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Case Study 55 - Website-blocking measures to combat online trade mark infringement in Thailand

Background

In 2020, a major Japanese company manufacturing imaging and optical products received customer complaints about a website selling dashboard cameras bearing its trade mark. Hoping to shut down the infringing pages immediately, the company sent cease-and-desist letters to the website operator, the website registrar, and the seller – all to no avail. Despite repeated attempts to contact the concerned parties, the pages remained online.

Action taken

As this was happening, several additional infringing websites surfaced. It appeared that, in this case, the long-accepted, traditional measures would not be able to effectively combat the sale of infringing items in a timely manner. The legal team decided to turn to the website-blocking measures of the Computer Crime Act (CCA). These measures were theoretically sound but had not been previously used to enforce legislation against trade mark infringement, as no trade mark owner had attempted to use this legal option before.

As the Department of Intellectual Property (DIP) had also never previously encountered such a strategy used for a trade mark infringement matter, some officers had concerns. After multiple consultations with the DIP officers, the Japanese company filed a trade mark infringement complaint directly with the DIP in late January 2020, without needing to initiate a police case. This was the first complaint ever submitted directly to the DIP in relation to a trade mark infringement matter.

Outcome

The DIP director-general agreed that the offering for sale of dashboard cameras bearing the company’s trade mark without authorisation constituted an infringement under the Trademark Act B.E. 2534 (1991). The DIP then forwarded the matter to the Ministry of Digital Economy and Society (MDES) for further action. After the case was approved, an MDES officer filed a complaint with the court, requesting that the infringing websites be blocked. With the court’s approval, the MDES officer then sent an official notice to the internet service providers (ISPs) and requested that they block access to the specified URLs. Before long, the ISPs complied fully with the court order.

Lessons learned

Website-blocking measures under the CCA are actionable and effective for online trade mark infringement cases in Thailand.

This has important implications not only for copyright and trade mark owners, but also for other IP owners, who can now consider pursuing this efficient option to eliminate the online infringement of their products or services.

Online IP infringement (e.g. counterfeiting, piracy and cybersquatting, etc.) is more and more popular in the internet era; IP owner should proactively monitor websites, e-commerce and social media platforms to detect these violating activities early so that they can take timely action.

Reference: https://www.tilleke.com/resources/thailand-analyzing-first-website-blocking-case-related-online-trademark-infringement
 

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