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Intellectual Property And International Trade Court : A New Dimension For IP Rights Enforcement In Thailand

By Vichai Ariyanuntaka

I. Introduction

The late 1990s witnesses Thailand’s transition from economic success to economic recession, from the days of hope and glory to a more sober time of re-thinking, re-planning and perhaps, re-structuring our economic strategies. In the promotion of international trade and investment, it is essential that one must create the legal environments to attract one’s trading partners. As far as the legal aspect is concerned, one must create an atmosphere of fairness, trust and that legal right shall be effectively and expeditiously enforced. It is on the road to economic recovery and to even more economic success, one must put one’s house in order. In the field of administration of justice, the establishment of the Central Intellectual Property and International Trade Court(The IP&IT Court) is a single most important factor for the road to the more glorified days of international trade and investment and to the recovery of Thai economy as a whole.

II. Establishment of an Intellectual Property and International Trade Court

The Act for the Establishment of and Procedure for Intellectual Property and International Trade Court 1996 was passed by the National Assembly and promulgated in the Government Gazette on the 25th October 1996. Under the Act, a Royal Decree was later passed to inaugurate the Central Intellectual Property and International Trade Court on the 1st December 1997.The IP&IT Court Act was the culmination of a joint effort between the Ministry of Justice and the Ministry of Commerce in the wake of negotiations between Thailand and the United States as well as the European countries on trade related aspects of intellectual property rights. In fact Thailand is exceeding its obligation under Article 41(5) of the Agreement on Trade-Related Aspects of Intellectual Property Right(TRIPS Agreement)by establishing the IP&IT court.Article41(5)simply states:

It is understood that this Part does not create any obligation to put in place a judicial system for the enforcement of intellectual property right distinct from that for the enforcement of law in general...Nothing in this Part creates any obligation with respect to the distribution of resources as between enforcement of intellectual property rights and the enforcement of law in general.

However, the IP&IT Court is established to create a ‘user-friendly’ forum with specialized expertise to serve commerce and industry. International trade is added to the jurisdiction of the court for the reason that in a country like Thailand specialized Bench and Bar in intellectual property and international trade should be grouped together for easy access and administration. Not least for want of sufficient workload to warrant a separate court system.

III Some salient Features of the IP&IT Court System

The following are some of the prominent features in the new court system:

- Liberal use of Rules of the Court to facilitate the efficiency of the forum. Perhaps this could be seen as a unique ‘common law’ approach to solve a ‘civil law’ problem.

-Exclusive jurisdiction both in civil and criminal matters on the enforcement of intellectual property rights throughout the country.

-Exclusive jurisdiction on matters concerning international trade e.g. international sale, carriage, payment, insurance and related juristic acts.

-Exclusive jurisdiction on the arrest of ship.

-Exclusive jurisdiction on anti-dumping and subsidies.

-Exclusive jurisdiction on the enforcement of arbitral awards in intellectual property and international trade matters.

-Panel of three judges to constitute a quorum. Two of whom must be career judges with expertise in IP or IT matters. The third member of the panel is an associate judge who is a lay person with expertise  in IP or IT. A double guarantee of specialization.

-Availability, for the first time in Thai procedural law, of the ‘Anton Piller Order’ type of procedure. An English innovation incorporated in the TRIPS Agreement.

-Possibility of the appointment of expert witness as amicus curiae. A friend of the court.

-Leap-frog procedure where appeals lie directly to the IP&IT Division of the Supreme Court. An attempt to redress delay

-Possibility of extending the jurisdiction to other matters by further amending legislation. At the moment, there has been discussion of transferring insolvency matters from the court exercising civil jurisdiction to the IP&IT Court.

-However ,the protection of juvenile justice takes precedence over the protection of IP rights. Hence, a juvenile shall be charged in the Juvenile and Family Court and not in the IP&IT Court even if in IP infringement cases.

While establishing a new court is not an easy task, the successful promotion of it to international commerce and industry is much more challenging and difficult. One will have to create the right ‘legal environments’ to attract international commercial litigation. integrity, expertise, convenience, accessibility, expenses, respect and the effective enforcement of order or judgment of the court are but some of the more important criteria.

