23 March, 2019
In 2011, the Board of Special Cases (“BSC”) of the Department of Special Investigation (“DSI”) empowered and expanded the DSI’s powers and duties to act against trademark infringement under the Trademark Act, copyright infringement under the Copyright Act, patent infringement under the Patent Act, and IP infringement under the Customs Act as special cases by issuing Announcement of BSC. (No. 4) B.E. 2554 (2011) Re: Details of Offenses which are deemed Special Cases Pursuant to Section 21 Paragraph one (1) of the Special Case Investigation Act B.E. 2547 (2004) (“Announcement No. 4”).
Last week, on 5 February 2019, Announcement of BSC. (No. 7) B.E. 2562 (2019) Re: Details of Offenses which are deemed Special Cases Pursuant to Section 21 Paragraph one (1) of the Special Case Investigation Act B.E. 2547 (2004) (“Announcement No. 7”) was published in the Government Gazette to replace and repeal Announcement No. 4, and became effective on 6 February 2019. Announcement No. 7 establishes a threshold value of THB 10,000,000 (approx. USD 312,500) for infringement cases to be handled by the DSI under the Trademark Act, Copyright Act, and Patent Act. This means that the DSI is empowered to accept and act on complaints for IP infringement only if the market value of the case is or is reasonably believed to be more than THB 10,000,000. For import, transit, and transshipment of counterfeit products under the Customs Act, the minimum threshold value is set at THB 100,000,000 (approx. USD 3,125,000), inclusive of any applicable taxes and duties.
Outstanding cases in which the DSI has orders to proceed with investigation, or were under the DSI’s consideration before 6 February 2019, will not be subject to Announcement No. 7 and will continue to be processed as special cases until the outcomes are final. If there is any dispute or doubt as to whether or not any case is a special case to be handled by DSI, the BSC shall resolve the dispute.
Announcement No. 7 does not clearly specify details of the market value to be used to calculate the threshold. It is unclear at this point whether the DSI shall calculate based on (a) the market value of the counterfeit products, which is generally quite low or (b) the market value of the corresponding genuine products, which will be higher. As Announcement No. 7 just became effective, the practical impacts on right holders in relation to special cases remain to be seen.
For further information, please contact:
Say Sujintaya, Partner, Baker & McKenzie
say.sujintaya@bakermckenzie.com
