Thai­land’s Le­gal Frame­work on Cy­ber­squat­ting

Thai-American Business (T-AB) Magazine - - Contents - Writ­ten by: John Fo­tiadis and Tichachad Yingluecha

Fol­low­ing the global trend, Thai­land is see­ing more and more re­tail trade in goods and ser­vices be­ing con­ducted on­line. So it is un­sur­pris­ing that counterfeiters and other in­tel­lec­tual property ( IP) in­fringers also move their oper­a­tions from the street cor­ners to the in­ter­net. While on the street cor­ner, counterfeiters can­not con­ceal their true na­ture from knowl­edge­able con­sumers. Their fly- by- night phys­i­cal oper­a­tions put con­sumers on no­tice that the goods pro­vided are coun­ter­feit and/ or unau­tho­rized.

How­ever, the in­ter­net of­fers counterfeiters more than just anonymity to con­duct their un­law­ful trans­ac­tions. Cun­ning op­er­a­tors can cre­ate web­sites that will fool even the most knowl­edge­able of con­sumers into be­liev­ing they are deal­ing with a le­git­i­mate and au­tho­rized re­seller. They take ad­van­tage of rec­og­nized on­line ad­ver­tis­ers or mar­ket­places to lend them­selves even fur­ther cred­i­bil­ity.

Most re­cently, we have ob­served an in­creas­ing num­ber of web­sites which are cy­ber­squat­ting and/ or ty­posquat­ting on do­main names iden­ti­cal or very sim­i­lar to fa­mous reg­is­tered trade­marks. We ex­pect to see more of this in Thai­land and SE Asia owing to the ab­sence of clear and ef­fec­tive leg­is­la­tion.

As is the case of Cam­bo­dia, Malaysia, In­done­sia and Sin­ga­pore, Thai­land does not have an ex­press anti- cy­ber­squat­ting law. So as in those ju­ris­dic­tions, en­force­ment against cy­ber­squat­ters must be ac­com­plished through the ex­ist­ing trade­mark and IP laws. How­ever, such en­force­ment is dif­fi­cult as trade­mark in­fringe­ment laws do not fully ap­ply in the case of cy­ber­squat­ting.

AVAIL­ABLE LE­GAL MEA­SURES

Three le­gal mea­sures are avail­able in Thai­land for the en­force­ment of trade­mark rights against cy­ber­squat­ters:

( i) Trade­mark Act;

( ii) Pe­nal Code Sec. 272; and

( iii) Civil and Com­mer­cial Code ( CCC) Sec. 420.

The Trade­mark Act is the strong­est of the three, making the coun­ter­feit­ing or im­i­ta­tion of reg­is­tered trade­marks a crim­i­nal act sub­ject to in­car­cer­a­tion and fines. How­ever, this will only ap­ply for the ben­e­fit of trade­marks reg­is­tered in Thai­land. Pe­nal Code Sec. 271 is more gen­eral, pro­hibit­ing any use of a name or word­ing or im­i­ta­tive sign­board which will mis­lead the pub­lic. This does not re­quire a reg­is­tered trade­mark, and is also pun­ish­able by fine and in­car­cer­a­tion. Fi­nally, there is the gen­eral catch- all lan­guage of CCC Sec. 420 which gen­er­ally pro­hibits any in­jury to the “rights of an­other per­son”. Claims un­der this pro­vi­sion are lim­ited to civil dam­ages.

How­ever, a com­mon ob­sta­cle in all three en­force­ment pro­vi­sions is the re­quire­ment for ev­i­dence of “in­fring­ing use”. Where an op­er­a­tor in Thai­land reg­is­ters a do­main sim­i­lar or iden­ti­cal to a reg­is­tered trade­mark, but uses it to con­duct busi­ness in a dif­fer­ent class of ac­tiv­ity, there is lit­tle that the trade­mark owner can do un­der Thai law.

For ex­am­ple, there is the re­cent Thai­land case brought by the pub­lish­ers of Pent­house Mag­a­zine ( reg­is­tered own­ers for the trade­mark “Pent­house”) against the owner of the do­main “www. Pen­t­house­ho­tel. com.” The case was dis­missed by the Thai In­tel­lec­tual Property and In­ter­na­tional Trade Court on the grounds that the reg­is­tered trade­mark was for “mag­a­zines, casi­nos, night­clubs and TV pro­grams” but not for “ho­tels”. The de­fen­dant’s reg­is­tra­tion of the do­main name, de­spite hav­ing the iden­ti­cal trade­mark, was not deemed un­law­ful.

