Thailand – Amendment to Copyright Act

On 23 August 2022, the Amendment to Copyright Act No.5 B.E.2565 (2022) (the “Amendment”) has officially become effective. The purpose of the Amendment is to bring Thailand into compliance with the World Intellectual Property Copyright Treaties (WCT). Furthermore, it aims to strengthen copyright protection and address an issue of online infringement in order to promote creations of copyright work and keep up with significant changes in consumer behavior toward digital contents by making copyright law more suitable for the ever-evolving digital environment.

The substantial changes are as follows:

• The definitions of “Service Providers” and “Service Users” were added to the interpretation section of the Act. In regard to internet service providers (ISPs), a more precise definition has been given, categorizing ISPs into four types:
  • Intermediate ISPs (service providers that provide transmission of computer data or access to communication network);
  • Caching ISPs (service providers that temporary store computer data on the platform);
  • Hosting ISPs (service providers that offer storage of computer data provided by the users) and
  • Search engine ISPs.

In addition, “Service Users” are defined as the users of ISPs, regardless of whether the payment is needed.

• The detailed exemption of liability provisions were introduced, providing safe habours to ISPs who publicly disclosed and adhered to their measures on terminating their services for repeated infringers. In addition to said requirement, the Amendment explicitly specifies the conditions under which each type of service provider must comply in order to qualify for the exemption. For instance, hosting ISPs must not have any knowledge or ought to know upon illegal activities on their network or platform and must promptly remove or disable access to the infringing contents upon their knowledge.
• Section 32/3, which was practically deemed ineffective as it required copyright owners to file a petition with the court to obtain an injunction against ISPs to remove or disable access to infringing information, was replaced by a notice-and-takedown system specified in sections 43/6 to 43/8 of the amended Act. The key concept of the notice-and-takedown system, which is modeled after that prescribed in the United States’ Digital Millennium Copyright Act, is that after being notified of an infringement by the copyright owner, ISPs must promptly remove such information or disable access to such information and notify the alleged users. However, the alleged users may file a counter-notice to ISPs, of which a copy must be forwarded to the copyright owner without delay. Unless the copyright owner file a lawsuit against the alleged users within 30 days after the receipt of the counter-notice, the ISPs shall restore the disputed information to their system or allow access to such information.

• The Amendment removes photographic work from Section 21 of the Act, extending the protection period of such work from 50 years from the date of its creation or 50 years from the date of its publication if the work is published during such period, to 50 years after the death of the author.
• Infringement of technological protection measures (TPMs) was redefined as any action that makes access control TMPs ineffective, regardless of knowledge requirement. This also applies to service providers, sellers, manufacturers, distributors of products (including computer programs) or devices who know or should know that the main purpose of such services, products, or devices is to circumvent TPMs.

Overall, the Amendment provides some clarification and legal certainty in relation to copyright protection of digital contents, as well as a rapid legal measure against online copyright infringement without going through court process. In addition, proportionality has been considered not only to protect copyright owners, but also to protect service providers’ interests by holding those who made false notice/counter-notice under notice-and-takedown system liable for any damage caused.

2022 – Handbook for Trademark Registration in Thailand

Trademarks could be one of the most valuable assets to a business as they represent brand identity and help a business stand out from its competitors. In order to obtain protection for a trademark in Thailand, it is mandatory to register a trademark by submitting an application to the Department of Intellectual Property (DIP). Like most other countries, Thailand also applies a “first-to-file” rule in which the earlier in filing the application for trademark registration is the better.

According to the Trademark Act B.E. 2534 (1991) (as amended in 2000 and 2016) (the “Trademark Act”), Section 6 provides requirements for a registrable trademark, namely a trademark must (1) be distinctive; (2) not be prohibited under this Trademark Act; (3) not be identical or similar to a trademark filed or registered by another person.

The DIP has recently published the Trademark Registration Handbook B.E.2565 (2022) (the “Handbook”), a revised version of the Trademark Registrar Handbook B.E.2559 (2016), aiming to provide a clear, uniform and up-to-date guideline on procedures and practices regarding trademark registration in Thailand.

The Handbook contains an outline of the registration processes which the registrar is required to followed, as well as a detailed description of the substantive requirements for a registrable trademark as stated in Section 6. The revision also added formality requirements according to Sections 9, 10 and 11; the examination of service mark, collective mark, and certification mark; and the publication and opposition of trademark application.

One of the substantive requirements for registrable trademark is distinctiveness. The Handbook explains character of which a trademark shall be deemed distinctive as specified in Section 7 Paragraph 2. It looks like if the trademark is considered as fanciful, arbitrary or suggestive mark, it has a high chance of success that it will be registrable. Furthermore, the criterion for acquired distinctiveness through use according to Paragraph 3 of Section 7 is also given in which evidence is required to be provided and proved the use of such trademark (e.g. receipts of sales, marketing and advertisement). However, in order to determine whether a word, phrase or picture has a direct reference or explaining to the character or quality of goods, the Handbook still widely left it to the registrar to use their judgement and interpretation on a case-by-case basis.

Another requirement, according to Section 13, is that a trademark must not be identical or similar in substantial or significant part to filed/registered trademark. To assess the similarity of trademarks, the Handbook adopts a guideline from the precedents, provided that trademark needed to be examined as a whole, not solely based on its appearance or device/word component. Other factors that must be taken into account include similarities in phonetic, meaning, class, nature of goods/services, sale channels and targeted consumers. This looks like the registrar will open for further flexibility in examination of trademark application, increasing the chance of success in registering of trademark. Good example is in the case where the marks bear resemblance to one another but pronounced differently.

Overall, comparing to the previous edition, it looks like the Handbook offers more user-friendly and comprehensive guidelines by providing an in-dept explanation on both rules and practices relating to the examination of trademark applications. It could be a good start in developing a reliable standard for trademark registration even it still opens for the registrar’s opinion at some points.

Author: Panisa Suwanmatajarn – Managing Partner, The Legal Co., Ltd.