In a nutshell, what should rights holders know about enforcing brands on social media platforms in Thailand?
Legislation and regulations
Thailand does not have specific laws dedicated solely to governing brand protection or the sale of counterfeits on social media platforms. Instead, general laws such as the Trade Mark Act, the Criminal Code and the Computer-Related Crime Act are typically applied to issues relating to counterfeiting and IP infringement, including those occurring on social media platforms.
Enforcement costs
Trademark enforcement on social media platforms typically involves a combination of actions. For instance, if the rights holders do not yet have specific potential targets, we may initially conduct a survey to identify larger targets (eg, those with presumably significant stock). This includes conducting test purchases and investigations to:
- gather more information on the sellers;
- identify the factory or warehouse; and
- determine the scope of the business and infringements.
If the investigation reveals sufficient proof of infringement to initiate enforcement, various actions can be taken. Depending on the goals of the rights holder and the nature of the targets, options may include pursuing criminal proceedings through a raid action and a subsequent lawsuit.
For targets that transpire to be small-time sellers with minimal stock, actions can include:
- sending warning letters;
- negotiating to cease the infringement amicably and provide remedies; and
- issuing takedown notices to platforms for targets that cannot be identified.
Enforcement can be costly and time consuming, depending on the complexity and location of the infringement, whether litigation is involved, and other factors. However, routine takedowns and enforcement actions can often be efficiently managed and cost-effective.
Court decisions
There have been a limited number of known court decisions relating to platforms and brand enforcement.
In 2022, the Central Intellectual Property and International Trade Court (CIPIT Court) issued its first judgment concerning the liability of e-commerce platforms for indirect IP infringement. In summary, a Thai company filed a civil patent infringement claim against Hangzhou Alibaba Advertising Co Ltd for listing patent-infringing fire-extinguishing balls on Alibaba.com and AliExpress.com. Alibaba denied the claim, citing a lack of knowledge or reason to know about the infringement. Alibaba also argued that it maintains a robust notice and takedown system and would remove infringing content upon receiving proper notices.
The CIPIT Court issued its judgment in favour of Alibaba, concluding that Alibaba was merely an online platform providing services for the buying and selling of products on its website. Therefore, the court ruled that Alibaba did not infringe the plaintiff's patent.
The ruling suggests that proof of knowledge by the platform is crucial in determining liability for indirect IP infringement. If the plaintiff had completed the notice and takedown procedures, providing appropriate evidence of infringement and demonstrating the platform's alleged negligence, and if Alibaba had not taken down the listings in a timely manner, the ruling might have been different.
For other cases concerning trademark infringement, limited published data resources reveal two additional civil cases in 2019 and 2022, respectively. However, both cases were ultimately withdrawn by the plaintiffs, presumably following negotiations with the platform.
Further considerations
Currently, Thailand has a safe harbour principle in relation to copyright infringement only. These regulations are outlined in Part 7, Exemptions of Liability of Service Providers (Sections 43/1-43/8) of the Copyright Act (BE 2537 (1994)). The current safe harbour principle was implemented by the latest amendment to the Copyright Act (No 5, BE 2565 (2022)), which came into effect on 23 August 2022. The Copyright Act is also the sole law stipulating the notice and takedown system.
To summarise, if a service provider receives a notice and takedown request with the required information, it must take down the data and allow the users that posted the allegedly infringing data to oppose by sending a counter-notice. If a counter-notice is received, the Copyright Act provides that the service provider must notify the rights holder/petitioner that the removed data will be restored within 30 days. Unless the rights holder/petitioner files a lawsuit against the alleged user within the 30-day period, the service provider is required to restore the data within 15 days. Service providers that act in good faith will not be held liable for any loss arising from the removal of the allegedly infringing content.
For other IP enforcement cases, similar to the precedent mentioned above, it is advisable to obtain proof of the platform's knowledge of infringement and to first follow and complete the platform's notice and takedown system. If a takedown notice is properly filed through the platform's notice and takedown system, the infringing data should be taken down in a timely manner. Otherwise, and if no counter-notice is provided, the rights holder/petitioner may consider pursuing further action before the court.
As an aside, while platforms cooperate positively in general with takedown notices, they are often reluctant to share information on sellers of counterfeit goods with right holders – presumably due to concerns relating to personal data protection liability. If rights holders are looking to gain information on sellers of counterfeit goods, they are advised to consider running an investigation or lodging a criminal complaint with the police authorities. The police have the power to summon seller information from platforms during an investigation into infringing sellers.
The social media platform landscape in Thailand
As well as the below, common platforms where infringement issues arise include websites set up by sellers or pages on other platforms such as Facebook and Instagram.
Shopee Thailand
Description: The leading e-commerce platform in Southeast Asia and Taiwan, Shopee was first launched in Singapore in 2015 and has expanded to Indonesia, Malaysia, the Philippines, Taiwan, Thailand and Vietnam. According to Similarweb, 'shopee.co.th' was the most visited marketplace website in Thailand in March 2024.
Types of infringement risks: The most common infringement is the sale of counterfeits and unlicensed products (for products requiring licensing (eg, medicines and supplements)).
How to report infringement: IP infringement complaints can be submitted via Shopee's Brand IP Portal. A user guide is also available.
Challenges of enforcement: Previously, the challenges of enforcement on this platform included delayed responses to takedown requests as well as a lack of updates on the process of a request. However, the hope is that these issues will be addressed more efficiently in light of the newly launched Brand IP Portal system. The new system claims to offer a streamlined submission process and seamless status tracking.
Recommendations: It is recommended to follow and complete the information required by the system. Additionally, securing clear and sufficient evidence of infringement is crucial to help prevent hurdles in the enforcement process. By adhering to these practices, brand owners can strengthen their enforcement efforts and improve the likelihood of successful outcomes.
Lazada Thailand
Description: Founded in 2012, Lazada operates in six countries: Indonesia, Malaysia, the Philippines, Singapore, Thailand and Vietnam. In 2016, Lazada became the regional flagship of the Alibaba Group, and it is now backed by Alibaba's technology infrastructure.
Types of infringement risks: Similar to Shopee, the most common infringements are counterfeits and unlicensed products (for products requiring licensing).
How to report infringement: A notice of infringement can be submitted to the IPP Platform.
Challenges of enforcement: From our experience, the challenges of enforcement on this platform include the burden of identifying specific points that distinguish the products posted in the listings from genuine items. This requirement, in addition to obtaining confirmation from the brand owner, can present significant hurdles in the enforcement process.
Recommendations: Similar to the recommendation for Shopee, securing the required evidence of infringement can significantly expedite the takedown process.
Originally published by World Trademark Review, 24 April 2024.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.