The Central Intellectual Property and the International Trade Court (‘the IP&IT Court’ or ‘the Court’) has recently announced the forthcoming implementation of the new Rules for Intellectual Property and International Trade Cases B.E. 2566 (‘the Rules’). The IP&IT Court expects to run another final meeting to discuss the Rules and subsequently publish the Rules in the Royal Gazette to take effect in the coming months. The Rules will replace the previous regulation established circa 1997. The purpose of the novel Rules is to enhance the efficiency and fairness of the Court's procedures, streamlining them to better exploit technology.
While there have been several amendments, the key changes are as follows:
Key Amendments
This new rule will give the Court the flexibility to run the court procedures as the parties prefer and/or the Court sees fit—provided that such procedure is not opposed by any party and does not contradict morality and public policy.
The previous rules stipulated that the parties had a right to file a petition requesting the Court to proceed with the trial according to their agreement but did not provide the Court with the authority to suggest alternative trial methods. This implementation allows the Court to propose a more convenient and expeditious approach to advancing the case.
Under the new Rules, the Court has the authority to order parties to disclose evidence on the preliminary hearing date for the settlement of issues or before the witness hearing date, by informing the parties at least 15 days in advance.
With the Court’s order, the parties must disclose all evidence they possess before the Court, allowing the opposing party to verify and examine the evidence.
This new provision is expected to assist the Court in deciding on certain issues without needing witness hearings. It is hoped that, in appropriate cases, the Court may be able to consider and resolve certain matters based on the evidence already presented, thereby potentially avoiding the need for further witness hearings, and saving court time. If remaining disputed issues require witness testimony, the witness hearings will be conducted specifically for those contested issues.
The Rules will mean that the Court will not be able to consider any evidence that has not been disclosed during the disclosure of evidence date—unless it deems necessary to do so at the Court’s discretion.
Failure to attend the disclosure of the evidence date by both parties will result in the dismissal of the complaint. If one party is absent on the date of evidence disclosure, the Court will proceed with the case further under the assumption that the absent party accepts the facts as presented by the other party’s evidence.
This approach is intended to shorten and streamline the proceedings and allows the Court to focus on the essential matters that require witness testimony.
The Rules will empower the Court to order delivery of the plaintiff’s complaint, the defendant’s answer and other related Court documents via emails rather than through postal delivery or by a court clerk.
If the plaintiff can demonstrate that the defendant’s physical address is unknown, the Court has the authority to order the delivery of the plaintiff's complaint and summons to the defendant to be via the defendant's email address. This email address should be one that is used in the defendant's business operations or has been used in communication with the other party regarding the dispute.
The delivery of the complaint and summons through email will be considered effective after 15 days upon receipt if the defendant resides in Thailand or 30 days upon receipt if he resides outside Thailand.
Appeals against the Trademark Board’s decisions comprise a large percentage of civil trademark cases before the IP&IT Court. The Rules clarify that to challenge the Board's decisions; a plaintiff can just file a complaint against the governing government authority, i.e. the Department of Intellectual Property. It is not necessary to list each member of the Trademark Board as a defendant.
Furthermore, for such cases against decisions of the Trademark Board, the Rules give the Court the authority to order the parties to present witness testimony by way of written affidavits and supporting evidence only instead of in-person witness testimony. The upshot is that the Court, in these cases, will make decisions based on the parties' exchanged affidavits and evidence only, and there will be no cross-examination of witnesses.
While this move will fit in with the current practice concerning the large proportion of the cases against the Trademark Board’s decision, it raises the question of whether the Court remains open to allow in-person witness testimony where appropriate or as requested by the parties—for example, cases to challenge the Board’s opposition and cancellation decisions rather than commonplace non-distinctiveness decisions.
Cross-examination is a core part of due process. And cross-examination against the other side's witnesses plays a significant role in appeals against the Board’s opposition and cancellation decisions, as some factual issues need to be cross-examined. We hope the Court will be receptive to considering requests for conducting in-person witness hearings for this more complicated type of case.
Under the status quo, strictly speaking, most documents in a foreign language must be translated into Thai. But, if parties agree and the documents in question do not concern key issues and are in English, then the Court has the discretion to allow the submission of documents in English with no translation.
The new Rules make clear that if the documents to be submitted to the IP&IT Court are in any foreign language—not just English—and both parties agree that it is not necessary to provide a Thai translation of the entire document or certain parts of them, the Court has the discretion to permit the submission of the documents in a foreign language without Thai translation or with just partial Thai translation. Such permission is subject to the Court's assessment that the untranslated portions are not crucial to the case. Essentially, the new Rules expand the non-translation rule beyond just documents in English.
In addition, the Court has the authority to consider other international regulations, treaties or guidelines in a foreign language without relying solely on the Thai translation submitted by the parties. Such allows the Court to directly examine the source of such documents rather than relying on a submitted translation.
The new Rules will also allow the IP&IT Court to consider international treaties where Thailand is a contracting party whether or not any parties submit Thai translation for them. However, while the Rules make clear that translation is not necessary, the wordings are less clear whether the new Rules are broad enough for the Court to consider treaties even if they are not raised by any party at all—in order to uphold alignment with international principles and practices.
The IP&IT Court may record the audio and/or video of the in-person witness testimony in whole or in parts instead of recording just the essential messages summarized by the Court from the testimony. This recording is new under the Thai practice because currently, the Court's practice is to not record the actual witness testimony but the presiding judges' summary of the witness testimony. The status quo is outdated and time-consuming—as the presiding judge has to summarize everything in his own words, and a Court’s clerk has to type the summary out in a proceedings report. The new practice will harmonize Thai practice with other comparable jurisdictions.
Under the new Rules, the parties or the witnesses will have the right to verify the accuracy of the witness testimony in the presence of the Court and under the supervision of the Court's clerk, but these groups are not allowed to record, copy, or publish the files containing such witness testimony without the Court's permission.
If deemed appropriate by the Court, or upon request by the parties, the Court may allow parties to conduct witness hearing through electronic means, such as Google Meet, Cisco Webex and Zoom. The online hearing in civil cases can be used with every party and at any stage of the proceedings.
However, in criminal cases, online hearings can only take place if each defendant in the case agrees. The exception is for the defendant's plea hearing and the judgment hearing in criminal cases, which cannot be conducted online.
Overall, the new Rules will provide greater clarity and freedom to the IP&IT Court to manage proceedings, including streamlining court procedures and reducing time and costs for parties. Even though the Court will hold another deliberation to discuss the Rules before the Rules are published in the Royal Gazette and in force, it is likely for the essence of the Rules to remain as it is—that is, to streamline the procedures and provide more convenience to parties. With a large volume of cases going to the IP&IT Court, it will be interesting to see if the Rules will lead to a more efficient and speedier processing of the cases at the Court.
Authors:
Peeraya Thammasujarit
Kannicha Wungmuthitakul
Nontaya Chulajata
