Thailand Law Journal 2010 Spring Issue 1 Volume 13

Lois Vuitton Bags case²⁵

This case displays the fact that judges in both courts do not always follow the same line of reasoning as they did in Sony case discussed above. The facts of the case are following. The defendant was arrested in Bangkok for illegal production of bags of various types with the forged trademark of Lois Vuitton. He was caught in the possession of 55 bags of various kinds ready for sale, and many pieces of leather (around 400) with a forged trademark on them. The defendant confessed the guilt.

It is noteworthy that the prosecution used 2 separate charges. The first charge was that the defendant forged the trademark. It was brought on the basis of Section 108 of Trademark Act. The second charge was that he offered the goods with a forged trademark for sale. The second charge was brought on the basis of Section 110 of the same Act. The prosecutor was careful to underline that the defendant knew the fact that the goods, offered for sale, contained a forged trademark. Despite 2 separate charges, the court of first instance imposed a single penalty on the offender. The court of first instance sentenced the defendant to 2 years of imprisonment and fine of 250.000 baht. Considering the fact of confession, the court reduced the sentence for one half on the basis of Section 78 of Thai Penal Code. Further, the court gave a probation sentence on the ground of Section 56 of Penal Code taking into consideration that the offender did not have previous criminal record. When the defendant appealed asking for the reduction of fine, the Supreme Court did not disagree with a one penalty approach of the court of first instance. Moreover, it held that the fine imposed by the Central Court of Intellectual Property was disproportionate considering the scale of business production. The Supreme Court reduced the amount of fine to 60.000 baht, which was further reduced to one half on the basis of Section 78 of Thai Penal Code.

The fact that both courts used one penalty approach while the prosecution brought 2 charges is remarkable, because the wording of the provisions of the Trademark Act would make the imposition of 2 penalties absurd even though it is required by Thai Penal Code that separate offences must be penalized separately on the basis of Section 91 of Penal Code quoted above. The applied provisions of the Trademark Act are following:

Section 108. Any person who counterfeits a trademark, service mark, certification mark or collective mark registered in Thailand by another person shall be liable to imprisonment not exceeding four years or a fine of not exceeding four hundred thousand baht or both.

Section 110. Any person who: (1) imports, distributes, offers for distribution or has in possession for distribution goods bearing a counterfeit trademark, service mark, certification mark or collective mark under Section 108 or an imitation trademark, service mark, certification mark or collective mark under Section 109; or (2) gives or offers a service under a counterfeit service mark, certification mark or collective mark under Section 108 or an imitation service mark, certification mark or collective mark under Section 109, shall be liable to the penalties provided in those Sections.

Thus, if the courts decided to follow the policy of imposing 2 penalties on 2 charges, then they have to punish twice on the basis of the same section of the Trademark Act. This is so because Section 110(1) refers to Section 108 in imposing penalty. The judges naturally followed common sense and applied sanction only once. The remarkable thing is also the fact that the prosecutor followed the common sense as well in writing down the accusation against the defendant in relation to the second charge: the defendant knew the fact that the goods offered for sale, bore a forged trademark. The common sense, of cause, was not in the necessity to prove it, since the defendant was caught in forging the trademark. The common sense was in the affirmation that Section 110 presupposes that the offence is committed with intent, and not by negligence.²⁶ In other words, the prosecution construed the meaning of Section 110 correctly since it does not explicitly states that the offender must act with the intent and not simply by negligence. Such construction goes along with Thai folk moral principles.

In other respects, this case is not very different from others. In imposing fine, both courts ignored the personality of the offender, even though Sections 56 and 78 allow judges to do that. It also appears that the real impact of the offence on the owner of the trademark was not properly evaluated. The amount of fine was a very rough estimation of the seriousness of the offence.

Thai Folk Moral Principles and Intellectual Property Crime

In the light of Thai folk moral principles as displayed in Thai folktales, Thai law which criminalizes various offences against intellectual property appears defective on several accounts.

First, Thai law has a very much formalist approach to intellectual property offences without paying due consideration to a real impact of the offence on the victim. It is true, however, that Section 76 of the Copyright Act requires that a half from the sum obtained by means of a fine on the offender must go to the copyright owner. In the discussed decisions above, however, the fine was either not imposed, or there is no any evidence that the real impact of the offence on the interests of victims was taken into consideration. No such provision exists in relation to trademark or patent violations. Thai folktales point at the importance of the rights of the victim as the main purpose of justice.²⁷

Second, Thai folktales affirm the universal criminal law principle that punishment must be brought on those who are guilty of the offence. All major Thai intellectual property statues contain a clear departure from the presumption of innocence: Section 88 of Thai Patent Act, Section 114 of Thai Trademark Act, and Section 74 of Thai Copyright Act contain a provision that if the offender is a juristic person, its ALL directors and managers are presumed guilty and subject to criminal penalties. On them rests the burden of proving their innocence. Thai folktales favour an individual approach to each person weighing carefully the circumstances and the reasons for a delinquent behaviour which could be justified on moral grounds and if so must not entail punishment.²⁸ If a judge inflicts unjustified suffering on the defendant, this judge will be punished by the universal law of Karma. It is the duty of the judge to establish the guilt. According to Thai folktales, only a tyrant or a wicked ruler imposes a penalty without looking at the personality of an accused.²⁹