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TRIPS and the Specialised Intellectual Property Court in Thailand


VIII. Damages

In cases of copyright or performer's rights infringement, Sec. 64 of the Copyright Act 1994 provides that the court may order appropriate damages for the right owner by taking into consideration the seriousness f the infringement, including loss of benefit and necessary expenses of enforcement.

This is an improved version of the former Copyright Act of 1978 that simply provided that imposing a fine did not preclude the right of the right owner from seeking civil compensation for the amount of damages incurred in excess of the fine.

Some comments may be levied on the new Sec. 64:


Section 64 satisfies the test under Art. 45(1) but not 45(2) of the TRIPS Agreement.(32)


Under Sec. 64 of the Copyright Act 1994, it is suggested that the test for damages in a civil action is the requirement that the infringer "foresee or could have foreseen" the consequences. Thus, it is more akin to the wording of "knowingly or with reasonable grounds to know" under Art. 45(1) than the negative element under Art. 45(2).


Article 45(2) may be of a higher standard than Art. 45(1), but the word "may" in Art. 45(2) denotes a choice for the member state rather than an obligation.


Article 45(2) also requires reimbursement of expenses including appropriate attorney's fees. Section 64 speaks of "necessary" expenses in enforcing the right. Attorney's fees may be necessary for the enforcement of the right, but of an appropriate rather than excessive amount. One would have to use the objective standard in the country of the forum to determine what the appropriate attorney fees are.


The court is bound by Schedule 6 of the Schedule annexed to the Code of Civil Procedure concerning the award of attorney's fees. At the moment, the court cannot grant more than 5% of the damages claimed for attorney's fees. The Schedule requires the court to grant appropriate attorney's fees between the minimum (600 baht equivalent to US$15) and the maximum (5% of the amount claimed), taking into consideration the difficulties of the case and the amount of time and work put into it. Although the court has the tendency of awarding a higher fee than in the past, in reality it rarely reflects the actual fees claimed or paid by the parties.


The wording of Sec. 64 "necessary expenses in enforcing the right", may give the plaintiff a wider scope of claim than just for attorney's fees. It may include investigation efforts, private detective works, etc.


The wording of Sec. 64 "loss of benefits" refers to loss of benefits to the plaintiff. Concerning the base for assessment, the following quotation from Cornish's "Intellectual Property"(33) may be of assistance:


A starting point in assessing damages is to ask whether the plaintiff and defendant are in actual competition. Where this is so, the next question is whether the defendant might have had the plaintiff's licence if only he had sought if. Then the measure of damages will likely be what the plaintiff would have charged for a licence. However, the plaintiff is not normally under any compulsion to grant licences. If he would not have done so, the court will look to his losses through the defendant's competition. When it comes to non-competitive infringements, the courts have held that a reasonable royalty for non-competing use will be awarded upon a principle "of price or of hire".


Under the Thai law, although the burden of proof is on the plaintiff, the court can grant compensation in accordance with the circumstances and gravity of the wrong (Sec. 438 of the Civil and Commercial Code). This is normally discretional. If the plaintiff can assist the court with systematic and economic analysis of damages, it will lead to a more realistic quantum of damages than by leaving it to judicial discretion.


Although damages under Sec. 64 include loss of benefits and expenses, Sec. 64 does not deal with an account of profits. Accounting is a traditional equitable remedy available to recover profits unfairly gained from another's property. A common law court might order the defendant to account for profits made from wrongdoing such as infringement of an intellectual property right. This is not a notional computation, as with damages, but an investigation of actual account, which may incidentally afford the plaintiff a look at customers' names and other information about the defendant. Nonetheless it is a laborious and expensive procedure, and is infrequently resorted to.(34) It is difficult to request an account of profits under the present Thai law.

IX. Improvements in Thai Intellectual Property Law and Practice to Protect IPRs as "Public Rights"

In addition to the new philosophy of enforcement of IPRs by civil proceeding as private rights, there have also been improvements in Thai intellectual property law and practice to protect IPRs as "public rights". These include:


Harsher penalties for infringements of IPRs. The maximum penalty for infringement of copyright for commercial purpose could reach four years' imprisonment or 800,000 baht (US$20,000, equivalent to US$32,000 prior to the baht flotation) a fine, or both.


Comparison with the maximum penalty for theft simpliciter, that is the maximum penalty of three years' imprisonment and a 6,000 baht fine.


Double the penalty should the accused be found to have committed the same offence within 5 years.


Half of the fine will go to the right owner.

A right to claim damages in addition to the fine.

Divergence of law enforcement: recently it has been agreed that in addition to police officers, officers from the Department of Intellectual Property also can apply for a search warrant in order to conduct raids. This will somewhat alleviate the breach of secrecy in the raid.


Right owners can apply for a preliminary injunction and Anton Piller order before bringing a civil action or, most uniquely, before instituting private prosecution in a criminal case.

X. Conclusion

One concept that may describe conventional wisdom in contemporary Thai society is perhaps globalisation. In 1995 the Criminal Court of Thailand extradited a Thai national to face criminal charges in the U.S. for infringement of drug-related offences allegedly committed in America. One of the reasons given by the court was that the extradition treaty between the United States and Thailand must be respected and given effect in view of different opinions of different practices in civil law countries. The decision was later affirmed by the court of appeal, the final forum on the matter. It was widely acclaimed internationally as a liberal interpretation of the extradition treaty by a civil law country. The President of the Thai Supreme Court was later conferred with an honorary Doctorate in Law from a prestigious U.S. law school, and the decision was a highlight of this inaugural speech. The creation of the Intellectual Property and International Trade Court to foster a fair, speedy, friendly and equitable atmosphere for settlement of trade disputes and effective enforcement of intellectual property rights goes in the same direction of globalisation. It is well-equipped to create an atmosphere of trustworthiness and an investment-friendly market. It is suggested that this means competitiveness and eventually economic success in itself.


Case Statistic of the Central IP&IT Court on Nationality of Plaintiffs/Injured Persons

December 1, 1997 - September 30, 1998

Types of Cases
Total Number
International Trade Cases
Intellectual Property Cases (Civil)
Intellectual Property Cases (Criminal)


(32) TRIPS Agreement, Art. 45: Damages
"(1) The Judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person's intellectual property rights by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.
(2) The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney's fees. In appropriate cases. Members may authorise the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity."

(33) W.R. Cornish, supra note 5, at 61.

(34) Id. at 63.