Mary Chanyapat Intellectual Property Interim Injunction Thailand February 10, 2021

An Analysis And Implementation On The Grant Of Interim Injunction Protection Of

The Intellectual Property Laws In Thailand

By:

Mary Chanyapat

February 10, 2021

TABLE OF CONTENT

Page

Chapter 1 Introduction

1.1 Rationale of the Study

1.2 Objective of the Study

1.3 Hypothesis

1.4 Scope of the Study

1.5 Research Methodology

1.6 Definition of Terms

Chapter 2 Intellectual Property Laws of Thailand

2.1 Trademark Act, B.E. 2534

2.2 Trade Secret Act, B.E. 2545

2.3 Copyright Act, B.E. 2537

2.4 Patent Act, B.E. 2522

2.5 Geographical Indications – Protection of Geographical Indications Act (2003)

2.6 Plant Variety Protection – Plant Variety Protection Act (1999)

2.7 Layout-Designs if Integrated Circuits Act (2000)

2.8 Optical Disk Production Act (2005)

Chapter 3 Jurisprudence/Case Analysis

Chapter 5 Conclusions and Recommendations

BIBLIOGRAPHY
Mary Chanyapat Intellectual Property Interim Injunction Thailand February 10, 2021

Chapter 1

INTRODUCTION

1.1. Rationale of the Study

In the world of economic integration, intellectual property laws and its protection is a

very important factor for economic growth. Thailand has implemented laws and regulations

in the country along with the development of the intellectual property standards in the world.

The rapid developments of intellectual property laws, both domestic and international, show

the impact of such field of law to the country’s economy. The age of globalization has driven

rapid shifts in the location of economic activity and the vast movement of trade and

commerce, which makes the importance of intellectual property protection vital to every

transactions. Such protection also promotes free and competitive markets both domestic and

international.

Intellectual property is one of our most important national assets. Laws, policies and

regulations on intellectual property aim to protect the rights of the intellectual property holder

so that equality in the business world is maintained. It also promotes development of

creations, inventions, ideas and marks in global commerce.

The United Nations World Intellectual Property Organization is a global forum for

intellectual property having 193 member states around the world. It provides standards for

member’s states to follow for a universal protection of intellectual property rights holders

around the globe. With that, it promotes development in international business and trade

since it balance out the protection of intellectual property rights in the world.

Interim injunction is a provisional measure sought during legal proceedings, before

trial. An injunction is an order of the court that requires a party either to do a specific act, or
Mary Chanyapat Intellectual Property Interim Injunction Thailand February 10, 2021

to refrain from doing a specific act. In intellectual property, interim injunctions are significant

as it is intended to prevent injustice in situations of infringements pending trial.

Thai Intellectual Property laws have been up to date in the development of all types of

intellectual property protection. From patents - “Patent Act”, trademarks – “Trademark Act”,

copyrights – “Copyright Act”, and trade secrets – “Trade Secret Act”. Such rights are

protected by the State by the granting of said rights through registration in the Intellectual

Property Office. The law protects various types of work and it also contains provisions

regarding interim injunction. Such provisions protect the creator or owner of the intellectual

property rights prima facie and immediately before enduring the process of litigation. The

following are the specific provision which highlights the interim injunction protection in the

Thai intellectual property laws;

Section 116 of the Trademark Act, B.E. 2534;

“If there is clear evidence someone is committing or is about to commit an

act under Section 108, 109 or 110, the owner of the trademark, service mark,

certification mark or collective mark may apply to the court to stop or refrain from

such act”.

Section 65 of the Copyright Act, B.E. 2537;

“Where there is explicit evidence that a person is committing or about to

commit an act which is an infringement of copyright or performers’ rights, the

owner of copyright or performers’ rights may seek an injunction from the court to

order the person to cease or refrain from such act.

A court injunction under the first paragraph shall not prejudice the right of

the owner of copyright or performers’ rights to claim damages under Section 64.”

Section 77 bis of the Patent Act, B.E. 2522;

Mary Chanyapat Intellectual Property Interim Injunction Thailand February 10, 2021

“In case there is clear evidence that any person is committing or about to

commit any act in infringement of the rights of the owner of a patent or petty

patent under Section 36, 63 or Sections 65 decies and 36, the owner of the patent

or petty patent may request the court to order the person to stop or refrain from

committing such infringement. The order of the court shall not deprive the owner

of the patent or petty patent to claim damages under Section 77 ter.”

Section 8 of the Trade Secret Act, B.E. 2545;

“When there is clear evidence stating that any person infringes or is going

to conduct any act which will infringe trade secrets, the controller of trade secrets

infringed or about to be infringed shall have the following rights:

(1) to request the court for an interim injunction or to temporarily stop

such infringement;

(2) to file a case before the court for an injunction and file for a

compensation from the person who infringes the right in trade secrets.

