Intellectual Property And International Trade Court : A New Dimension For IP Rights Enforcement In Thailand

By Vichai Ariyanuntaka

VI. Anton Piller Order under Art.50(1)(b) of TRIPS Agreement

Anton Piller Order derives from the celebrated English case of Anton Piller KG V. Manufacturing Process Ltd.{1976}Ch.55.It derives from the rule that the court has an inherent jurisdiction to prevent the defendant frustrating the process of justice by destroying the subject-matter of an action or documents or other relevant evidence.

This jurisdiction may be invoked on an ex parte application by the plaintiff. The application is usually made after the plaintiff has issued his writ but before he has served it on the defendant. When the application is heard the court sits in camera. The plaintiff must satisfy the court that he has an extremely strong prima facie case on the merits of his claim, that he is likely to suffer very serious actual or potential damage from the defendant’ section, that there is clear evidence that the defendant has incriminating documents or things in his possession and that there is grave danger that the defendant will smuggle away or destroy the material before an application inter partes can be made. It the plaintiff can satisfy these conditions the court will grant appropriate relief in the from of injunction directed to the defendant, breach of which will put the defendant in contempt of court.

In addition, the order may include a direction to the defendant that he permit the plaintiff to enter the defendant’s premises, to search for goods or documents belonging to the plaintiff or which are relevant to his claim, and to remove, inspect, photograph or make copies of such material according to the circumstances of the case.

The defendant may be ordered to disclose to the plaintiff the names and addresses of his suppliers or customers.

In Thailand, prior to the IP&IT Court regime, there were no provisions which came close to an Anton Piller Order. Under secions 254(4),255(4)(a) and 255(4)(b) of the Civil Procedural Code, the plaintiff might move a court to grant an order arresting and detaining a detaining a defendant who willfully evades a writ or an order of the court or hides any documents which may be incriminating to him in the proceedings.

The measure is hardly used and its effectiveness for preserving evidence is doubtful in the light of a more draconian method of an Anton Piller Order.

The language of Article 50(1)(b)of TRIPS is not clear and certainly one would doubt, even in the most optimistic mind, that requires a Menber State to create something akin an Anton Piller Order English sense. Perhaps somewhere along line with some restrictions on part successful plaintiff might be prototype for Thai IP&IT Court. These considerations include:

-An undertaking by the plaintiff to compensate the defendant in damages for any loss caused, should the plaintiff’s claim fail.

-An undertaking not to use the material or information gained for any purpose other than the action in which the order is given.

-An officer of the court must be present in enforcing the order.

-The plaintiff is not entitled to use force. It is a pleasure to report that under section 29 of the IP&IT Court Act and its ensuing Rules of the Court, a somewhat ‘reformed’anton piller order along the line discussed above is preferred by the Drafting Committee of the rules of the Court.

However, falling short of an Anton Piller Order, the right owner can always consider the relative effectiveness of a search warrant under the Criminal Procedural Code.

VII. Rights of Information

Article 47 of the TRIPS Agreement provides that:

‘Members may provide that judicial authorities shall have the authority to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution’.

Two observations may be made here:

(1)The word ‘may’ in Article 47 indicates a choice rather than an obligation on the part of Member States for its implementation.

(2) The right of information enunciated in Article 47,if applies in a criminal case, may infringe the rule of privilege against self-incrimination. A rule acknowledged by Article 243 of the constitution of Thailand.

In the House of Lords case of Rank Film Distributors V. Video Information Centre{1981}2 All E.R.76,the defendants to an action for breach of copyright successfully sought the discharge of an Anton Piller Order which ordered them to disclose the names and addresses of their suppliers and customers for illicit copies of the Plaintiffs’ films, on the ground that this would tend to expose them to proceedings for a criminal offence. The House of Lords held that the privilege against self-incrimination is capable of being invoked in such a case.

Rank Film was a 1981 House of Lords desision.I n the same year, the Parliament in England enacted the Supreme Court Act 1981 and in section 72 the Act reverse the effect of Rank Film and restores the full effectiveness of Anton Piller Order by taking away the Privilege against self-incrimination in proceedings for infringement of intellectual property rights.

An fine example of how powerful and effective the lobbyists on the part of the IP rights owners are.

VIII. Damages

Under section 64 of the Copyright Act 1994,the court may order appropriate damages for the right owner by taking into consideration the gravity of the damage including loss of benefit and necessary expenses in enforcing his right.

This is an improved version from the former Copyright Act of 1978 which simply stated that a fine shall not preclude the right of the right owner from seeking civil compensation for the amount in excess of the fine which is received by the right owner.

Some comments may be levied on the new section 64 :

-Section 64 satisfies the test under Article 45(1) but not 45(2) of the TRIPS Agreement.*

-Under section 64 of the Copyright Act 1994, it is suggested that the test for damages in a civil action is one of ‘foresee or could have foreseen’ the consequences of the damage. Thus, it is more akin to the wordings of ‘knowinglt or with reasonable grounds to know’ under Article 45(1) than the negative element under Article 45(2).

-Article 45(2) may be of a higher standard than Article 45(1), but the word ‘may’ in Article 45(2) denotes a choice for the Member States rather than an obligation.

-Article 45(2) also demands the payment by the infringer of expenses including appropriate attorney’s fees. Section 64 speaks of ‘necessary’expenses in enforcing the right. Attorney’s fees may be necessary for the enforcement of the right but only appropriate attorney’s fees not excessive attorney’s fees. One would have to use the objective standard in the country of the forum to determine what the appropriate attorney fees’ are.

IX . Conclusion

One concept that may describe conventional wisdom in contemporary Thai society is perhaps globalization. In 1995 the Criminal Court of Thailand extradited a Thai national to face criminal charges in the United States for infringement of drug related offences allegedly committed in America. One of the reasons given by the court was that the Extradition Treaty between the United States and Thailand must be respected and given effect in view of different opinion and practice in other civil law countries, particularly on the Continental Europe. The decision was later affirmed by the Court of Appeal, the final forum on the matter. It was widely acclaimed internationally as a liberal interpretation of the extradition treaty from a civil law country. The then President of the Thai Supreme Court was conferred with an Honorary Doctorate in Law from a prestigious American Law School of which the decision was a higt-light in his inaugural speech. The creation of the Intellectual Property and International Trade Court to foster a fair, speedy, friendly and equitable atmosphere for settlement of trade disputes and effective enforcement of intellectual property rights is in the same direction of globalization.It is on the road to create an atmosphere of trustworthiness and an investment friendly market .This is competitiveness and eventual economic success itself. ----------------------

TRIPS Agreement Article 45

1. The judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity

2. The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney’s fees. In appropriate cases, Member may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.