On February 5, 2019, Notification of the Board of Special Cases (No. 7) B.E. 2562 (2019) was put into effect, establishing new conditions for intellectual property (IP) owners who wish to bring legal action before the Department of Special Investigation (DSI). The notification is intended to clearly separate the jurisdictions of the police and the DSI.
Among other things, the notification requires the DSI to only investigate an IP case if it has evidence that the suspected counterfeits have a market price with a total value of at least THB 10 million (approximately USD 320,000), or that the damages to be incurred from the offenses will exceed THB 10 million.
Background: DSI Jurisdiction
The Special Case Investigation Act B.E 2547 (2004) (as amended on February 20, 2007), and subsequent notifications made under it, lay out the DSI’s jurisdiction over “special cases,” which include:
In addition to falling into one of the categories above, IP offenses must be brought under one of the provisions below for the DSI to process them as special cases:
Before the DSI accepts a special case, the Board of Special Cases must consider its merits and seek approval from the Director-General of the DSI.
The new notification adds the following additional conditions for IP cases:
The notification also adds a refilling offense under Section 109/1 of the Thai Trademark Act for trademark infringement cases.
This is a significant change for IP owners seeking to initiate IP infringement cases in Thailand, as the DSI could previously use its significant resources to investigate serious cases that were, nevertheless, of relatively low direct financial value.
Moving forward, only very high-valued IP cases related to the manufacture, distribution, or import of counterfeits on a large scale will receive legal action from the DSI. IP owners who cannot provide evidence that their case meets the THB 10 million threshold will now have to take criminal action through the police.
If you have any queries about this notification, or about any other aspect of enforcing IP rights in Thailand, please contact our Bangkok office on [email protected] or +66 2056 5555.