THAILAND

By Chavalit Uttasart

I. Recent Development in IP Laws

1. Proposed Revision of Copyright Laws

The Ministry of Commerce recently proposed the draft of the Revision of the Copyright Act of 1994 to the Cabinet for its approval before further forwarding the said draft to consideration of the Parliament. The main features of the proposed revision of Copyright Act can be summarized as follows:

1. The term “distributing”, which currently incorporated in the definition of “communication to public” under Section 4, is deleted from the said definition. Instead, a separate definition of “distributing” is added to this Section. According to this new addition, the term “distributing” shall mean “selling, providing, exchanging, changing, giving, or assigning the title by other means in the original or the copies created by the creator but not including for the assignment of copyright”.

2. A new exclusive right is also introduced in this proposed draft, namely, a right to distribution. According to this new proposed text, a copyright owner shall have an exclusive right to distribution, except for the distribution of original or duplicated copies of a copyright work with consent or permission of the copyright owner. This revision clearly reflects the adoption of the exhaustion of right principle to the copyright regime.

3. Provisions governing a collector of royalty fees for copyright or performer rights are introduced under this Revision. For instance, the collector is required to report any information concerning administration on the collection of royalty fees to the Copyright Committee; or in case where the collector and the owner of the copyright or performer right cannot agree on a compensation to be paid to the said owner, either party is entitled to request the Copyright Committee to settle on such an issue.

4. Another significant change under this proposed draft is to amend a copyright offence from a compoundable to non-compoundable one. The rationale behind is to prevent a copyright owner from abusing his/her rights provided under the Copyright law. Presently, a number of copyright owners have engaged in raids against any alleged infringer with intention not to pursue it to the end, but rather to settle it in return for quick compensation. This is permissible since a copyright infringement is currently regarded as a compoundable offence. Apart from the above, to make the copyright offence non-compoundable would bring the Copyright law in line with other IP laws, namely, the Thai Trademark and Patent laws.

2. Accession to Patent Cooperation Treaty

The Department of Intellectual Property (“DIP”) has long been studying the possibility of accession to the Patent Cooperation Treaty (PCT) for a number of years. Until recently, the DIP has taken concrete and serious steps to ensure that such accession would become reality in the short coming years. Amongst others, the DIP has already proposed the draft Ministerial Regulations, which implement obligations under the PCT, to the consideration of the Cabinet. The said draft is now under the scrutiny of the Council of State. If everything goes according to its plan, it is foreseeable that Thailand would become a member of PCT possibly within next years.

II Recent Cases

IP&IT Court’s Decision No. Tor.Por.37/2546 This is an example of the case that the Intellectual Property and International Trade Court (“IP&IT Court”) took different view from the Trademark Board and overturned the Trademark Board’s decision concerning the distinctiveness of the term “XSCALE”. The Plaintiff applied for registration of the trademark “INTEL XSCALE”. The Trademark Board ordered that the term “XSCALE” shall be disclaimed since it means “the adjustment of unknown size or volume to be suitable for the data-storing position”. This term therefore has a direct reference to the quality or characteristic of goods designated in the application and is not distinctive for registration. This case went to the IP&IT Court, in which the IP&IT Court took different view and rendered its judgement in favor of the Plaintiff. The IP&IT Court viewed that the term “XSCALE” does not directly describe the quality or characteristic of the proposed goods as claimed by the Trademark Board.

IP&IT Court’s Decision No. Tor.Por.66/2547 The Plaintiff in this case applied for registration of the two-dimensional design of Coke bottle for goods in Class 32 (e.g., soft drink, etc.). The Trademark Registrar as well as the Trademark Board refused to grant registration as the said trademark when being used with the proposed goods is deemed not distinctive enough for registration. This case was brought before the IP&IT Court for its review. The IP&IT Court considered that this trademark is a two-dimensional mark (not in a three-dimensional form), it is therefore not deemed as a container of the proposed goods. Besides, since this trademark is a design in a stylized form, it shall be regards as being distinctive for registration. The IP&IT Court finally ordered that the Trademark Board’s refusal order shall be revoked and that this trademark application shall be proceeded to registration.

E:\Activities\APAA\APPA_report_2004_pn.doc