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

The copyright law currently in effect in Thailand is the Copyright Act B.E. 2537 (1994), which came into force in March 1995. After 20 years, a new amendment came into effect in August 2015, with a focus on updating the law for the digital age, followed by a further amendment that became effective in March 2019 to comply with the Marrakesh Treaty providing exemptions to copyright infringement for people with disabilities. Recently, to comply with the World Intellectual Property Organization Copyright Treaty (WCT) and update practices in combating online infringement, the Thai Copyright Act has been amended once again. This article will explore the backstory behind this amendment, highlight the law’s successes and potential areas of concern, and explain what copyright owners, practitioners, and—most importantly—internet service providers (ISPs) should be aware of in order to comply with this law, which was published in the Government Gazette on February 24, 2022, and will become effective on August 23, 2022. The Backstory Despite the modernizing focus of the 2015 amendment, in recent years Thailand recognized the necessity of strengthening copyright protection and modernizing the law further to cope with online infringement problems fueled by today’s rapid technological change. Previously, the Copyright Act B.E. 2537 (1994), as amended in 2015, provided a specific mechanism to solve online copyright infringement. This mechanism, which appeared in Section 32/3 of the law, differed from the clearly defined notice-and-takedown system favored in several other countries by relying on the courts to resolve copyright infringement matters in relation to the provision on ISP liability and safe harbors. As the law did not include adequate notification procedures or rapid dispute resolution mechanisms, the implementation of Section 32/3 became impractical. In addition, the definition of an ISP was broad, so “mere conduit” (or intermediary) ISPs would often receive court