TRIPS and the Specialised Intellectual Property Court in Thailand

Vichai Ariyanuntaka*

IV. Rules of Court Under the IP&IT Regime

It is hoped that as special expertise develops, more just and effective measures in the enforcement of IP rights can be incorporated into the Rules of Court. Rules of Court are a common law technique for creating court procedures. Traditionally, in Thailand as a civil law country, the amendment of procedural laws invariably means amending the Code of Civil Procedure. Under Sec. 30 of the Act for the Establishment of and Procedure for the Intellectual Property and International Trade Court 1996, a new procedure has been devised. It reads:

For the purpose to ensure convenience, expediency and fairness of the proceedings, the Chief Justice of the Central Intellectual Property and International Trade Court shall be empowered to issue Rules of Court on proceedings and hearing of evidence in intellectual property and international trade cases, subject to the approval of the President of the Supreme Court, provided that such provisions shall not impair the rights of defence of the accused in a criminal case.

Changes in the procedure of the court will thereby be achieved more quickly than by the traditional means of an Act of Parliament. Rules of Court may take a couple of months to be finalised, whereas an Act of Parliament will invariably take years. The question of concern is how much of a "blank cheque" would the legislature be willing to give to the judiciary thus empowered. An analogy may be drawn to the power vested in the Executive to issue Royal Decrees and Ministerial Regulations. In other words, what is the scope of the Rules of Court in relation to the principles of procedural law as regards "public order" (l'ordre public)? Can this be interpreted as an encroachment on the legislative functions by the judiciary? A caveat has been made under Sec. 30 whereby "such provisions shall not impair the rights of the accused in a criminal case". However, the fear expressed above has somewhat been disarrayed by the fact that even under the new Constitution of Thailand, the Constitutional Court is entitled to draft its own procedure by the unanimous consent of the justices of the court.⁽²⁷⁾ Perhaps a very common law tradition of the Rules of Court has found its way into the Thai legal tradition, which has always been classified as civil law with common law influence.

V. Novelty in Intellectual Property Rights Enforcement: Injunction Versus Police Raid

In Thailand, the conventional method of policing intellectual property rights against infringers has always been that of conducting a police raid. However, the provisions of the TRIPS Agreement, in particular Art. 50, equip the judicial authorities with the power to order prompt and effective provisional measures to:

Preventive injunctions under Art. 50(1)(a) have been implemented for the first time in Thailand in Sec. 116 of the Trademark Act 1991, Sec. 77^bis of the Patent Act (second amendment) 1992 and Sec. 65 of the Copyright Act 1994. This is seen as a novelty in Thai procedural law because contrary to the provisions on provisional measures prior to judgment under the Civil Procedural Code, preventive injunctions under the IP legislation can be requested prior to the filing of a statement of claim or a prosecution.

However, if one carefully examines the three relevant sections that give rise to preventive injunctions in intellectual property matters, some flaws can be detected. On the whole, the provisions prescribe: "In the case where there is clear evidence that a person commits, is committing or is about to commit and act of infringement of intellectual property rights, the right owner may petition the court to make an order restraining such person from committing such infringement." The earliest versions is that of the Trademark Act 1991. The literal interpretation of Sec. 116 is "a person commits or is committing", but the Patent Act 1992 and the Copyright Act 1994 prescribe "a person commits or is about to commit". A notion closer to a preventive injunction (a quia timet injunction).

On procedural points, the legislation fails to provide the petitioner and the court with sufficient "back up" mechanisms for the effective application of a preliminary injunction. Some of the examples are:

All the defects described above are dealt with by the implementation of the Rules of the Intellectual Property and International Trade Court.⁽²⁸⁾

An English example of an interlocutory injunction might serve to show its application in common law jurisdictions. Perhaps the most celebrated case on the subject matter is the House of Lords case of American Cyanamid v. Ethicon.⁽²⁹⁾ According to Lord Diplock, the correct approach is as follows: The court mush first be satisfied that there is a "serious question to be tried". Thereafter, it should not try to assess relative merit by looking for a prima facie case on the affidavit evidence; it should turn to the balance of convenience instead. If it appears that damages awarded at the trial will adequately compensate the plaintiff, and that the defendant may well be able to pay them, interlocutory relief should not be granted. If damages will not be adequate to compensate the plaintiff, if becomes necessary to consider whether, on the other hand, the defendant would be adequately compensated by damages upon the plaintiff's cross-undertaking, should the plaintiff not make good his claim at trial; if these damages would be adequate, the injunction will be granted. Where there is doubt about the adequacy of damages to one or both, any factor that may affect the balance of convenience is brought into account; in particular, whether the defendant has not yet started on his allegedly infringing course of action (it being "a counsel of prudence … to preserve the status quo"). If the balance remains substantially even, some account can ultimately be taken of the relative strength of each party's case as revealed by the affidavit evidence. This, however, should be done only where there is no credible dispute that the strength of one party's case is disproportionate to that of the other party.

