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

March 2, 2021

MOU on Online IP Protection: Thailand’s Initiative for Online IP Rights Enforcement

Subscribe to Updates
Informed Counsel

E-commerce platforms have become some of the most significant marketplaces in Thailand, with millions of daily business transactions and huge numbers of online users. The increasing number of online shops operating on e-commerce platforms requires new techniques to be employed in online intellectual property (IP) rights infringement cases. Both the private sector and the government have developed tools to enhance online IP enforcement, some using the latest legal technologies and artificial intelligence (AI). Many legal technologies and AI operations are still nascent and typically do not yet offer the best approach for online IP rights enforcement. For example, AI and other technologies available today are still unable to consistently differentiate between original and counterfeit products from the images and information displayed on the E-commerce platforms and the internet.

Therefore, some of the most effective measures for online IP enforcement still involve manual online searches by experienced local investigators with deep understanding of the behaviors of local users (both sellers and buyers) and the ability to link relevant information across online platforms.

Acknowledging this, Thailand’s Department of Intellectual Property (DIP), as the governmental office responsible for IP-related matters in Thailand, has initiated its new Memorandum of Understanding on the Protection of Intellectual Property Rights on the Internet. This memorandum of understanding (MOU) does not create additional rights for IP owners, but acts as a mechanism to gather all the relevant stakeholders to address issues related to online IP infringement in a unified, mutually agreeable manner.

The signatories of the MOU fall into four categories:

  • Governmental authorities: DIP, Department of Business Development, and Department of International Trade Promotion
  • E-commerce platform operators: Lazada, Shopee, and JD Central (the most popular e-commerce platforms in Thailand)
  • IP rights holders: Particularly including trademark owners facing ongoing counterfeiting problems in Thailand
  • Law firms (including Tilleke & Gibbins)

Although the MOU is not legally binding on the signatory parties, it demonstrates the intent of the government authorities and the e-commerce platforms to collaborate in the prevention and suppression of online IP infringement. This is expected to greatly improve the cooperation of the e-commerce platforms in fighting online infringement matters.

The inaugural signing ceremony of the MOU was held on January 11, 2021. Tilleke & Gibbins signed the MOU as a law firm partner, represented in the ceremony by Darani Vachanavuttivong, co-managing partner of the firm and managing director of the intellectual property group.

Moving forward, the DIP will still allow other partners to join the MOU as signatory members upon request. IP owners who join this MOU will be visibly recognized and will receive strong support from both government offices and the participating e-commerce platforms to resolve IP infringement issues in Thailand.

Joining the MOU will be especially beneficial to IP owners and e-commerce platforms, as doing so will help them obtain the benefits available through this collaborative mechanism and enhance the potential of online IP enforcement in Thailand. Together with both recent and forthcoming developments in the country’s legal and regulatory environment for online intellectual property enforcement (see, for example, this issue’s article on the draft amendment of the Copyright Act), Thailand is taking clear steps to support the adaptation of its intellectual property legislation and application for the digital age.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 20, 2021
Under the Thai Government’s latest Covid-19 prevention measures, private companies and government entities in the Bangkok Metropolitan Area and adjacent provinces must implement strict work-from-home measures for 14 days, with very limited exceptions, from July 20 to August 3 (subject to extension). During this period, the Thai Department of Intellectual Property (DIP) will temporarily close its physical receiving office and implement 100% online filing for all types of applications and requests. In anticipation of a surge in use of the online filing system, the DIP will upgrade its IT infrastructure from 5.00 p.m. on Friday, July 23, to 4.00 a.m. of Tuesday, July 27 (note that July 26 is a government holiday), during which time the system will be offline. This means neither online nor physical filings will be accepted during this period. The DIP has not allowed extensions of time for due dates of trademark applications falling during this period. If you have a due date that will fall within this period (including deadlines for responding to provisional refusals of International Trademark Registrations) please make sure to reach out to us by this Thursday, July 22, to ensure that your deadlines will be met. While exceptions for late submissions caused by the government measures may be available, requests for such exceptions must be made in writing and accompanied by evidence, and will be granted or declined based on the Registrar’s final discretion. As such it is not recommended to rely on such exceptions unless absolutely necessary. For more information, please contact Tilleke & Gibbins on +66 2056 5555 or [email protected].
Read More
July 14, 2021
With the rapid growth of internet use and the increasing dominance of online selling, efficient enforcement of intellectual property rights has become more cumbersome for brand owners. Any infringer equipped with the right technology can easily sell counterfeit goods on e-commerce platforms, and they can often evade responsibility by merely reposting listings or switching vendor names whenever they are challenged. In this environment, brand owners have found that it is rarely enough to simply request the takedown of infringing pages. Instead, tackling online infringement effectively and stopping the spread of counterfeit products means uncovering the true source, arresting the infringer, and seizing the goods to prevent them from being relisted entirely. Panasonic’s Success When the Japanese multinational electronics maker Panasonic discovered that fake batteries were being sold in Thailand through e-commerce websites, their first step was to send takedown requests to the platforms hosting the offending pages. However, the problem remained, with several of the counterfeit retailers shifting their advertising of counterfeit Panasonic goods to other posts. Tilleke & Gibbins thus helped Panasonic attack the problem at its root by seeking to uncover the true identity of the online sellers. We confirmed that the same infringing sellers were continuing to post counterfeit Panasonic items for sale, and during a preliminary investigation, we discovered that five online sellers even shared the same shipping address. Unsurprisingly, the address was a fake as well—our investigation team found that the given location had nothing to do with the Panasonic counterfeiting operation, and further investigation was required before the team found the hidden location of the real warehouse. We then shared the results of our investigation with the Economic Crime Suppression Division (ECD) of the Royal Thai Police to alert them to the true identity and address of the online infringer, and coordinated with
Read More
June 15, 2021
Seven years after Indonesia enacted its new copyright law (Law No. 28 of 2014), the government has finally published an implementing regulation relating to the management of royalties for songs or music under copyright. The new guidelines are contained in Government Regulation No. 56 of 2021 on Song and/or Music Copyrights Royalties Management, which was welcomed by creators, rights holders, and other related parties when it was issued on March 31. The regulation lays out 13 commercial public venues and uses that are subject to royalty payments for playing songs or music under copyright: Seminars and commercial conferences; Restaurants, cafés, pubs, bars, bistros, night clubs, and discotheques; Music concerts; Airplanes, buses, trains, and ships; Exhibitions and bazaars; Cinemas; Ringtones; Banks and offices; Stores; Recreation centers; TV stations; Radio stations; Hotels, hotel rooms, and hotel facilities; and Karaoke services. Collection and distribution of royalties from commercial users of songs or music is conducted by the National Collective Management Agency (Lembaga Manajemen Kolektif Nasional, or LMKN) on behalf of creators and rights holders. The organization consists of two sections—LMKN Creators and LMKN Related Rights Holders—each of which is led by an independent commissioner with duties and organizational structure regulated by further ministerial regulation. The new regulation mandates the establishment of two new repositories, within two years, that will have important implications for the management of royalties for musical works. One of these—the government’s Song and Music Data Center—will contain information on all the songs and music registered with Indonesia’s Directorate General of Intellectual Property (DGIP) and will be accessible to anyone seeking information related to commercial use of a registered musical work (e.g., LMKN, creators and rights holders, commercial users, etc.). The second repository is the Song and Music Information System, which is an internal system to be developed and administered
Read More