Outline
Introduction of Active Thailand IP Customs Protection System
By Pin (Jeerisuda) Boonnum & Sophia Hou
Importation of counterfeit, imitation and infringing products have long posed challenges in Thailand, affecting both the government and legitimate owners of trademarks and copyrights. They lead to lost tax revenues for the government, health risks to consumers, damage to the rights owners’ brand reputation and revenues.
To combat the issues, Thai Customs has a crucial role as the first line of defense against imported illegal products. Since at least 1987, Customs has been actively intercepting counterfeit products at Thailand's borders through proactive inspections. Customs have the power to seize products on the grounds of trademark or copyright infringement and tax evasion, (if applicable), among other grounds.
Below are the statistics on the annual numbers of raid actions and items seized by Royal Thai Police, Department of Special Investigation, and Customs, from Department of Intellectual Property’s website at https://www.ipthailand.go.th/en/ipr-enforcement-operation/item/staticpp_dipyear-july2567-tha.html.
Ref: https://www.ipthailand.go.th/en/ipr-enforcement-operation/item/staticpp_dipyear-july2567-tha.html
As the statistic shows, Customs are seizing a relatively significant number of counterfeit products every year.
How to do Customs recordal?
Customs recordal is an essential tool for safeguarding trademarks and copyrights, allowing Customs officers to collaborate directly with rights owners or their representatives when suspected counterfeit products are identified.
Customs authorities across Asia are increasingly proactive in fighting counterfeit goods, utilizing advanced Customs recordal systems to enhance enforcement efforts. Each country has its own approach and official fee structure for recordal services:
China: A Customs recordal costs USD 100 per trademark or copyright, providing robust protection against infringement.
Vietnam: For just USD 10, a single Customs recordal application covers unlimited trademark registrations, patent certificates, and copyrights, offering extensive protection.
Indonesia: Customs recordal is available with no official fee, making it a cost-effective choice for protecting intellectual property, similar to Thailand. However, it only allows for the recordal of trademarks.
Thailand: Customs recordal is available with no official fee and allows for the recordal of both trademarks and copyright works.
In Thailand, the process is streamlined by the Ministry of Commerce Notification on the Determination of Counterfeit Goods and Pirated Goods as Prohibited Goods from Export, Import, and Transit, B.E. 2565 (2022), and Customs Department Announcement No. 106/2565. Since July 29, 2022, rights owners with trademarks or copyrights registered with Thai Department of Intellectual Property (DIP) can use the new TCIRs system for Customs recordals. The rights owners or their representatives can submit Customs recordal applications through the TCIRs website (https://thaiipr.customs.go.th/ipr-app/) without incurring any official fees from Customs. Though, as one of the required documents is a certified extract of the trademark registration from DIP, there is an official fee of approximately USD 6 per trademark registration for obtaining such certified extract.
Required documents for Customs recordal in Thailand are:
Optionally, the rights owners and representatives may also provide guidelines on how to distinguish genuine products from counterfeit products as well as specify the ports of importation of genuine products—to facilitate Customs officers in their inspection of suspected products.
Customs recordal application process involves providing information about trademarks or copyrights, details about the goods, and uploading the required documents and optional information, onto the TCIRs website. Once Customs recordal submission is completed on the website, the rights owners or their representatives must arrange an appointment with a Customs officer to present the original documents for review and approval in person. The status of the application can be tracked online via the TCIRs website.
Upon approval, Customs recordal will remain valid for a period of 3 years, or until the expiration of the recorded trademark or copyright protection, whichever comes first. Renewal of Customs recordal can be requested at least 30 days before the expiration of the three-year period.
Modifying or updating the information in Customs recordal is possible through the TCIRs website after approval, and this process does not incur any official fees.
The process is quick, convenient, and free. Once all the required documents and information are uploaded on the website and presented in person during the meeting, Customs recordal can be completed within 1 to 2 working days. This is very efficient compared to some other countries where the process can take up to 30 working days.
As of August 2024, approximately 1,100 Customs recordal applications have been approved, with trademarks comprising 95% and copyrights 5%.
Though, because it is a relatively new process, Customs is still working on rolling out training on how to use the TCIRs to its Customs officers. As of August 2024, the TCIRs’ use by Customs officers remains somewhat limited. In practice, in event of detention of suspected illegal products, many Customs officers at the borders and Customs posts may look to DIP’s trademark database to reach out to trademark representatives or they may look to representatives having provided recent Customs training — which is the next topic.
Customs Training - IP Awareness enhancement
For rights owners seeking to enhance IP protection via Customs, the first step as mentioned is to file Customs recordal. The second step is to provide regular trainings to increase familiarity and awareness of trademarks or copyrights among Customs officers. This builds a strong foundation of knowledge among Customs officers and helps them in identifying counterfeit products. Additionally, regular trainings offer great opportunity to establish cooperative relationships with Customs and other law enforcement agencies.
Thai Customs does not host its own training events. Instead, rights owners, often through their representatives, should coordinate directly with Customs to schedule sessions at mutual convenience. Most trainings are held in Bangkok, where other relevant law enforcement agencies, such as Department of Special Investigation (DSI), Department of Intellectual Property (DIP), Economic Crime Division (ECD), and Consumer Protection Police Division (CPPD), can also be invited. These other law enforcement agencies often participate in Customs trainings, due to their shared responsibilities in combatting IP infringement.
Annual training is recommended to keep up with the daily influx of imported products and the growing number of trademarks and copyrights. Regular refresher sessions are essential to maintaining and enhancing Customs officers' awareness of your IP rights.
