March 24, 2017
The case, reported on by law firm Spruson and Ferguson in Lexology, saw the Thai public prosecutor and office of the attorney general take up a case against Santad Korthong “and others”, with the case at the Thai Supreme Court having “determined the defendants’ actions constituted trademark infringement”, though it “rejected the prosecution’s claim the same actions also constituted an offence”.
The company that had begun the case, or “the injured party”, was a “manufacturer and distributor of various products to which its trademark had been applied, including printing ink stored in cartridges to be used with printers”. The defendants “had collaborated to refill empty cartridges with ink of other origins” and “placed the same in paper bags bearing stickers showing the injured party’s trademark”.
The country’s Intellectual Property and International Trade (IPIT) Court “decided that such actions constituted trademark infringement”, with Thailand’s section 108 of the Trademark Act” ordering that “any person who counterfeits a trademark, service mark, certification mark or collective mark registered in Thailand by another person shall be liable to imprisonment not exceeding four years or a fine of not exceeding THB400,000 ($11,550/€10,682) baht or both”.
Despite this, the prosecution also “had made an argument in the complaint that the defendants’ action also constituted an offence under the Criminal Code”, but this was “neither expressly considered nor dismissed” by the IPIT Court, so the prosecution “appealed to the Supreme Court seeking liability under the Criminal Code as well”.
It cited section 272 of the Criminal Code, which states: “Whoever: 1.Uses a name, figure, artificial mark or any wording in the carrying on trade of the other person, or causes the same to appear on goods, packing, coverings, advertisements, price lists, business letters or the like in order to make the public to believe that it is the goods or trade of such other person […] shall be punished with imprisonment not exceeding one year or fined not exceeding THB2,000 ($57.75/€53.41), or both. The offence under this Section is a compoundable offence”.
The Supreme Court’s observation was that “by the nature of the goods in question, i.e. printing ink, the relevant trademark cannot be affixed directly to the goods itself, and the use of trademarks on such goods therefore usually requires the mark to be affixed on the packaging. Thus, by placing cartridges into paper bags bearing stickers showing the injured party’s trademark, the defendant’s acts constituted use of another party’s trademark.
“As this use was for the purpose of misleading consumers into believing the printing ink inside the cartridges originated from the injured party, the conditions necessary for a trademark counterfeiting offense were satisfied. However, as the injured party’s trademark was lawfully registered, the Court decided that the counterfeiting thereof constituted a counterfeiting offense under Section 108 […] a provision specifically applicable to infringement of registered marks”.
The article added that the Supreme Court “refused to accept the claim” that the infringement came under the Criminal Code, as section 272 was “only applicable to counterfeiting of unregistered marks”, and by dismissing the appeal, “illustrated counterfeiting offenses under the Trademark Act and under the Criminal Code are mutually exclusive, the former applicable only to cases of registered marks, while the latter to unregistered marks”.
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