16 February, 2019
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:
- complex criminal cases that require special investigation and evidence gathering;
- criminal cases that could have serious effects on public order and morals, national security, international relations, or the country’s economic or finance-related matters;
- criminal cases classified as serious transnational crimes or committed by organized criminal groups;
- criminal cases involving an influential person as a principal, instigator, or supporter;
- certain criminal cases against administrative officials or senior police officers, who are not special case inquiry officers or DSI officers, with sufficient evidence that the subject might commit or be accused of an offense; and
- any criminal case that the Board of Special Cases determines, by a two-thirds majority, should be investigated.
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:
- Sections 108, 109, 110, or 114 of the Trademark Act B.E. 2534 (1991);
- Sections 69, 70, or 74 of the Copyright Act B.E. 2537 (1994); or
- Sections 85, 86, or 88 of the Patent Act B.E. 2522 (1979).
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.
New Provisions
The new notification adds the following additional conditions for IP cases:
The alleged offender must operate, or be reasonably believed to operate, manufacturing, purchasing, or distribution facilities; warehouses; or importing businesses.
The total market value of the articles or products possessed for use in the offense, acquired from the offense, or the possession of which is an offense, must exceed THB 10 million, or the damages reasonably expected to be incurred from the offenses will exceed THB 10 million.
The notification also adds a refilling offense under Section 109/1 of the Thai Trademark Act for trademark infringement cases.
Final Remarks
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.
For further information, please contact:
Titikaan Ungbhakorn, Tilleke & Gibbins
