Cross-Border IP Enforcement in Thailand: Anti-Counterfeiting Actions

TL;DR

Counterfeiting and parallel-import disputes in Thailand are fought across four distinct pathways: (1) border seizure by the Customs Department (กรมศุลกากร) under the Customs Act B.E. 2560 (2017), supported by the IP recordation system; (2) criminal raid actions coordinated with the Royal Thai Police Economic Crime Suppression Division (กองบังคับการปราบปรามอาชญากรรมทางเศรษฐกิจ / ECD); (3) civil litigation at the Central Intellectual Property and International Trade Court (CIPITC / ศาลทรัพย์สินทางปัญญาและการค้าระหว่างประเทศกลาง) with preliminary injunctions and Anton Piller-style search orders; and (4) online takedowns via platform notice-and-takedown layered on the Computer Crime Act B.E. 2550 (2007) as amended B.E. 2560 (2017) and ETDA/NBTC channels. The Trademark Act B.E. 2534 (1991) Section 108 sets statutory damages between THB 100,000 and 1,000,000 for trademark counterfeiting alongside actual losses and the infringer's profits. Combined investigator-led raids (private investigators feeding ECD) remain the dominant model in luxury goods, pharmaceuticals, and electronics.

The Four Enforcement Pathways

Customs IP Recordation

The Customs Act B.E. 2560 (2017) reinforces border enforcement powers. The DIP-Customs IP recordation scheme allows rightsholders to register their trademarks and copyrights with Customs, providing officers with reference samples, contact points, and authorised representative information. Steps:

• File recordation through DIP-Customs portal with supporting trademark/copyright certificates.
• Submit product reference catalogues, authorised manufacturer/distributor lists, and known counterfeit patterns.
• Designate 24/7 contact for Customs verification calls.
• Renew recordation every 2 years (or per current Customs notification).

On detection of suspect goods, Customs detains the shipment, notifies the rightsholder, and provides a window (typically 3 working days, extendable) for the rightsholder to inspect, request samples, and lodge a formal complaint or court action. If no complaint follows, the goods are released — making rightsholder responsiveness critical.

Criminal Raid Actions

Criminal enforcement is led by the RTP Economic Crime Suppression Division (ECD); for large or transnational matters, the Department of Special Investigation (DSI) may take the case. The model:

• Private investigators (often retained by the brand or its agent) gather evidence — test purchases, photographs, address verification, inventory observation.
• The rightsholder files a complaint with ECD; an officer is assigned to assess the file.
• The investigator obtains a search warrant from a court of competent jurisdiction (CIPITC for IP cases).
• Combined raid: police lead, investigator supports identification, samples are seized as evidence.
• Suspects are charged; goods are kept as exhibits or destroyed by court order.

Trademark Act Section 108 sets criminal penalties of up to 4 years imprisonment and/or fine up to THB 400,000 for counterfeiting; Section 109 covers selling counterfeit goods with lesser penalties.

Civil Litigation at the CIPITC

The CIPITC is the specialised first-instance court for IP and international trade disputes. Civil remedies under Trademark Act Section 116-117 and Copyright Act B.E. 2537 (1994) Section 64 include:

• Permanent injunctions against further infringement.
• Damages — actual loss, infringer's profit, statutory damages (Trademark Act Section 108 — THB 100,000 to 1,000,000 per registered mark).
• Destruction of infringing goods and tooling.
• Account of profits at the plaintiff's election.

The CIPITC accepts preliminary injunctions and Anton Piller-style search and seizure orders under Civil Procedure Code B.E. 2477 (1934) Sections 254 and 90 — ex parte preservation orders allowing the rightsholder's agent (under court supervision) to enter premises and seize evidence.

Online Enforcement

Evidence Preservation

Civil Procedure Code Section 90 applications and Section 254 preliminary measures both depend on persuasive documentary and physical evidence collected before the application. Brand-protection teams typically combine:

• Anonymised test purchases (with chain-of-custody documentation).
• Photographic and video evidence of point-of-sale and inventory.
• Notarised translations of foreign trademark certificates and well-known mark recognitions.
• Expert reports on similarity / counterfeit identification.

Damages Calculation

Three measures coexist:

• Actual loss — lost sales attributable to infringement; rarely fully evidenceable.
• Infringer's profit — disgorgement of net profit; requires forensic accounting of seized records.
• Statutory damages (Trademark Act Section 108) — THB 100,000 to 1,000,000 per registered mark, designed to remedy evidentiary gaps.

Recent CIPITC awards have trended upward for repeat offenders and high-volume online sellers, though Thai awards remain modest by US/EU standards.

Cross-Border Limits and Cooperation

Thai courts do not grant globally extraterritorial injunctions; orders bind within Thailand. International cooperation depends on:

• Bilateral and multilateral IP enforcement MOUs.
• WIPO and WCO information sharing.
• ASEAN cooperation through the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC).
• Customs-to-Customs cooperation on suspected transshipments.

Common Mistakes

Avoid these traps:

• No Customs IP recordation. Without it, border officers have no reference; recordation is the highest-ROI step in the enforcement stack.
• Filing criminal without investigator-prepared evidence. ECD wants raid-ready cases, not vague complaints.
• Skipping the Anton Piller route in favour of straight pleading. Without ex parte preservation, infringers warned by service routinely destroy evidence.
• Online-only strategy in a manufacturing case. Takedowns address listings but not factories; combined off-line raid is needed.
• Forgetting parallel imports. Thailand applies a regional/international exhaustion approach in some cases; pure trademark infringement claims against genuine parallel imports fail.
• Ignoring well-known mark protection. Foreign brands with strong international recognition often have stronger Thai protection than they realise — but it must be claimed and evidenced.

FAQs

1. Can I sue in CIPITC without a registered Thai trademark?

For unregistered marks, claims must rely on well-known mark protection (Paris Convention Art. 6bis as incorporated into Thai law) or passing-off via the Civil and Commercial Code B.E. 2468 (1925). Registration is far stronger.

2. How long do Customs hold suspect shipments?

Initial detention is short (around 3 working days, extendable on rightsholder request). Continued holding requires a court order or formal complaint.

3. Are statutory damages cumulative across multiple marks?

Yes — Section 108's THB 100,000-1,000,000 range is per registered mark; multi-mark infringement scales the cap.

4. Can I obtain damages and criminal penalties together?

Yes — Thai law treats them as separate proceedings. A single act can attract criminal liability and civil damages.

5. Do platforms always remove infringing listings?

Major platforms operate IP takedown programmes; smaller marketplaces are slower or unresponsive. Computer Crime Act Section 20 court orders are the fallback for non-cooperative hosts.

Related Reading

• Protecting Intellectual Property in Thailand
• Intellectual Property and International Trade Court
• Trademark Opposition and Cancellation Procedures
• E-commerce Consumer Rights in Thailand
• Influencer and Content Creator Legal Guide