Rights under (1) may be acted prior to a file of a case before the court

under (2).”

The stated provisions are provisional remedies for intellectual property rights holders to

seek protection immediately before enduring the rigid and tiresome litigation. It is however

different from the provisional remedies before judgment in the Thai Civil Procedure Code,

Section 264, in which a case must be filed with the court first and the court has accepted the

lawsuit.

One of the essential elements to request for interim injunction is a prima facie clear

evidence. Currently, such evidence has never been defined on how clear should the evidence

be. Therefore, it is not easy to request for interim injunction from the court because it will be
Mary Chanyapat Intellectual Property Interim Injunction Thailand February 10, 2021

up to the petitioner (intellectual property owner) to state the facts establishing a prima facie

case and the sufficiency of the facts for the Court to believe that it is appropriate to grant the

interim injunction order as according to the Rules for Intellectual and Property and

International Trade Cases, B.E. 2540 (1997).

The aforesaid intellectual property laws provisions intent to protect creators or owners

on their intellectual property rights at the easiest and fastest way possible. It provides an

interim injunction on the intellectual property rights before dealing with the litigation and the

determination of damages, which takes longer to execute. This remedy on interim injunction

would be very helpful in the protection against infringement of the laws since there have been

several situations where the creators or owners suffers damages before being compensated.

Such remedy also makes it fairer and promotes greater equality to the rights of intellectual

property holders.

1.2. Objective of the Study

1.2.1. To study the principle of intellectual property laws in litigation and the

measurements in the consideration of the granting interim injunction remedies before

prosecution.

1.2.2. To investigate and analyze the issues and problems in granting interim

injunction for intellectual property laws.

1.2.3. To recommend and guide measurements to the problems in granting interim

injunction for intellectual property laws.

1.3. Hypothesis

Although the current Thai intellectual property laws has measurements to prevent

damages by giving rights to intellectual property owners to request for interim injunction

order from the court before prosecution, there are still problems regarding consideration on

granting such order, which make the owner unable to obtain the remedy. Thus, necessary to
Mary Chanyapat Intellectual Property Interim Injunction Thailand February 10, 2021

identify or specify the standard of measurements regarding consideration on granting interim

injunction order in the intellectual property cases.

1.4. Scope of the Study

The research will focus on analyzing the current intellectual property laws in

Thailand. This includes the protection measures of the laws and the extent of its

implementation, both in and out of court litigation. The study focuses on the provisions which

grants interim injunction protection of the intellectual property laws prior to the initiation of a

full blown case which is a subject of prosecution.

1.5. Research Methodology

Documentary method are applied to this research. The research is conducted through

the collection of data and information. It utilizes; gathering information from in-print

materials, legal handbooks, articles, journals, books, newspapers, law cases, statutes and

other publications in relation to intellectual property laws in Thailand. All information would

be analyzed and considered in order to stipulate the legal measures and the extent of its

application for the intellectual property protection.

1.6. Definition of Terms

The clarity of the direction of this study can be facilitated by operationally defining of

technical terms. Operational definition are given according to the context in which they are

used.

Author. This refers to a person who makes or creates any work which is a copyright

work by virtue of this Act.

Copyright. This means the exclusive right to do any act according to this Act with

respect to the work created by the author.

Mary Chanyapat Intellectual Property Interim Injunction Thailand February 10, 2021

Copyright work. This is a work of authorship in the form of a literary, dramatic,

artistic, musical, audiovisual, cinematographic, sound recording, sound and video

broadcasting work or any other work in the literary, scientific or artistic field whatever the

mode or form of its expression.

Evidence. This refers to any of the material items or assertions of fact that may be

submitted to a competent tribunal as a means of ascertaining the truth of any alleged matter of

fact under investigation before it.

Intellectual property rights. These are legal rights that provide creators protection

for original works, inventions, or the appearance of products, artistic works, scientific

developments, and so on. 

Interim injunction. This is a temporal remedy that is issued by a court at an early

stage of legal proceedings.

Patent. It is an exclusive right granted for an invention, which is a product or a

process that provides, in general, a new way of doing something, or offers a new technical

solution to a problem.

Trade secret. This means trade information which has not yet widely known or not

yet accessible amongst the persons who are related to such information. It is the information

which is useful commercially as it is a secret and it is the information which a commercially

trade secret controller uses appropriate measure to maintain its secrecy.

Trademark. It refers to a distinctive sign which allows consumers to easily identify

the particular goods or services that a company provides.