Protecting Designs Of A Thai Company In Thailand From Copiers

[Jingthing]

If a Thai company created their own unique graphic design, for example, for the design on a T-shirt,

-- could that design be legally protected in Thailand to register ownership of the design (if so how exactly, what is the terminology)?

-- if there was legal protection in place if other Thai companies were found to be copying it, could action be taken, what action could be taken, would such action result in timely and effective consequences (or even compensation), etc.

I have noticed of course widespread copying in Thailand of non-Thai I.P. but not so much for Thai I.P. such as Thai commercial movies. On the other hand a T-shirt likely created in Thailand such as "Good guys go the heaven, Bad guys go to Pattaya" I assume is not legally protected and copied by many. That is a simple text t-shirt, would it be different if there was an original graphic design as well?

Anyway, I hope I have made my questions clear, in case anyone knows about these issues and is generous enough to respond.

[gregb]

You can either go with a copyright in this case, which would be on the image, or a design patent, which would be on the entire shirt using the image (You might want to use the design patent for example if you didn't really own the image, but wanted to protect the idea of someone else using the same image on the same type of shirt). It is up to you to decide exactly what you are trying to keep protected.

You can also register trademarks in Thailand to protect your brand and logo.

Infringement of patents, copyrights or trademarks can be dealt with under civil or criminal statutes. In a civil action, there is a very good chance you would win the suit, although it may take over a year to get to court, and during that time the infringing activity will likely continue. The Thai courts are actually very reasonable here though, and they do generally rule in favor of the IP holders unless there is compelling evidence that no infringement occurred.

However, if the person really wants to infringe, they simply set up a new company and start the infringement activity over again under a new company, and you have to file a new lawsuit. You will be awarded damages as well, but anyone who is infringing likely has no assets for you to attach. The best you could do is sue the company into bankruptcy for non payment of the court judgement. If the infringer was smart, and the company has no assets, then you get zip.

So practically, you have to file a complaint with the police and try and institute a criminal case against a copyright infringer. This requires substantial evidence and intent to infringe for commercial gain (although I understand they recently passed a law for those who purchase infringing products as well even without commercial intent). Technically, there is no difference between foreign or domestic IP here either, but practically the police don't really want to get involved in this. They need to be incentivized to get them to move at all. It is not unsurprising that many more Thai companies than foreign representative offices have the relationships necessary to get the police to do this rather unpleasant work.

In the end, for criminal action it comes down to who you know and what incentives you can offer them. Civil suits are easy to file and easy to win even for foreign IP holders, but collection can be next to impossible if the infringer has even half a brain. Criminal actions are essentially at the discretion of the boys in brown, who have an amazing tendency to fail to find any evidence when the infringer accidentally drops a few thousand baht near the investigating officer. They are more inclined to find evidence if you are a powerful Thai company having relationships with their superiors.

I would suggest you speak with a Thai lawyer about this if you truly want to know. Probably the best known law firm in Thailand for IP is Tilleke and Gibbons. Be prepared to pay a hefty retainer for their counsel though. Otherwise, there are many boutique law firms in Thailand that deal in IP protection. Just Google.

[bangkockney]

in the UK I think you can secure a copyright by sending the materials to yourself registered post. I know many musicians who have done this with scores, digital arrangements etc. However, I really think this is a poor man's alternative and not sure how well it holds up.

Does this hold true in Thailand too?

[Jingthing]

It sounds like fighting the infringement could be as costly as the commercial losses. Thanks gregb for those very interesting details. In the case of the example of protected t-shirt designs, if you owned to design and you found a retail outlet selling them (but buying them from another manufacturer), could you send the police after that retail outlet or would you only have potential action against the manufacturer of the copied designs? Also, if you protected a design could all trivial variations of that design also automatically be protected such a different background colors, or would you need a separate protection for each variation, such as design 10 on beige, design 9 on white, etc.

[Chunky1]

Thai movies and tv shows are bootlegged here. The reason why it is less than Western films is because to buy the real DVD costs less than the Western DVD.

My advice would be to simply offer the best quality and price on your t-shirts and then you won't have to worry about the copycats.

In a nutshell, I think you have around 1% chance of enforcing a tshirt copyright in thailand.

Edited August 6, 2010 by Chunky1

[Jingthing]

Hmmm. How about this idea. Forget about protecting specific designs but protect a trademark graphic. Then put the trademark graphic on all products to at least reserve the potential power to go after big producers copying the trademark graphic. That of course would release rights of the designs without the trademark.

[Chunky1]

Are you planning on opening a store in major shopping mall? If so, having street stall copycats might actually be good for you. It makes your product look like it is worth copying and people will desire the real thing.

[gregb]

It sounds like fighting the infringement could be as costly as the commercial losses. Thanks gregb for those very interesting details. In the case of the example of protected t-shirt designs, if you owned to design and you found a retail outlet selling them (but buying them from another manufacturer), could you send the police after that retail outlet or would you only have potential action against the manufacturer of the copied designs? Also, if you protected a design could all trivial variations of that design also automatically be protected such a different background colors, or would you need a separate protection for each variation, such as design 10 on beige, design 9 on white, etc.

You really are getting into the area you should be talking to a lawyer, but I can give you the basics. Color is not an issue. In either a copyright or design patent, you submit black and white drawings of the design, so variations of that nature are meaningless unless you intentionally submit color drawings and therefore intentionally limit your protection.

Other trivial variations don't usually rise to the level of circumventing the IP either. A subtle font change for example would not be sufficient, unless it is the shape of the font itself that makes the graphics unique, nor would changing the location of something by a few millimeters.

Keep in mind that both copyrights and design patents are designed to keep others from copying your work and misrepresenting it to the public as yours. If the new design is clearly distinguishable from yours so as not to cause confusion in the marketplace, then the other person is not infringing. That is the very nature of infringement. If their design is sufficiently different, it is not copying, so if you can think of sufficiently different variations you will probably want to protect each of them.

If you truly have a novel and unique functional invention, and you want to stop anything even close, you can try for a utility patent. For instance, you could get a utility patent on a specific type of fastener used to close a jacket. Then, the shape of the jacket would not matter, as you would have patented the function, not the form. Thailand has petty patents for that type of invention, and the term is 10 years. But I don't think that is what you have in this instance.

Sounds to me like you would be best served by a simple copyright though. But definitely recommend you speak to a lawyer if you are serious.

As for your other concern, any establishment caught with infringing articles and engaging in commerce is guilty of infringement. Doesn't matter if they are the manufacturer of the articles, the retailer, or a middleman. The fines could be different, and the court would likely be more lenient to a retailer who did not understand what he was doing vs. a manufacturer who was intentionally creating a product, but it would not change his guilt.

The reality is you are significantly more likely to be able to bust a small retailer than a wealthy, politically powerful and well connected manufacturer. That is just Thailand. Much easier to beat up the little fish.

[gregb]

Hmmm. How about this idea. Forget about protecting specific designs but protect a trademark graphic. Then put the trademark graphic on all products to at least reserve the potential power to go after big producers copying the trademark graphic. That of course would release rights of the designs without the trademark.

That is generally the way clothing manufacturers do it. However, don't think that this will completely stop the problem. My wife is constantly buying handbags that say Prada on them from Pratunam for 200 baht.