a world-leading pioneer in the aquaculture industry with a focus on innovative hatchery products and processes for producing quality live food sources for seafood production.

INVE found that a number of competitors were infringing its patented process for increasing the hatching percentage of free-swimming artemia nauplii (brine shrimp, which can be used to feed fish or shrimp), and competing unfairly, in several countries including Thailand. They instructed Tilleke & Gibbins to bring invention patent litigation at the IP&IT Court. In November 2018, INVE received a very favorable outcome against the infringer, with the IP&IT Court granting a permanent injunction and Thailand’s highest-ever award for damages in an IP case—over THB 106 million (approximately USD 3.5 million), plus interest from the date the complaint was filed.

This is the latest in a line of cases in which the IP&IT Court has awarded record-high damages to our clients, showing the steady increase in the scale of IP protection available in Thailand. Other recent examples include the following:

  • In 2015, a leading U.S. manufacturer of magnetic powders, and client of Tilleke & Gibbins, obtained a damages award of over THB 20 million (approximately USD 670,000) which was, at the time, the largest handed down by the IP&IT Court. It was also the first case in which a trade secret owner successfully enforced its rights against trade secret misappropriation in Thailand.
  • In 2019, a leading Japanese manufacturer and designer of automotive and motorcycle parts and accessories obtained the highest damages award in a design patent case in Thailand, also under Tilleke & Gibbins’ representation, at over THB 20 million (approximately USD 670,000).
  • Most recently, in 2019, another client—a leading Japanese manufacturer in the food industry—obtained a landmark compensation award in a copyright and trade dress protection case for more than THB 20 million (approximately USD 670,000).

Capitalizing on the Strengthened IP Enforcement Environment in Thailand

The results of these cases are encouraging for IP owners who wish to enforce their IP rights, and the damages awarded by the court can be effectively enforced—including by seizing the infringers’ assets—through further coordination with the Legal Execution Department in the Ministry of Justice. The IP&IT Court has also proved to be a fair venue in patent invalidation litigation, offering much-needed protection to patent owners whose innovations are challenged by opposing parties or competitors.

