In view of Thailand's geographic and strategic position for transportation and transition of goods in Southeast Asia as well as the looming ASEAN Economic Community (AEC) involving the establishment of a “Single Window” for importation of goods into AEC, strong and effective customs procedures have never been so crucial. Whilst there are many ways to enforce IPR, border measures enforcement is indubitably one that should not be put aside by IPR holders.

How to use border control measures to fight counterfeiting and piracy?

• File a formal application for recordal with the Thai Department of Intellectual Property (DIP): the DIP will forward your request to prohibit the importation/exportation of products bearing the counterfeit mark/infringing copyrighted works and all supporting documents to Thai Customs for its records and follow up.

• Record your rights directly with Thai Customs (the “Customs Watch List”): Filing a copyright or trademark notice1 and actively cooperating with Thai Customs will help them to distinguish counterfeit from genuine goods and increase the chances of IP infringing goods being blocked at the borders.

Even though renewals are not required, it is recommended to regularly update Customs and/or the DIP of any new trademark registrations/copyright works.

• Request the detention of suspected infringing goods (due to arrive in Thailand or shipped from Thailand): you may lodge a petition with Thai Customs requesting to inspect a specific shipment and/or suspend the release or delivery of imported/exported goods suspected to infringe your trademark and/or copyright.

According to Customs Regulations2, you must confirm to Customs that the alleged infringing goods are counterfeit/pirated (or not) within 24 hours from the date of detention, failure to which the said goods shall be released to the importer/exporter.

In case the seized goods are counterfeit or pirated, the Customs officers may file a petition against the importer/exporter to the Police on the grounds of violation of the Customs and Trademark/Copyright Act for further investigation and prosecution.

Which information could be valuable to the Customs when coming across a consignment of your products?
Pictures/documents explaining how to identify genuine and counterfeit goods;
Means of transportation of your products (by sea, air and/or land);
List of your Intellectual Property Rights with copies of Certificates of Registration and proof of copyright ownership;
List of your shops, stocks and their location;
List of the names of your authorized wholesalers/importers/distributors/manufacturers etc.

For further information or any questions, you can contact us.

1The current customs procedures are only available against counterfeit trademark and pirated copyright goods, and not for infringement of other IP rights such as designs and patents (Section 5 of Export and Import Act B.E. 2522). However, the draft amendment to the Customs Acts shall grant ex-officio powers to Customs officers to inspect goods in transit and transhipment (i.e. where goods are first shipped to an intermediate location in order to hide the point of origin) and broaden the scope of border enforcement to include additional IP rights such as designs and patents.

2Notification of the Customs Department No. 28/2536 on “Procedural guidelines for goods infringing copyrights owned by others” and Notification No. 6/2531 on “Examination of goods if there is reason to suspect that such goods bear counterfeit or imitated trademarks”.