Controlling of Exportation, Importation and Transit of Trademark and Copyright Infringing Goods
Following publication of the Announcement of Ministry of Commerce on Prohibition of Import, Export and Transit through the Kingdom of Trademark and Copyright Infringing Goods B.E.2565 (2022), Thai Customs Department (the “Customs”) has recently issued an Announcement in regard to Import, Export, and Transit Restriction on Trademark and Copyright Infringing Goods (the “Announcement on Trademark and Copyright Infringing Goods Restriction”) to lay down its rules, procedures and requirements. This allows trademark/copyright owners or agents to submit information of their registered trademark/copyright (the “Information”) to the Customs for recordation so that it can be used by the Enforcement Division of Customs to identify counterfeits among the ongoing exported goods, imported goods and goods in transit.
The key principles of submission of the Information are as follows:
- The right-holders or the agents who submit the Information must either be a Thai national residing in Thailand or a Thai juristic person. In the case where the right holders or the agents are foreigners, they must appoint and authorize a representative who meets the aforementioned criteria.
- The Information will be valid for 3 years or until the expiration of the underlying trademark/copyright protection whichever comes first. However, the validity can be extended for another 3 years or until the expiration of rights, by submitting a request to the Enforcement Division of Customs.
- If the Information is charged, a notification of such change shall be submitted to the Enforcement Division of Customs as well.
When export, import, transit goods are subjected to reasonable suspicion of possibility of infringing trademark/copyright based on the Information submitted to the Customs, the Customs officers will proceed as follows:
- Customs officers will detain goods in question and accordingly inform both the exporter/importer/transit operator and the right-holders/agents who submitted the Information.
- In the case where the exporter/importer/ transit operator admits on the offence, Customs officers will prepare for a report on seizing of the goods or arresting the alleged offender and collaborate with the Legal Affair Division to proceed for further proceedings in accordance with its regulations.
- In the case where the exporter/importer/transit operator would like to oppose, the exporter/importer/ transit operator can submit a petition together with supporting evidence to challenge the detention decision within 3 days after receiving a notification from the Customs officer in which the Customs officer shall notify this opposition to the right-holders/agents. If the exporter/importer/ transit operator cannot be contacted, goods in question are deemed to be infringing trademark/copyright according to the Information submitted by the right holders/agents.
- The right-holders/agents will have 3 days to file a confirmation and petition to prosecute the case to the Customs officers. The Customs officer will prepare for a report on seizing of the goods or arresting the alleged offender and collaborate with the Legal Affair Division to proceed for further proceedings in accordance with its regulations. The right holders/agents is able to request for the extension of time to submit such confirmation and petition to prosecute the case under specified conditions but the extension of time shall not be more than 10 days from the date of receipt of notification from the Customs officers.
In addition, if the goods are reasonably suspected to be the trademark/copyright infringing goods, the right holders/agents are able to request for inspection of such goods before the goods passing through custom clearance for exportation/importation. In this case, the Customs officers will detain goods in question, notify the exporter/importer/transit operator and the right holders/agents, who are also required to attend the inspection which should be held within 24 hours after receiving a notification.
These proactive measures offer trademark/copyright owners a cost and time efficient way to prevent the infringing goods for passing though the boarder and ensuring a quality customs control of their intellectual property rights. Overall, the Announcement on Trademark and Copyright Infringing Goods Restriction could be considered as a promising effort from the Customs to keep up with international standard in terms of tackling counterfeit and pirated goods at border crossing points as well as to provide security to the rights of trademark/copyright owners.
Author: Panisa Suwanmatajarn – Managing Partner, The Legal Co., Ltd.