Sim­i­larly, un­scrupu­lous op­er­a­tors may reg­is­ter do­main names for the sole pur­pose of block­ing le­git­i­mate trade­mark own­ers, in the hopes of re­selling the do­main to the trade­mark owner for a profit. While anti- cy­ber­squat­ting laws such as those en­acted in the U. S. pro­hibit such ac­tiv­ity, the ex­ist­ing le­gal frame­work would be in­ef­fec­tive to take any ac­tion.

The mere act of reg­is­tra­tion of a do­main name that copies the reg­is­tered trade­mark, even if done in bad faith, is not enough to come within the scope of Thai­land’s trade­mark, pe­nal or civil laws. Ab­sent some proof of in­fring­ing use, a cy­ber­squat­ter can reg­is­ter a do­main and do noth­ing with it ( or use it for some alternate, non- in­fring­ing use) with­out reper­cus­sion.

In one no­table cir­cum­stance, how­ever, a cy­ber­squat­ter was pros­e­cuted in Thai­land with­out hav­ing ef­fected an in­fring­ing use for the reg­is­tered do­main. In 2000, when a cy­ber­squat­ter sent an email to trade­mark own­ers threat­en­ing to post porno­graphic im­ages on the web­sites linked to their trade­marks as a means of di­lut­ing their value, the Thai po­lice ef­fected an ar­rest based on charges of ex­tor­tion and black­mail - but no­tably, not for trade­mark in­fringe­ment.

AL­TER­NA­TIVE OP­TIONS

While alternate pro­ceed­ings are avail­able un­der the In­ter­net Cor­po­ra­tion for As­signed Names and Num­bers ( ICANN) for Uni­form Do­main- Name Dis­pute- Res­o­lu­tion Pol­icy ( UDRP) pro­ceed­ings to block cy­ber­squat­ting, th­ese pro­ceed­ings will only ap­ply to generic Top Level Do­mains ( e. g. . com, . biz, . net, . info). How­ever, UDRP pro­ceed­ings will not ap­ply rel­a­tive to Thai lo­cal do­mains (. co. th or . in. th) which are reg­is­tered un­der the Thai Net­work In­for­ma­tion Cen­ter ( THNIC). THNIC re­stricts lo­cal do­main reg­is­tra­tions to ei­ther ( a) own­ers of reg­is­tered trade­marks; or ( b) op­er­a­tors who have a reg­is­tered part­ner­ship/ com­pany with the same/ sim­i­lar name. While this is some­what help­ful, it does not pro­hibit a cy­ber­squat­ter from forming a new com­pany us­ing the reg­is­tered trade­mark ( or part of it) and then reg­is­ter­ing the trade­mark as a do­main name via that shell com­pany. The time and cost in set­ting up and main­tain­ing a com­pany is nom­i­nal. Copy­ing a trade­mark as part of a com­pany name, with­out ev­i­dence of an in­fring­ing use, is also not ac­tion­able un­der the Thai le­gal frame­work.

Un­less THNIC es­tab­lishes an en­force­ment pro­ceed­ing akin to the UDRP ( some­thing both Malaysia and Sin­ga­pore have re­cently in­tro­duced), or un­less Thai­land en­acts an ex­pan­sive anti- cy­ber­squat­ting law, any en­force­ment within Thai­land against cy­ber­squat­ters who are block­ing trade­mark own­ers ( with­out in­fring­ing use) will be­come a grow­ing prob­lem— invit­ing more and more cy­ber­squat­ters to take ad­van­tage of the cur­rent gap in the law.

John Fo­tiadis is Se­nior Mem­ber and Tichachad Yingluecha is IP Coun­sel at Ather­ton. They can be con­tacted at: Johnf@ Ather­ton­le­gal. com or Tishay@ Ather­ton­le­gal. com.

Newspapers in English

Newspapers from Thailand

© PressReader. All rights reserved.