TRIPS and the Specialised Intellectual Property Court in Thailand

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TRIPS and the Specialised Intellectual Property Court in Thailand

Vichai Ariyanuntaka*

Introduction

Should an indicator of the significance of protection for intellectual property rights to international trade and industry be necessary, the following figures form the International Intellectual Property Alliance⁽¹⁾ that purported to show the estimated trade losses due to piracy of US copyrighted materials in Thailand in 1997 may be of some assistance.

Estimated Trade Losses Due to Piracy of US Copyrighted Materials in Thailand and Levels of Piracy in 1997

Industry	Loss in Millions of US Dollars	Level of Loss of Trade
Motion Pictures	19.0	50%
Sound Recordings and Musical Compositions	15.0	40%
Computer Programs: Business Applications	75.5	84%
Computer Programs: Entertainment Software	86.4	85%
Books	32.2	N/A
Totals	227.9	N/A

In the 1998 Special 301 Submission to the United States Trade Representative, the International Intellectual Property Alliance⁽²⁾ summed up the problems in the enforcement of IPRs in Thailand in the following terms:

There is also some positive news on the enforcement front. Beginning with a decision of the Thai cabinet in November 1996, the government has taken steps to address the structural problems of inefficiency, security breaches, inter-agency rivalry and general lack of co-ordination that have plagued Thai enforcement efforts in the past. On April 1, 1997, an interagency working group - the Office of the Joint Committee on the Suppression of Intellectual Property Rights Violations - went into operation. The working group has instructed the Royal Thai Police to give IPR enforcement top priority. Additionally, steps have been taken to loosen the bottleneck control exerted by the Economic Crime Investigation Division (ECID), including the installation of a new ECID commander who is much more receptive to anti-piracy initiatives than were his predecessors.

And:⁽³⁾

The loosening of ECID's bottleneck control over enforcement has translated into a much higher level of enforcement activity. Only 17 raids against audio pirates were carried out in the first four months of 1997. During the next four months, by contrast, after the inter-agency committee took control of enforcement, 60 raids were conducted.

The same report⁽⁴⁾ made, inter alia, the following submissions:

Thailand has come a long way toward meeting its substantive obligations under the copyright portions of the World Trade Organization (WTO) TRIPS Agreement. USTR should encourage Thailand to continue and accelerate this rapid progress toward full compliance with this internationally recognized least common denominator level of copyright protection, with particular attention to the enforcement standards found in Part III of TRIPS. For example, it is imperative that Thailand provide for, and actually impose, criminal remedies which are "sufficient to provide a deterrent" (TRIPS Art. 61): that it eliminate "unwarranted delays" from its enforcement regime procedure and remedies, as well as border enforcement measures that meet world standards.

At the end of the same paragraph, it reads: "The Intellectual Property and International Trade Court could provide a mechanism for achieving many of these goals."

I. Rethinking Philosophy of IPR Enforcement in View of TRIPS and Concept of Private Rights

In the TRIPS preamble, it is recognized that intellectual property rights are private rights. Under Anglo-American jurisdiction, most right owners in enforcing IPRs make use of civil procedure, partly because its technique and atmosphere are appropriate to the assertion of private property rights amongst businessmen, and partly because the types of remedy in particular injunctive relief (interlocutory and permanent) and damages - are more useful than punishment in the name of the state.⁽⁵⁾ Technically, there are two further factors in common law jurisdiction that weigh in favour of civil proceedings:

(1)

In criminal procedure there is no possibility of securing an interim order to desist from conduct pending trial.⁽⁶⁾

(2)

There is a high burden of proof on the prosecution in criminal proceedings: the defendant must be shown to be guilty beyond reasonable doubt, and not merely on the balance of probabilities. This quantum of proof may be particularly hard to demonstrate if the type of offence requires proof of the defendant's mens rea, for example, that he knew, or had reason to believe, that has was committing an infringing act or other offence.⁽⁷⁾

Conventional wisdom in the enforcement of IPRs in Thailand has always favoured police raids, treating IPRs as "public rights". "Trade-based sanctions" from its more influential trading partners have always strengthened the political will to "beef up" enforcement in general. One should pause here, reconsider the philosophy of enforcement and examine common law techniques and the TRIPS mechanism of enforcement. If industries in a market economy were to lose, say, at least US$227.9 million per annum due to copyright piracy, would industry not be well advised to spend a fraction of that amount on private criminal prosecutions or civil actions for injunctive relief and damages of what are basically their private property rights. In the long run it is suggested that if procedures for the enforcement of IPRs as private rights are adequate and effective and the legal profession efficient and knowledgeable, civil proceedings may be a good or even better alternative to criminal ones. This article is an attempt in the author's own private capacity to explore and perhaps persuade fellow legal practitioners to move in that direction.

II. Establishment of Intellectual Property and International Trade Court in Thailand

To cite a celebrated Chinese saying, "we are living in an interesting time". Appropriate, perhaps. In 1997, Thailand witnessed the transition of its economy from phenomenal success and double-digit, or near double-digit, growth of the past few years to one of near collapse verging on the state of bankruptcy in many important finance and real estate sectors. Lawyers, like members of any other professional group, bear the burden of bringing Thailand out of this predicament. This is a time for re-thinking, re-planning and re-structuring our legal infra-structure to create a legal environment friendly to international trade and investment; a legal environment where legal rights, local and foreign, shall be equally protected and enforced under Thai law and the Thai judicial system; a legal environment of good faith and trustworthiness; a legal environment that will lead us to the glory of international trade and investment, and the recovery of the Thai economy as a whole. In the field of the administration of justice, the establishment of the Central Intellectual Property and International Trade Court (the IP & IT Court) is the single most important factor to this end.

