The Thai Customs Department has issued a notification that changes the customs recordation system and the customs procedures for the seizure of counterfeit and pirated goods. Customs Notification on the Export, Import, and Transit of Trademark- and Copyright-Infringing Goods was published in the Government Gazette on August 4, 2022, and had gone into effect on July 29, 2022.
Previously, trademark owners seeking customs recordation needed to record the relevant information with the Department of Intellectual Property (DIP), but under the new notification, both trademark and copyright owners can record their intellectual property information with the Customs Department directly.
The system and procedures established by the notification are detailed below.
Customs Recordation System
Trademark or copyright owners (or their representatives) may file an application specifying any information that customs officers can use to verify the authenticity of goods being exported, imported, or transited through Thailand. The application can be filed with the Enforcement Division of the Customs Department.
The information in the application will be kept for three years from the date of receipt (or for the remaining period of trademark or copyright protection, if less than three years). Renewals can be filed no later than 30 days before the expiry date.
Any changes in information must be made with the Enforcement Division.
Ex Officio Impounding Procedure
When customs officers suspect any goods of infringing intellectual property rights according to the information recorded, they will impound the goods and inform the exporter, importer, or transit person (or agent) as well as the trademark or copyright owner. If the customs officers cannot contact the exporter, importer, or transit person (or agent), or if this person does not oppose the action within three days, the impounded items will be deemed infringing goods.
Importantly, if the exporter, importer, or transit person admits that the goods are infringing, the officers will prepare a memorandum of inspection and seizure or arrest and then forward the case to the litigation unit for further action. Under the new procedures, the officer does not require a confirmation letter from the rights owner in this case.
To object, the exporter, importer, or transit person (or agent) must file an opposition with evidence that the goods are not infringing within three days of acknowledging the notice sent by the officers. The officers will then inform the rights owner of the opposition, and the rights owner may pursue the case by filing a confirmation letter and a petition for prosecution within three days, or the impounded goods will be released. Rights owners may also request an extension of up to 10 days, but they may be asked to furnish a bond against any damage arising from the extension request.
Inspection Requests on a Case-by-Case Basis
Rights owners can also apply on a case-by-case basis for customs inspections of goods suspected to be infringing their trademark or copyright. If the customs officers have no suspicions about the correctness of the documents submitted with the inspection request, the officers will impound the goods and notify the exporter, importer, or transit person (or agent) as well as the applicant. Upon receiving the notification, the applicant must coordinate with the customs officers to inspect the goods within 24 hours. Otherwise, the customs officers will release the impounded goods.
After the inspection, the customs officer will direct the rights owner (or its representative) to file a confirmation letter and a petition for prosecution within three days of the inspection if they do not want the goods to be released. The exporter, importer, or transit person can then make an admission or objection as described in the previous section.
Liability
Rights owners who apply for customs recordation or an inspection request are responsible to the exporter, importer, or transit person (or agent) and the Customs Department for any damages arising from the customs officers’ inspection carried out in good faith in accordance with the application.
Key Takeaways
As the legislation has changed to mandate that customs recordation applications go to the Customs Department, any information previously recorded with the DIP is now considered to be expired. Therefore, trademark and copyright owners are encouraged to file for customs recordation under this new system in order to ensure border control against infringing goods.
The new system of the Customs Department is expected to be launched around the end of September. In the meantime, rights owners should prepare the required documents in preparation for filing their applications under the new system.
For further information, please contact:
Ploynapa Julagasigorn, Tilleke & Gibbins
ploynapa.j@tilleke.com