Thai IP laws and practices are developing rapidly, as exemplified by Thailand’s removal from the Priority Watch List by the Office of the United States Trade Representative in December 2017. All these strides forward depend on the proactive steps being taken by leading IP owners, who have invested heavily in their businesses and technologies in Thailand and who continue to trust that the strong protection of their valuable IP will be enforced. With more IP owners handling complex technologies placing their trust in IP protection in Thailand, the developments are likely to continue apace.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 21, 2025
Distinctiveness is a fundamental requirement for a trademark’s registration and protection under Thai law. The Thai courts typically assess distinctiveness based on a mark’s inherent characteristics rather than its use, as proving acquired distinctiveness through use requires substantial evidence, including the duration of use, extent of distribution and promotional efforts. However, the Intellectual Property and International Trade Court (IP & IT Court) has recently ruled that the figurative mark WEPLAY had acquired distinctiveness through use – an uncommon ruling under Thai trademark law. Subsequently, the Court of Appeal for Specialised Cases affirmed the mark’s inherent distinctiveness based on a holistic assessment of its components. This article discusses the criteria for proving both inherent and acquired distinctiveness, offering examples from both courts to provide valuable insights into case preparation and understanding of how the courts assess distinctiveness. Background In 2017 the plaintiff filed a trademark application for the mark depicted below for goods in Class 28, including toy building blocks: The registrar rejected the application on the grounds of non-distinctiveness under Section 7 of the Trademark Act. The plaintiff appealed to the Board of Trademarks, which considered that, when the term ‘weplay’ is used for goods in Class 28, it is descriptive of the nature of the goods applied for as “playthings”. Therefore, ‘weplay’ was deemed nondistinctive under Section 7, Paragraph 2(2) of the Trademark Act. IP & IT Court decision In 2024 the IP & IT Court ruled that the term ‘weplay’ is not a coined or invented word; instead, it is a combination of ‘we’ and ‘play’, conveying the meaning of ‘we play’. When the term is used for goods in Class 28, it describes the nature of the goods as “playthings”. Consequently, the mark was deemed non-distinctive. However, the court considered the evidence presented by the plaintiff,
Read More
July 14, 2025
Life sciences specialists from Tilleke & Gibbins have updated the firm’s guide to pharmaceutical data exclusivity regulations and practices in Southeast Asia. This guide contains quick-reference information on the availability of data exclusivity protections and limitations in Cambodia, Indonesia, Laos, Malaysia, Myanmar, Thailand, and Vietnam. Developing and launching a new drug on a commercial scale requires an enormous amount of time and investment in research and development (R&D), including pre-clinical testing and clinical trials. When considering the aggregate amount of drug development costs, it is important to recognize that this includes not only the investment in developing new drugs that get approved by a government food and drug regulator and are successfully brought to market, but also the R&D expenditures on a large number of potential pharmaceutical compounds and products that never actually make it to market. In particular, considerable investment is required in order to conduct and produce clinical trial data—to prove safety, efficacy and effectiveness of a new drug—that would warrant marketing approval by the regulatory authority. Such data is proprietary in nature and highly valuable for a research-based pharmaceutical company that develops an original drug. On the other hand, patent law typically confers generic drug manufacturers with the ability to engage in various preparatory activities with a view to obtaining marketing approval for a generic product before the patent for the original drug expires (commonly known as a “Bolar provision”). Since a generic drug maker may submit an application for marketing approval of a generic product before the relevant patent expires, the extent to which the drug originator’s data submitted to the regulatory authority is protected—or in other words, the extent to which the generic company may rely on the drug originator’s previously filed data, which underpins the safety and efficacy of the drug, to support
Read More
June 30, 2025
Vietnam is making notable strides in decentralization, aiming to grant greater autonomy to local government entities to streamline administrative procedures. As part of this effort, the government issued Decree No. 133/2025/ND-CP on decentralization of state management of the Ministry of Science and Technology dated June 12, 2025 (Decree 133). Effective from July 1, 2025, Decree 133 decentralizes and delegates numerous state management functions—including in intellectual property (IP) and technology transfer—to provincial-level People’s Committees (PCs). This reform signals a profound shift in how IP rights are administered and enforced across Vietnam. While this offers new opportunities for IP owners, agents, and innovators, it also introduces additional operational complexities. Impact on IP and Technology Transfer Decree 133 significantly reallocates responsibilities in IP and technology transfer, primarily to provincial-level PCs. Provincial PCs and other provincial authorities are now empowered to handle a wide range of tasks, including but not limited to the following: Issuance of duplicates and reissuance of certificates of registration. Registration of license agreements for the transfer of usage rights for industrial property objects (e.g., trademarks, patents) and recording amendments, extensions, or early terminations of such agreements. Enforcing decisions on compulsory licensing of patent use rights. Evaluation and approval of technology transfer contracts—a key step in facilitating localized technological advancements. Permitting the establishment of foreign-invested scientific organizations and their branches, to encourage foreign direct investment in local R&D and technology development. Approval of provincial-level R&D tasks, aligning with local socio-economic development priorities. Legal Implications The decentralization and delegation brought forth by Decree 133 carry several significant legal implications: Echoing Decree 133, the Intellectual Property Office of Vietnam issued Notification No. 2351/TB-SHTT on June 26, 2025, announcing the cessation of 19 administrative procedures at the national level. Specifically, from July 1, 2025, the IP Office will no longer accept requests related
Read More
June 27, 2025
Three American giants are actively protecting their intellectual property rights against generative AI, as two legal battles commence on both sides of the Atlantic. In the UK, Seattle-based media company Getty Images accuses UK-based Stability AI of multiple IP infringements. In the US, The Walt Disney Company and Universal Studios are teaming up against Midjourney, an AI startup, with their main ground being copyright infringement. Both cases are centered around questions legal minds have been posing since the introduction of generative AI: Is the output of generative AI an infringement? And who is ultimately responsible for the output, the platform or the user? Getty Images v. Stability AI Getty initially filed a claim in the High Court in 2023, which resulted in Stability applying for reverse summary judgment on the grounds that Getty had no real prospect of success, arguing that their operations took place outside the UK. However, the High Court judge hearing the case decided that the claims brought by Getty did have a real prospect of succeeding in court. Despite this, Stability saw a small victory when the court ruled that the representative action brought by Getty would not succeed due to the difficulties in identifying who qualified for the class. The proposed class was comprised of 50,000 rightsholders who alleged their rights were also infringed. Stability was successful in arguing that identifying these individuals would be challenging due to the unclear definition of the class. This current trial is centered around four main grounds: Copyright infringement. Getty accuses Stability of using content that Getty owns or has an exclusive license for when training their model, Stable Diffusion, resulting in the generated output containing substantial parts of that content. Getty is also alleging secondary copyright infringement, arguing that Stability is importing an article into the UK
Read More