Another consideration is that most IP infringement cases in Thailand are brought by criminal prosecution. Attempts should also be made for the improvement of police raids as an alternative to injunction. This predicament may also be true for most jurisdictions in ASEAN countries where most infringement cases are blatant and obvious.

VI. "Anton Piller" Orders Under Art. 50(1)(b) of TRIPS Agreement

The Anton Piller order derives its name from the celebrated English case of Anton Piller KG v. Manufacturing Process Ltd. [1976] Ch. 55. It has established the rule that the court has an inherent jurisdiction to prevent the defendant from frustrating the process of justice by destroying the subject matter of an action, 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, tat he is likely to suffer very serious actual or potential damage from the defendant's actions, that there is clear evidence that the defendant has incriminating documents or objects in his possession and that there is grave danger that the defendant will remove or destroy the material before an application inter partes can be made. If the plaintiff can satisfy these conditions, the court will grant appropriate relief in the form of an 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 to permit the plaintiff to enter the defendant's premises, to search for goods or documents belonging to the plaintiff or 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 the names and addresses of his suppliers or customers to the plaintiff.

In Thailand, prior to the IP&IT Court regime, there were no provisions which came close to an Anton Piller order. Under Sec.254(3) of the Code of Civil Procedure, the plaintiff might move a court to grant an order arresting and detaining a defendant who wilfully evades a writ or an order of the court, or hides any documents that 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 the more draconian methods of an Anton Piller order.

The language of Art. 50(1)(b) of TRIPS is not clear and certainly one can doubt, even upon the most optimistic reading, that the Article requires a member state to establish something akin to an Anton Piller order in the English sense. Perhaps something along the line of an Anton Piller order, with some restrictions on the part of the successful plaintiff, might be a prototype for the Thai IP&IT Court. These considerations include:

It is a pleasure to report that under Sec. 29 of the IP&IT Court Act and its ensuing Rules of the Court (Rules 20 - 22),⁽³⁰⁾ a somewhat "reformed" Anton Piller order along the lines discussed above has been implemented upon suggestions of the Drafting Committee of the Rules of Court.

However, falling short of an Anton Piller order, the right owner can always consider the relative effectiveness of a search warrant under the Code of Criminal Procedure. It is believed among IP law specialists that the officers of the Department of Intellectual Property Ministry of Commerce, who are designated as law enforcement officers under the Copyright Act, are entitled to file a motion with the IP&IT Court for a search warrant in copyright infringement cases - the first right of this kind given to police officers so far. This diversified right to request a search warrant will lead to less breach of secrecy in conducting raids. However, one is still waiting for the first request of a search warrant from a DIP officer.

VII. Rights of Information

Article 47 of the TRIPS Agreement states: "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 or their channels of distribution."

Two observations may be made here:

In the House of Lords case of Rank Film Distributors v. Video Information Centre,⁽³¹⁾ the defendants in an action for breach of copyright successfully sought the discharge of an Anton Piller order to disclose the names and addresses of their suppliers and customers of illicit copies of the plaintiffs' films on the grounds that this would tend to expose them to proceedings for a criminal offence. The House of Lords held that the privilege relating to self-incrimination in capable of being invoked in such case.

Rank Film was a 1981 House of Lords decision. In the same year, the English Parliament enacted the Supreme Court Act 1981, in Sec. 72 reversing the effect of Rank Film and restoring the full effectiveness of an Anton Piller order by taking away the privilege relating to self-incrimination in intellectual property and passing-off cases.

The above is a fine example of how powerful and effective the lobbyists on the part of the IP rights owners in the UK are.

Part 3

Endnotes:

(27) Art. 269 of the Constitution of Thailand. In defending the draft constitution, the Drafting Committee even cited the specialised court of justice, in particular the Intellectual Property and International Trade Court, as having the authority to draft its own "Rules" (i.e. "Why can't the Constitutional Court?"). This is seen as an interesting move towards the common law technique.