IV. Rules of the Court under the IP&IT Regime

It is hoped that, as special expertise develops in this specialized court, more just and effective measures in IP rights enforcement can be further incorporated in the ‘Rules of the Court ‘.Rules of the Court is a common law technique in creating court procedure. Traditionally, in Thailand which is basically a civil law country, the amendment to the procedural law is invariably by way of an amendment Act to the Procedural Code. Under section 30 of the Act for the Establishment of and Procedure for Intellectual Property and International Trade Court 1996,a new procedure has been devised, it reads:

For the purpose to ensure convenience, expediency and fairness of the proceedings, the Chief Justice of the Central Intellectual Property and International Trade Court shall be empowered, subject to the approval of the President of the Supreme Court, to  issue Rules of the Court on proceedings and hearing of evidence in intellectual property and international trade cases, provided that such provisions shall not impair the rights of defence of the accused in a criminal case.

By this means, changes in the procedure of the court will be achieved much more speedier than in the tradional means of an Act of Parliament. Rules of the Court may take a couple of months to be finalized whereas an Act of Parliament will invariably takes years. The question for concern is how much of a “blank-cheque”would the legislature be willing to give to the judiciary of this legislative role. An analogy might be made with the power vested in the Executive to issue Royal Decrees and Ministerial Regulations. In other words, what is the scope of the “Rules of the Court” in relation to principles of procedural law of the “public order”(I’ order public)type? Cant his be interpreted as an encroachment on the legislative functions by the judiciary? A caveat has been entered under section 30 itself that “such provisions shall not impair the right of the accused in a criminal case”.

V. Novelty in Intellectual Property Rights Enforcement : Injunction V. Police Raid

In Thailand, the Conventional method of policing intellectual property rights against infringers has always been conducting a police raid. The provisions of TRIPS Agreement, in particular Article 50 equip the authority with the power to order prompt and effective provisional measures to :

(a) Prevent an infringement of any IP right from occurring and entering into the channels of commerce.(Preventive Injunction)

(b) Preserve relevant evidence in regard to the alleged infringement. (Anton Piller Order)

Preventive injunction under Article 50 (1) (a) has been implemented for the first time in Thailand by section 116 of the Trademarks Act 1991, section 77 bis of the Patent Act(second amendment)1992 and section 65 of the Copyright Act 1994.This is seen as a novelty in Thai Procedural law because contrary to the provisions on provisional measures prior to judgment under the Civil Procedural Code, preventive injunction under the IP legislations can be requested prior to the filing of a statement of claim or the prosecution.

However, if one examines carefully into the three relevant section which give rise to preventive injunction in intellectual property matters, some flaws can be detected. On the whole the provision prescribe :

‘IN case where there is clear evidence that a person commits or is committing or is about to commit an act of infringement of intellectual property rights, the right owner may petition a court to make an order restraining such person from committing the infringement.’

The earliest version is that of the Trademark Act 1991.The literal interpretation of section 116 is ‘aperson commits or is committing’ but the Patent Act 1992 and the Copyright Act 1994 prescribe’ a person commits or is about to commit.’ A notion closer to preventive injunction.

On procedural points, the legislation fails to provide the petitioner and the court with sufficient “back up’ mechanism for the effective application of the preliminary injunction. Some of the examples are:

-No provisions as to which court to apply.

-No provisions as to the applicability of an ex-parte hearing.

-No provisions as to speed in which the court is to conduct the case e.g. in urgent cases.

-No provisions as to security for compensation of damages should the petitioner’s claim fail.

-No provision for review requested by the defendant.

-No provisions for lapse or revocation of the order after a certain period.

All the described above are detected and taken care of by the implementation of the Rules of the Intellectual Property and International Trade Court.

Another consideration is that most IP infringement cases in Thailand are brought by criminal prosecution. Attempts should also be made for the improvement of police raids as an alternative to injunction. This predicament may also be true for most jurisdiction in Asean where most infringement cases are blatant and obvious.

Part 2