The Act for the Establishment of and Procedure for the Intellectual Property and International Trade Court 1996 was passed by the National Assembly and promulgated in the Government Gazette on 25 October 1996. Under the Act, a Royal Decree was later passed to inaugurate the Central Intellectual Property and International Trade Court on 1 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 Community on trade-related aspects of intellectual property rights.

In fact, Thailand is exceeding its obligation under Art, 41(5) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) by establishing the IP&IT Court. Article 41(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 rights 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 was established to create a "user-friendly" forum with specialised 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, a specialised bench and bar in intellectual property and international trade should be grouped together for easy access and administration, and not least for want of a sufficient workload to warrant a separate court system.

III. Some Salient Features of the IP&IT Court System

The following are the most prominent features of the new court system:

-	Liberal use of the Rules of Court to facilitate the efficiency of the forum.⁽⁸⁾ 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.⁽⁹⁾
-	Exclusive jurisdiction on matters of international trade, e.g. international sale, carriage, payment, insurance and related juristic acts.⁽¹⁰⁾
-	Exclusive jurisdiction on the arrest of a ship (a sort of Mareva injunction).⁽¹¹⁾
-	Exclusive jurisdiction on anti-dumping and subsidies.⁽¹²⁾
-	Exclusive jurisdiction in the enforcement of arbitral awards in intellectual property and international trade matters.⁽¹³⁾
-	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 specialisation.⁽¹⁴⁾
-	Availability, for the first time in Thai procedural law, of the Anton Piller order type of procedure. An English invention incorporated into the TRIPS Agreement.⁽¹⁵⁾
-	Use of pre-trial conferences to facilitate a speedy, efficient and fair trial.⁽¹⁶⁾
-	Use of video conferencing for the examination of witnesses outside the court, including overseas, on request.⁽¹⁷⁾
-	Full day and continuous hearings in contrast to the previous piecemeal procedure.⁽¹⁸⁾
-	Use of depositions and affidavits in connection with oral evidence.⁽¹⁹⁾
-	Speedy inquiry and orders for preliminary injunctions.⁽²⁰⁾
-	Possibility of appointing expert witnesses an amicus curiae.⁽²¹⁾
-	Leap-frog procedure where appeals lie directly to the IP&IT Division of the Supreme Court.⁽²²⁾ An attempt to avoid delay.
-	With parties' consent, documentary evidence in English that does not concern the main issues in dispute may not have to be translated into Thai.⁽²³⁾
-	Possibility of in camera proceedings in appropriate cases for the protection of IPRs or to avoid damage to the international business of the parties.⁽²⁴⁾
-	Possibility of extending the jurisdiction of the court to other matters by amending legislation further.⁽²⁵⁾ There have been questions concerning the wisdom of dividing the jurisdiction between domestic and international trade. Some critics suggest that it would have made more sense to transform the "international trade division" of the court into a commercial court entertaining both domestic and international commerce; hence the name "Commercial and Intellectual Property Court" instead of "Intellectual Property and International Trade Court".
-	However, the protection of juvenile delinquents 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.⁽²⁶⁾

While it is suggested that establishing a new court is not an easy task in the first place, its successful promotion in international commerce and industry is even more daunting. It needs the right "legal environment" to attract international commercial litigation. Reputation, integrity, expertise, convenience, accessibility, expenses, respect and the effective enforcement of order or judgment are but some of the more important criteria.

Part 2

Endnotes:

*Judge. Central Intellectual Property and International Trade Court, Bangkok, Thailand.

(1) See the Thailand Section on the 1998 Special 301 Recommendations Submitted to the United States Trade Representative on 23 February 1998 by the International Intellectual Property Alliance.

(2) Ibid. at 384.

(3) Ibid. at 387.

(4) Ibid. at 388.

(5) W.R.Cornish, "Intellectual Property" 49 (3rd ed.. Sweet & Maxwell 1996).

(6) On the contrary, Rule 42 of the Rules for Intellectual Property and International Trade Cases authorises the use of provisional measures of protection prior to instituting an action and application for taking of evidence in advance (a sort of Thai Aton Piller order) for criminal proceedings in IP cases brought before the Thai Intellectual Property and International Trade Court.

(7) W.R. Cornish, supra note 5, at 50.

(8) IP&IT Court Act, Sec. 30.

(9) Id. at Sec. 7(1) - (4)(9).

(10) Id. at Sec. 7(5)(6).

(11) Id. at Sec. 7(7).

(12) Id. at Sec. 7(8).

(13) Id. at 7(11).

(14) Id. at 19.

(15) Id. at 29 and Rules 20 - 22 of the Rules for IP&IT Cases.

(16) Rule 27 of the Rules for IP&IT Cases.

(17) Rule 32 of the Rules for IP&IT Cases. Video conferencing has been used for the first time in a private prosecution of a copyright infringement case involving a right owner in Japan. The witness for the prosecution testified in Japan through the service of the Thai Telecommunication Authority in Bangkok where the court sat for that purpose. The expenses, in accordance with Rule 32, were borne by the party who adduced the witness. Rule 32, para, 2, specifies that the taking of evidence via video conferencing shall be deemed as if it was conducted in the court room. The reason is to overcome the right of confrontation by the accused and the possibility of holding the party at the other end of the conference in contempt of court, if such an offence did occur.

(18) IP&IT Court Act, Sec. 27.

(19) Rules 29 - 31 of the Rules for IP&IT Cases.

(20) Rules 12 - 19, id.

(21) IP&IT Court Act, Sec. 31.

(22) Id. at Sec. 38.

(23) Rule 23 of the Rules for IP&IT Cases.

(24) Rule 24, id.

(25) IP&IT Court Act, Sec. 7(10).

(26) Id. at Sec. 7, para, 2.