Thailand in the International Intellectual Property ( IP) Index
Now in its fifth edition, the U. S. Chamber’s International IP Index continues to provide an important industry perspective on the IP standards that influence both long- and short- term business and investment decisions. The Index is a unique and continuously evolving instrument. Not only does it assess the state of the international IP environment, it also provides a clear roadmap for any economy that wishes to be competitive in the 21st century knowledge- based global economy. Large, small, developing, or developed— economies from across the world can use the insights about their own national IP environments as well as that of their neighbors and international competitors to improve their own performance and better compete at the highest levels for global investment, talent, and growth.
THAILAND - PAST EDITIONS VERSUS CURRENT SCORES
Thailand’s overall score has increased from 25% of the total possible score in the fourth edition ( with a score of 7.40 out of 30) to 27% ( 9.53 out of 35) in the fifth edition. This result reflects some strengths in the new indicators added in the fifth edition, including indicator 31 on custom transparency, and an improvement in indicator 30 on border measures combating counterfeiting and physical piracy.
PATENTS, RELATED RIGHTS, AND LIMITATIONS
Patentability requirements and Patent Opposition: The Department of Intellectual Property ( DIP) continues to face long backlogs, estimated at 38,500 for patents as of mid- 2016. It takes on average 5 to 9 years for a patent to be granted, particularly for life sciences inventions and patents submitted through the PCT route. Against this backdrop, proposed patent amendments would replace the pre- grant opposition system with a time- limited post- grant system, and would shorten the time to request substantive examination from 5 to 3 years. A Board of Invalidation would be set up within DIP to manage post- grant opposition procedures. As an additional measure aimed at reducing the patent backlog, DIP also unveiled plans to triple the number of examiners, currently at only about 40. Nevertheless, the proposed amendments do not address key challenges about patentability criteria, notably in relation to life sciences patents.
COPYRIGHTS, RELATED RIGHTS, AND LIMITATIONS
Clear implementation of policies and guidelines requiring that any proprietary software used on government ICT systems should be licensed software: In late 2015, the Thai Securities and Exchange Commission was reportedly the first ASEAN public body to implement software asset management practices. While positive, this remains an isolated example in a context of general high rates of unlicensed software.
TRADEMARKS, RELATED RIGHTS, AND LIMITATIONS
Discrimination/ restrictions on the use of brands in the pack aging of different products:
The Tobacco Consumption and Control Act, currently under consideration by the Council of State, proposes removing all branding from cigarette packages, save the brand name in small print. In addition to impinging on trademark rights, the measures would make it harder to fight counterfeit tobacco goods, further aggravating an already serious problem in Thailand. The introduction of such a measure applied to any industry would significantly restrict the use of brands, trademarks, and trade dress on retail packaging, undermining the benefits of trademarks to businesses and consumers alike, and setting a negative precedent for IP policy.
Legal measures available that provide necessary exclusive rights to redress unauthorized uses of trademarks:
In 2016, Thailand enacted amendments to the Trademark Act aimed at bringing its provisions in line with the Madrid Protocol, of which the country is seeking to become a member. The amendments clarify some procedural aspects and potentially shorten prosecution time by reducing the time period for responding to DIP actions and oppositions. In addition, they broaden the scope of protection by allowing multiple- class filing and registration of sound marks, as well as by extending the search of similar and identical trademarks to all classes ( at present, it is limited to the one where the application was filed). Importantly, the amendments also criminalize refilling ( that is, passing off unauthorized content as legitimate using original, branded packaging).
Civil and pr ocedural remedies: In 2016, a new Specialized Appeals Court was established in Thailand in an effort to reduce the backlog and strengthen civil proceedings in lower courts. Nevertheless, other barriers to securing relief through the civil system remain unaddressed, such as the limited availability of damages, with the result that civil cases are rarely pursued by IP rights holders.
Effective border measures: A potential loophole exists in relation to in- transit actions introduced in custom legislation in 2015 that could limit the inclusion of IP within the remit of illegal goods because the transshipment of infringing goods is not expressly prohibited in IP law ( only importation is). However, positively, available preliminary evidence suggests that customs officials are interpreting the new provision to include counterfeit goods. On this basis, Thailand’s score for this indicator increased by 0.25.