In addition to the training in Bangkok, the rights owners may consider providing a Customs training outside Bangkok — especially if and when a trend of illegal products frequently passing through a certain Customs post is detected. For instance, at Aranyaprathet port on the Cambodia-Thailand Border, counterfeit clothing and personal items are commonly encountered. At the Sadao Customs House port on the Malaysia-Thailand border, there have been frequent detections of suspected counterfeit fuel and alcoholic beverages. Consequently, it would be advantageous to conduct targeted training sessions for brands in the clothing, fuel, and beverage sectors at such ports.
Ex-officio Customs detention of suspected illegal shipments
When suspected counterfeit products are found, Customs officers will detain them and conduct initial screenings to assess authenticity. Subsequently, the officers will contact the rights owners or representatives usually via telephone followed by a formal request letter sent via courier or mail to verify product authenticity. The officers may provide 1 or 2 photographs of the suspected products for initial assessments. If that is not sufficient, representatives may request additional photographs or access to the products, depending on how and where the detained products are stored. According to Customs' detention and notification procedures, the verification of authenticity letter from the rights owners or representatives should be submitted within 3 days upon receipt of Customs’ formal request letter.
If the importer or exporter claims that the seized products are genuine (which does not happen often), the rights owners or representatives may submit a verification letter along with a request for execution within 3 days of receiving Customs notification. A 7-days extension for verification is possible. Officers may request a guaranteed deposit. Its requirement and amount are determined at the discretion of the responsible authority, and there is no standard calculation for the deposit for potential damages. Nevertheless, such requests are very rare, and we have yet to encounter one.
If the rights owners or representatives cannot verify the authenticity of seized products before the deadline, officers may request the involvement of a third-party specialist. This specialist could include individuals who work closely with the brand owner in Thailand, such as sales assistants or brand managers to confirm the authenticity within 15 days of non-responses from the rights owners or representatives. Again from our experience, this scenario where Customs actually seeks a third-party specialist is unheard of.
In practice, Customs often extend their monitoring of brands beyond Customs recordals. They may detain products bearing trademarks listed in DIP’s database, which is publicly accessible via this link: https://search.ipthailand.go.th/. This extended monitoring involves cross-referencing seized goods with the trademarks recorded on DIP’s database to identify potential infringements.
Still, even though Customs' extended monitoring is an option, maintaining Customs recordals and providing training are recommended actions for maximum chances of Customs detentions.
Customs Seizure of specific shipment based on IP right owner’s application
If rights owners become aware of a specific shipment of infringing products, they can request Customs to detain the shipment by submitting a POA along with a formal request letter to examine the specific shipment of the suspected products.
Upon confirming the validity of the POA, officers will notify the rights owners or representatives to attend the physical examination of the shipment within 24 hours. If the products are found to be infringing, the rights owners or representatives must promptly provide authentication verification letter and submit a request for execution within 3 days after the examination concludes.
What will the Thai Customs do with the infringing products?
Once the products are confirmed to be trademark or copyright infringements , the offender will be penalized with the confiscation of counterfeit or infringing goods, along with a fine of up to four times the total value, including taxes or imprisonment for up to 10 years, or both fine and imprisonment. In practice, a fine is a common punishment. Customs will also seize and store the products in its own warehouses and will organize annual destruction at no cost to rights owners. At annual destruction, the government collaborates with private sector to use environmentally friendly waste destruction methods.
For example, the 2024 Destruction Ceremony of Intellectual Property Rights Infringing Goods in Bangkok was hosted by a private company INSEE ECOCYCLE, which utilized rollers, compactors, and cutting equipment to destroy the confiscated goods. The honorable attendees included the Minister of Commerce, the Director-General of Department of Intellectual Property, the Police Commander, the Director-General of Customs, the Director-General of Department of Special Investigation, and the Commander of Royal Thai Army Air Defense Command. Rights owners, representatives and the journalists were welcome to attend as witnesses. There were additional destructions held in Chonburi and Saraburi provinces, outside Bangkok.
The 2024 Destruction Ceremony of Intellectual Property Rights Infringing Goods in Bangkok was held with a formal and impactful atmosphere. The event highlighted the government’s commitment to enforcing intellectual property rights through a meticulously organized destruction process, as depicted in the pictures below.
At the opening of the destruction event, honorable attendees participated by cutting and smashing the counterfeit products.
Example photos of counterfeit products.
The process of destroying counterfeit products involves using various environmentally friendly methods, such as rollers, compactors, and dismantling machines, under the responsibility of experts.
New trends and challenges in IP border protection in Thailand
Counterfeit and imitation products, including clothing, shoes, bags, and electronics, are widespread due to the lower prices, limited public IP knowledge, and the growing ecommerce and transportation industries. In today’s globalized world, sellers can reach consumers worldwide, and the booming transportation industry facilitates the spread of these goods.
At the same time, infringers are growing more sophisticated in avoiding detection. For example, some infringers would import counterfeits via small parcels, without branding labels, or via air transport, or declared as unbranded, or mixed in with other non-infringing products—all of the methods to lower the chances of Customs’ detection.
To address these challenges, rights owners should enhance cooperation with Customs through Customs recordals and annual training. This will improve brand visibility, facilitate the identification of infringing products, update officers on the trend of infringers’ importation method, and increase the success rate of Customs seizures.
For further details or assistance regarding Customs recordal, training, or any information related to protecting intellectual property in Thailand, please do not hesitate to contact us at DRTThailand@rouse.com.