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​ 

September 30, 2021
A liquidated damages clause is a quick and straightforward way to determine the amount of compensation payable by a breaching party to the aggrieved party in the event of IP infringement or another contract violation. The enforceability of such a clause in Vietnam remains a controversial topic, but some recent IP-related cases may shed some light on the applicability of such provision.
Read More
September 13, 2021
As the Covid-19 situation in Vietnam has not improved since the beginning of August 2021, the Intellectual Property Office of Vietnam (IP Office) has issued Notice No. 8181/TB-SHTT dated September 9, 2021 (Notice 8181), providing a further two-month extension for IP deadlines. The contents of Notice 8181 are similar to those found in notices issued in March 2020 and August 2021. One notable difference is the addition of the term “such as” (“như”  in Vietnamese) to the list of IP procedures eligible for the extension, implying that this is now an open list: All procedures related to the establishment of industrial property rights (such as priority claims, supplementation of documents, responses to the IP Office’s decisions/notifications, annuities, renewal of the validity of protection titles, payment of fees and charges, and filing of appeal petitions) falling due during the period from June 30, 2021, to the end of October 31, 2021, will automatically be extended to the end of November 30, 2021. For other cases, if an applicant is still affected by the Covid-19 epidemic with regard to the implementation of its rights and obligations in the procedures for establishing rights to industrial property objects at the IP Office, such applicant may request [the IP Office] to apply the clauses on objective obstacles and force majeure as set out in Points 9.4 and 9.5 of Circular No. 01/2007/TT-BKHCN, as amended and supplemented by Circular No. 16/2016/TT-BKHCN. It is our interpretation from Notice 8181 that procedures related to the establishment of industrial property rights that are not specifically listed in the notice, such as IP filings and substantive examination requests, will also benefit from the new extension. However, there has not been any official explanation from the IP Office.
Read More
August 26, 2021
Background In Thailand, bad-faith domain name registrations can present a unique challenge to brand owners. According to the current domain registration policy, Thai domain names can be based on the registered name of a company or organization, or on a registered trademark, depending on the domain name category. When Thailand’s domain name registrar, the Thai Network Information Centre Foundation (THNIC), considers applications for new domain names, it examines only whether the applicant meets these criteria – and not whether the application has been led in bad faith, such as when a registered company uses someone else’s registered trademark without authorization. Domain name registration in Thailand is a first-to-file system, so if all criteria are met, THNIC must allow registration. There are no opposition or cancellation proceedings, making it impossible for an interested person, as well as THNIC itself, to invalidate a Thai-registered domain name. Disputes between two legitimate owners Disputes sometimes arise between trademark owners and Thai-registered companies, such as third-party companies, local distributors, or even authorized trademark licensees who exploit the policy gap identified above. For instance, in a recent case a brand owner found that its Thailand distributor had been able to register a company name containing its registered trademark, and subsequently register such name as a domain name, without the trademark owner’s consent. Fortunately, the two parties had a strong existing business relationship as supplier and distributor; through amicable negotiation, the local distributor agreed to withdraw the disputed domain name. However, if both parties had insisted on their legitimate rights over the disputed name, the case would have had to proceed to court, as THNIC does not get involved in such disputes and offers no dispute resolution mechanisms. Navigating the options Trademark owners facing such a dispute have two options: initiating proceedings with the Intellectual Property
Read More
August 24, 2021
For Myanmar, the extension of the TRIPS transition period for least developed countries has broad implications, as implementation of four substantive IP laws (enacted in 2019) is still pending and the country thus still remains out of compliance with most TRIPS requirements.
Read More