Introduction
Thailand, like several other ASEAN countries, serves as a key production base for a wide range of products. Many international and local companies, either independently or through OEMs, manufacture goods here exclusively for export, raising unique legal considerations, particularly in intellectual property.
For trade mark practitioners advising global clients, navigating varying legal interpretations across jurisdictions is crucial. A key challenge is whether the use of trade marks on goods made for export qualifies as "use" within a jurisdiction. This question carries significant implications for trade mark protection, infringement claims, and strategic rights management in the country.
Legal Framework Under the Thai Trademark Act
The Thai Trademark Act governs the registration, protection, and enforcement of trade marks. Section 44 grants the registered proprietor the exclusive right to “use” the trade mark for the goods for which it is registered. However, the Act does not define or elaborate on what constitutes "use" in detail. While Section 110, which addresses trade mark infringement, provides some context by discussing activities such as importation, distribution, and offering of goods bearing counterfeit or imitation marks, it does not explicitly mention exportation. This omission raises the question of whether manufacturing goods for export bearing a trade mark qualifies as "use" within Thailand.
Section 110 prohibits "importation" but does not mention "exportation", leading someone to argue that this omission suggests exportation is excluded. Criminal laws are typically interpreted strictly, so the absence of explicit reference may imply that exportation falls outside the scope of this provision. However, the phrase "has in possession for distribution" could potentially encompass goods intended for export, though no legal precedent has confirmed this interpretation.
The Export and Import of Goods Act
Thailand’s Export and Import of Goods Act provides additional context. The Ministry of Commerce, responsible for enforcing both the Trademark Act and this law, has the authority to regulate goods crossing borders. Notably, the Ministry has issued a notification explicitly prohibiting the export of goods bearing counterfeit or confusingly similar marks. This regulation reinforces the notion that infringing goods are subject to export restrictions, suggesting that "possession for distribution" under the Trademark Act may extend to goods intended for export.
Practical Implications for Clients Engaged in OEM Activities
Given the complexities surrounding the interpretation of trade mark usage in the context of manufacturing goods for export, trade mark practitioners should adopt a proactive approach when advising clients. Key recommendations include:
Conclusion
While Thai trade mark law does not explicitly address exportation, the broader regulatory framework, including the Export and Import of Goods Act, implies that exportation could fall under the concept of "possession for distribution". Manufacturing goods bearing a trade mark for export should be considered as "use" of the trade mark, as it fulfills the fundamental purpose of indicating the origin of goods in commerce. Recognizing this form of use would align with international trade mark principles and enhance protection for brand owners. This legal ambiguity highlights the importance of proactive trade mark clearance and registration to protect clients’ interests, particularly for those engaged in manufacturing goods for export.
The content of this article is intended to provide a general guide to the subject matter. Please reach out to us for advice about your specific circumstances.