(28) See Rules 12 - 19, Rules for IP&IT Cases. For the sake of convenience, the text of the relevant rules if provided in full as follows:
"Provisional Measures of Protection Prior to Raising an Action Rule12. An application for the Court order under section 65 of the Copyright Act B.E. 2537 (1994), section 77^bis of the Patent Act B.E. 2522 (1979), section 116 of the Trademark Act B.E. 2534 (1991) or other intellectual property legislation, shall state the facts giving rise to the cause of action in the case and the reasons sufficient for the Court to believe that it is appropriate to grant such order. The application shall also include a statement confirming the facts giving rise to the application, of a person who witnessed the cause of action, in order to substantiate the cause of action.
Rule 13. In considering the application under Rule 12, the Court shall grant the application if it satisfies that:
(1) There is reasonable ground for the application and the filling of the application, as well as sufficient reasons for the Court to grant such application, and
(2) The nature of the damage incurred by the person filing the application is such that the damage cannot restituted by monetary measures or any other form of indemnity, or the prospective defendant is not in a position to compensate the application for his damage, or it might be difficult to enforce the judgement against the prospective defendant afterwards.
In considering the application, the Court shall take into account the balance of the extent of damage that might be incurred by both parties.
If the Court issues an order dismissing the application, such order shall be final.
Rule 14. In the case where the Court grants the application under Rule 13, the Court shall notify the prospective defendant of the order without delay.
The order under paragraph one shall immediately bind the prospective defendant even though the prospective defendant has not been notified of the order.
Rule 15. In the case where the Court grants the application under Rule 13, taking into account any damage that the prospective defendant might incur, the Court shall order the person filing the application to provide security for such damage in the amount, within the period and under the conditions, the Court deems appropriate.
Rule 16. In the case where the Court grants the application under Rule 13, the prospective defendant may file an application requesting the Court to repeal or modify the provisional measures of protection. The order of the Court repealing or modifying the measures shall be final.
In the case specified in paragraph one, the prospective defendant may make a request in the application to repeal or modify the provisional measures, or file with the Court, within thirty days from the date on which the Court issues an order repealing or modifying the measures, a request for the Court order directing the person requesting for such measures to compensate him for his damage. If the Court finds, after making an enquiry, that the order granting provisional measures of protection which has been repealed or modified was granted due to the Court's misunderstanding that there is ground for taking an action against the prospective defendant or sufficient reason to grant such provisional measures and the misunderstanding is caused by the fault or negligence of the person requesting for the measures, the Court may order him to compensate the prospective defendant in the amount the Court deems appropriate. If the person requesting the measures fails to comply with such Court order, the Court may enforce such order as if he is a judgment debtor.
Rule 17. In the case where the Court grants the application under Rule 13 but the person requesting for the provisional measures fails to institute an action relating to the application within 15 days from the date on which the application was granted or within the period prescribed by the Court, the provisional measures shall lapse at the expiration of the aforesaid period.
In the case specified in paragraph one, the prospective defendant may file with the Court, within 30 days from the date on which the provisional measure is deemed to lapse, a request for the Court order directing the person requesting such measures to compensate him for his damage. The Court may order the compensation be paid in the amount it deems appropriate. If the person requesting the measures fails to comply with such order, the Court may enforce such order as if he is a judgment debtor.
Rule 18. In the case where the Court grants the application under Rule 13 and an action is instituted in relation to the application within fifteen days from the date on which the application was granted or within the period prescribed by the Court, the provisional measures so granted or modified under Rule 16 paragraph one shall continue to be in force, unless the Court issues an order repealing or modifying the measures according to a request of the defendant. In this case, Secs. 260, 261 and 263 of the Civil Procedure Code shall apply mutatis mutandis.
Rule 19. The provisions on in camera proceedings and prohibition of publication under Rule 24 and hearing conducted via video conferencing facility under Rule 32 shall apply to the proceedings under Rules 13 and 15 to 18 mutatis mutandis."

(29) [1975] A.C. 396, [1975] R.P.C. 513. The passage that followed is quoted from W.R. Cornish, supra note 5, at 57.

(30)"Section 29. In case of an emergency, when an application is filed under Section 28, the applicant may simultaneously file a motion to the effect that the court may issue an order or a warrant without delay. Where necessary, the applicant may also request the court to seize or attach the documents or materials that will be adduced as evidence upon any conditions as the Court may think fit.
The provisions of sections 261 to 263 and sections 267 to 269 of the Civil Procedural Code shall apply mutatis mutandis to the cases referred to in paragraph one.
Application for Taking of Evidence in Advance
Rule 20. A petition or motion for a court order directing the evidence to be taken at once under section 28 of the Act for the Establishment of and Procedure for the Intellectual Property and International Trade Court B.E. 2539 (1996) shall state the facts showing the necessity for taking of evidence at once. If an action has not yet been instituted, the facts showing grounds on which the petitioner may take an action or an action may be taken against the petitioner shall also be stated.
In case of emergency under section 29 of the Act, the motion shall state the facts showing the emergency situation be notified beforehand, such evidence will be damaged, lost, destroyed or, due to some other reasons, difficult to be adduced at a later state.
Rule 21. In the case where the Court grants an order for attachment or seizure of documents or materials to be adduced as evidence in an emergency situation under Rule 20 paragraph two, the Court may order the petitioner to provide security for any damage that might be incurred, in the amount, within the period and under any condition the Court deems appropriate.
Rule 22. The provisions on in camera proceedings and prohibition of publication under rule 24 and hearing conducted via video conference under Rule 32 shall apply to the proceedings under Rules 20 and 21 mutatis mutandis."

(31) [1982] A.C. 380; [1981] 2 All E.R. 76.