The Thai Customs Department has taken a big step to improve its customs enforcement operations by implementing a new notice that modifies the customs recordation system and processes for seizing counterfeit and pirated products.
With the publication of the Notification of Ministry of Commerce on designation of Trademark and Copyright infringing goods to be prohibited from Export, Import and Transit, No. 106/2565 (2022), – which was issued 4th August (2022) and became effective on 29th July (2022) -, the aim is to strengthen the defense of Intellectual Property Rights (IPR) holders
against counterfeiting of products bearing their trademarks at the border, defend the economy, and promote a safe trade environment. The singular feature of this draft is that it includes cross-border protection of both trademark and copyright infringing products.
Maintaining a Customs Record
This novel system should be understood as a deterrent to potential infringers due to the existence of measures to control counterfeit and pirated products and the legal sanctions that derive from this.
To this end, the Thai Customs Department has developed the Thai Customs Intellectual Property Rights Registration System (TCIRs), through which trademark and copyright owners have the opportunity to file applications for registration of their rights with Customs, provide the information they deem necessary for the authorities to be able to identify possible counterfeit products of their trademarks or copyrights, extend and amend that information and even renew that application for registration upon the expiry date of the protection.
Previously, trademark owners requesting customs recordation were required to register pertinent information with the Department of Intellectual Property (DIP). The new notification, on the other hand, allows trademark and copyright owners to immediately record their IP information with the Customs Department. This simplifies the procedure and allows for a more expedient reaction to possible violations.
In this regard, according to Clause 2 of the Notification, either the owner of the trademark or copyright or his agent or representative may file the application for registration with Customs. The application should include all necessary information for customs authorities to verify the legitimacy of items being exported, imported, or transited through Thailand. Product descriptions, brand names, copyright data, and other relevant information may be included.
The information provided in the application will be stored for a duration of three years from the date of receipt. In cases where the trademark or copyright protection period is less than three years, the information will be retained for the remaining period of protection. Trademark and copyright owners must ensure to file renew all applications no later than 30 days before the expiration of the initial three-year period.
Furthermore, Clause 4 of the Notification imposes an obligation on the owner or his representative to inform the Enforcement Division of the Customs Department of any changes made to the trademark or copyright. Failing this, the authorities will continue to use the information provided up to that point.
The new customs enforcement procedures grants customs officers greater authority to take swift action against suspected IPR violations. When customs officers have reasonable suspicion that goods may infringe upon IPR based on the recorded information, they can proceed to impound such goods acting as follows:
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- Issuing a notice of seizure of goods to the exporter, importer, or transit person (or their
agent) will be promptly informed, alongside the relevant trademark or copyright owner. - Preparing a memorandum of inspection and seizure or arrest and refer the case to the litigation unit to proceed according to the regulations of the Customs Department in case the importer, exporter, transit applicant or agent confesses about the infringing goods. This constitutes a notable change under the new procedures since this process eliminates theprevious requirement for a confirmation letter from the rights owner.
- Granting the importer, exporter, transit applicant or agent the possibility of opposing the aforementioned proceedings within three days of receipt of the notification, by submitting a request for opposition with evidence that the goods do not infringe the trademark or copyright of its owner. The officers will then inform the rights owner of the opposition, who may pursue the case by filing a confirmation letter and a petition for prosecution within three days. Failure to take action within this period will result in the release of the impounded goods.
- In the event that the above procedures do not take effect either because it is impossible to contact the importer, exporter, transit applicant or agent, or because no opposition application has been filed, the customs officer will seize the goods and forward the proceedings to the litigious unit for further proceedings. Rights owners also have the option to request an extension of up to 10 days for filing the confirmation letter and petition for prosecution. However, they may be required to furnish a bond to cover any potential damages arising from the extension request.
- Finally, the customs officer will act by declaring the goods to be trademark or copyright infringing in cases where the import or export of the goods is carried out by international mail or by use of express delivery. In this case, the customs authority will proceed with the registration note, seize the goods and forward the proceedings to the litigation unit for further proceedings.
- Issuing a notice of seizure of goods to the exporter, importer, or transit person (or their
Case-by-Case Requests for Inspectio
Rights holders can seek inspections of items that they suspect of violating their trademark or copyright, in addition to the ex officio impounding procedure. When such requests are made, customs officials will seize the merchandise and alert the applicant as well as the exporter, importer, or transit person (or agency). Within 24 hours after receiving the notification, the
applicant must cooperate with the customs authorities for a comprehensive inspection. The impounded items will be released by the customs officials if the petitioner does not cooperate.
The rights holder (or its representative) must submit a confirmation letter and a petition for prosecution within three days following the inspection if they want to stop the goods from being released. This instruction comes from the customs officer. Following the previously outlined steps, the exporter, importer, or transit person may subsequently admit something
or object to something.
Accountability and Liability
The obligation for submitting an application for customs recordation or an inspection request stays with the rights owners, even if these strengthened customs enforcement tools offer stronger protection against fake and pirated goods. The rights holders are accountable to the exporter, importer, or transit person (or their agent) as well as the Customs Department should customs officers operating in good faith and in line with the application cause any
damages during the inspection process.
Documents supporting the application
A distinction must be made according to the rights for which protection is sought:
According to Trademarks protection, a copy of the certificate of registration of the trademark by the right holder or agent (if any), or copy of the registration of the trademark certified by an authorized official must be provided.
In relation to copyright, a copy of the copyright registration certificate (if applicable) and summary information on the copyrighted works must be provided in the form of a certified copy including the identification details of the right holder, as well as the inventor, the category of the work, the details and date on which the invention was made, and a copy of the copyrighted work.
In addition to the documents mentioned above, other documents such as the following are
permitted:
(i) Power of attorney or copy of the power of attorney by notarial certification:
- If the notarised letter already certifies the foreign legal entity, the legal entity certificate is not required.
- If the documents are in other languages, the applicant must submit the Thai translation
and certify the authenticity of the translation.
(ii) Power of attorney of the sub-agent (if applicable).
(iii) ID card or other identity document granted by the Government or Foreigner’s Card or Passport or copy of Legal Entity granted by the Government (not older than 6 months) of the right holder, agent, sub-agent or any other contact person.
(iv) Certification of legal entity by foreign law by notarial certification and translated into Thai, providing a signed and certified copy.
Importance of registering trademarks or copyrights with Customs
The latest statement from the Thai Customs Department represents a significant advance in Thailand’s efforts to strengthen customs enforcement and protect IPR. The nation aims to create a secure trading environment that promotes legitimate trade and counters the threat of counterfeit and pirated goods by giving trademark and copy right owners a direct and simplified process for customs recordation and giving customs officers more authority to impound suspected infringing goods.
It seems to be clear that the registration of Intellectual Property rights with Customs has several benefits for the holder. Since Customs is the entry point for exported and imported goods, Customs registration helps to seize counterfeit or pirated goods, thus reducing the presence of infringing goods in the market, allowing the owner of the trademark or copyright to protect his reputation and avoid economic losses as a result of the marketing of these
infringing products in the context of unfair competition, and also facilitating the filing of legal actions since the information provided by the customs authorities serves as evidence to prove an infringement of Intellectual Property rights in court proceedings.
Aothurs: Namrata Bhowmik & Carolina Ibañez