GIs are names or signs which identify goods as having a specific geographical origin, with the implication that they possess the qualities, reputation, or characteristics for which such products from that region are well known.
Thailand has pioneered GI protection in South-East Asia, and boasts one of the most developed GI protection frameworks in the region. This article explores this framework, as well as touching on how SMEs can ensure their region’s GI is registered in Thailand and protect their rights when necessary.
What are geographical indications?
A Geographic Indication (GI) is a name or sign which identifies goods as having a specific geographical origin, and possessing qualities, reputation, or characteristics that are essentially attributable to products from that place of origin. Often, in cases where a region has developed exceptional production methods, or where the local climate or soil is especially conducive to certain agricultural products, a product’s quality, reputation or other characteristics can be determined by where it comes from.
Examples of GIs include sparkling wines from the Champagne region as ‘Champagne’, Gruyère cheese from Switzerland, or Longjing tea from China.
Whilst GIs operate in a similar way to trade marks, they differ in that they may be used by all producers who make their products in the location designated by the GI whose products share the specified qualities.
Geographical indications in Thailand
GIs have been recognised in Thailand since 2004 and Thailand has pioneered the proliferation of GI protection in Asia with many national and foreign GIs registered and protected. Many EU GIs such as ‘Champagne’ from France, ‘Prosciutto di Parma’ from Italy, ‘Scotch Whiskey’ from Scotland, and ‘Cognac’ from France are already protected and Thai authorities are open to new registrations. In general, GIs for wines, spirits, and rice have stronger protection than those on agri-food products. In addition, GIs on handy crafts are also protectable under Thai law.
For a GI of an EU member state to be protected in Thailand there must be explicit evidence that the GI is already protected in the law of that country, and has been used continuously until the dare of filing an application for registration in Thailand.
Once obtained, GI rights in Thailand last indefinitely, with no need to renew the registration.
It should be noted however that there have been some concern amongst EU companies however regarding non-compliance in respect of Article 22(2) and 23 of WTO TRIPS. Article 22(2) requires countries to provide a legal means to prevent the use of a geographic indication that “suggests that the good in question originates in a geographic area other than the true place of origin.” Under Article 23, a country shall provide a legal means to prohibit the inaccurate use of a geographic indication for wines and spirits regardless of whether the use of the indication on a similar product would be misleading. This provision applies also in cases where the geographic indication is “used in translation or accompanied by expressions such as ‘kind’, ‘type’, ‘style’ or ‘imitation’ or the like.” According to this principle, the use of an expression, such as “Scotch-type Whisky”, shall be prohibited. Meanwhile, only registered Geographical Indications are protected in Thailand, whilst indicating or suggesting that a good originates from a GI-protected geographical area is not.
Registration of GIs in Thailand
Registrations for GIs in Thailand can be made by government agencies, public bodies, state enterprises, local administration organisations, or other state organisations with responsibilities covering the geographical origin of goods. Natural persons, groups of persons or juristic persons engaging in trade which is related to the goods using GI, who are domiciled in the geographical origin of the goods, and groups of consumers or organisations of consumers of the goods using the GI are also eligible to apply for GI registration.
Applications must be made in Thai, or be accompanied by a Thai translation and are submitted to the Department of Intellectual Property (DIP) at the Thai Ministry of Commerce.
There are three main avenues for IP enforcement available in China, as well as a system of customs control which we will discuss in more detail in a future Helpdesk article. In many cases however, private mediation via legal professionals can be an effective first line of defence and should be considered as a viable option. In the event of infringement SMEs are encouraged to seek advice and support from legal professionals as to the current domestic administrative/judicial policy and the chances of success of different actions. SMEs are of course also welcome to contact the Helpdesk for free advice on how best to react to infringements and find the right lawyer to deal with your case.
Due to a lack of resources and proper training in administrative enforcement agencies, coupled with weak punishments imposed on confirmed infringers, administrative measures are generally seen to be ineffective in Thailand. The system also suffers from leaks and corruption which undermines raid actions and investigative procedures.
This being said, the Thai government has committed to improve its administrative enforcement agencies with a focus on large-scale infringers and dangerous goods, primarily in ‘priority areas’, such as MBK and Panthip Plaza in Bangkok, Patong, Kata, and Karon beaches in Phuket, Walking Street in Pattaya, etc. As yet it is unclear where exactly improvements will be made and how this will affect the system as a whole however.
Civil litigation is rarely used for IP cases in Thailand due to difficulties in proving ‘actual damages’, the lack of a formal discovery process, and the delays common in prosecuting cases. In addition, the Thai judiciary is still inexperienced in dealing with IP issues and case outcomes can be unpredictable.
Civil courts can in theory grant injunctions and awards of damages, however, difficulties in proving ‘emergency’ make injunctions rare and damages are still very low by international standards, often not covering the costs of bringing the action to court in the first place.
Criminal prosecution is generally considered to be the most cost-effective enforcement mechanism available to IP rights holders in Thailand. However, search warrants are difficult to obtain and, as with administrative actions, leaks and corruption in the police force can render them fruitless.
The Thai judiciary has also been reluctant to impose harsh penalties on infringers, and as such there is little deterrent provided by even high profile criminal actions. Penalties for trade mark infringement for example can include a maximum fine of approximately EUR 10,000 and/or a prison sentence of up to 4 years. Fines rarely reach the maximum threshold however, and most sentences are reduced or suspended, especially for first-time offenders.
For more information on how to protect and enforce Geographical Indications in Thailand, get in touch with our Helpdesk experts for free, in-depth advice, tailored to the needs of your business.