Trademark enforcement in Thailand has become increasingly challenging. For brand owners, one of the challenges is no longer merely identifying counterfeit goods, but identifying the individuals and entities operating behind the distribution, storage and commercial networks through which those goods are introduced into the Thai market. In a number of matters we have handled, we have found foreign nationals operating behind local individuals or entities, making it more difficult to identify the persons ultimately responsible for the infringement.

From our past experience, infringing goods are often stored in warehouses or commercial premises belonging to, or registered under, a Thai individual, while the person ultimately responsible for the infringement may remain difficult to identify. This creates significant challenges for both law enforcement authorities and trademark owners, particularly where the local operator is merely an intermediary, tenant, nominee, or other third party connected to a wider network.

This therefore gives rise to a practical enforcement issue. Even where a trademark owner is able to identify a warehouse containing infringing products, identifying the person who actually controls the goods or the business may require further investigation. Consequently, conventional enforcement measures directed only at the immediately identifiable operator may not necessarily lead to the individuals or entities that actually control the infringement network.

To address this issue, a more direct approach may be considered by trademark owners in addition to conventional enforcement measures. One such method is Pre-Litigation Mediation under Section 20 ter of the Thai Civil Procedure Code, which is a form of Alternative Dispute Resolution (“ADR”). For trademark owners, ADR can form part of a broader enforcement strategy aimed at identifying the parties involved, clarifying the commercial relationships between them, and obtaining a better understanding of the factual circumstances that may assist the trademark owner in determining the appropriate next steps.

Traditionally, mediation is generally intended to provide parties with a more efficient means of resolving disputes without proceeding through lengthy litigation. It may reduce the time and costs associated with court proceedings and provide the parties with an opportunity to negotiate a commercially acceptable resolution. Most importantly, it may also prevent the uncertainty resulting from the court’s discretion in adjudicating the case. To date, it has been demonstrated that the function of ADR may extend beyond settlement.

From Settlement Mechanism to Fact-Finding Opportunity

The basic objective of ADR for a trademark owner will usually be to resolve the infringement, obtain appropriate undertakings, and, where applicable, seek damages. Nevertheless, the ADR process may also create an opportunity to engage directly with persons who are connected to the infringing activity.

For example, a Thai individual may have been nominated or assigned to look after certain premises or a warehouse. However, the person actually responsible for the infringement, or other persons involved in the commercial operation, may be third parties who are not immediately identifiable from the enforcement action. Bringing such Thai individual into the ADR process may therefore enable the trademark owner to obtain clarification of the factual circumstances surrounding the premises and the infringing goods.

Any information disclosed during the ADR process must, however, be handled carefully and subject to the applicable confidentiality requirements governing the mediation process. The purpose of raising these matters during ADR should not be to circumvent formal investigative or judicial procedures, but rather to obtain a better understanding of the factual background and, where appropriate, allow the trademark owner to internally consider what further steps may be taken through the proper legal channels.

Accordingly, where information obtained during ADR indicates that further investigation may be necessary, any subsequent evidence preservation, enforcement action or litigation should be supported by evidence independently obtained and verified through appropriate channels. This distinction is important. ADR may help identify the direction in which an investigation should proceed, but the evidentiary foundation for subsequent enforcement should still be properly developed and preserved.

A Practical Example: How a Global Brand Used ADR to Identify the Real Infringer

A recent approach adopted on behalf of a major global consumer brand illustrates how ADR may be used in this broader strategic manner.

The matter involved a Thai individual who had leased premises to a third party. The circumstances suggested that the Thai individual may have knowledge concerning the identity of the tenant, the person responsible for the warehouse, or other persons involved in the commercial operation. Rather than proceeding exclusively against the most readily identifiable infringers, the trademark owner pursued ADR with the owner of the warehouse where the suspected infringing activity had been conducted.

The objective was not limited to obtaining a settlement or an undertaking to cease the infringement. The process was intended to clarify the relationship between the premises, the Thai party associated with the premises, the actual occupier or operator, and the wider supply chain. This approach created an opportunity for the trademark owner to better understand the factual circumstances and to properly strategise its broader enforcement framework.

ADR can therefore provide an opportunity to communicate directly with a person connected to the infringement in circumstances where formal enforcement alone may not immediately reveal the full picture. Even if the ADR process does not ultimately result in settlement, the parties remain entitled to exercise their legal rights, including pursuing further litigation or other enforcement measures where appropriate.

Conclusion

In order to effectively address the source and underlying structure of counterfeit operations, trademark enforcement should not be limited to the seizure of counterfeit products. It should also focus on identifying the individuals and entities behind the commercial networks responsible for their manufacture, storage and distribution.

In these circumstances, ADR can serve a role beyond conventional dispute resolution. Properly structured, ADR may provide a trademark owner with an opportunity to engage relevant third parties, clarify relationships, develop a better understanding of the factual background, and identify potential avenues for further investigation.

The experience of such major global consumer brand demonstrates the practical potential of this approach. Rather than viewing ADR merely as an alternative to litigation, brand owners may, where appropriate, consider it as one element of a broader enforcement strategy.

This does not mean that ADR should replace litigation. Rather, it demonstrates that, in appropriate cases, ADR may enable the trademark owner to adopt a more comprehensive approach in determining the appropriate measures to take thereafter.

Authors

Rachadawan Kelar
Founding and Managing Partner
R.W.T. International Law Office Ltd.
Email: [email protected]
Mobile: +66 91 946 1456

Supapath Srikamol
Associate, Dispute Resolution & Litigation
R.W.T. International Law Office Ltd.
Email: [email protected]
Mobile +66 93 454 2899

Wasamol Laomorakot Associate
Associate, Intellectual Property and Brand Protection Team
R.W.T. International Law Office Ltd.
Email: [email protected]