If you suspect your registered trademark is being infringed, the first step is documenting the evidence systematically - particularly working out whether it's a "counterfeit" or an "imitation" case under the Trademark Act B.E. 2534. Many cases then start with a cease-and-desist letter - not a legal requirement, but a widely used practice. If that doesn't stop it, the mark owner has the right to petition the court for an injunction (Section 116) and pursue criminal charges under Sections 108-111.
This article provides general information for educational purposes only - it is not legal advice for any specific case. Every trademark infringement situation involves different facts and details, and no outcome can be guaranteed in advance. Consult a qualified lawyer or trademark agent to evaluate your specific situation before taking any action.
First, Document Everything
Before contacting the alleged infringer or taking any action, the most important thing is documenting evidence systematically:
- A sample of the suspected infringing product or service, along with a receipt or proof of purchase showing the date and source
- Photos of the mark, packaging, signage, and labeling from every relevant angle
- Advertising or marketing materials that display the suspected infringing mark
- Whatever you can identify about the manufacturer or seller
- A copy of your trademark registration certificate, to confirm the registration date and the scope of goods/services covered
A key distinction to work out early is whether your case is "counterfeiting" or "imitation" - the law sets different penalties for each:
- Counterfeiting (Section 108) - making a mark identical or virtually indistinguishable from another party's registered mark. Punishable by up to 4 years imprisonment, a fine of up to THB 400,000, or both
- Imitation (Section 109) - making a similar mark (not necessarily identical in every detail) with intent to mislead the public into believing it belongs to the original owner. A lighter penalty of up to 2 years imprisonment, a fine of up to THB 200,000, or both
Build a detailed side-by-side comparison of the suspected mark against your registered mark to make an early assessment of which category it falls into.
Cease-and-Desist as a Common First Step
Trademark law does not require sending a cease-and-desist letter before taking any action. In practice, though, many mark owners choose to send a formal letter first, notifying the alleged infringer of the existing registration and demanding they stop. The upside is that some infringers stop immediately once formally notified, saving time and cost compared to filing suit right away. Whether to send one is a case-by-case decision - in some situations, advance notice can give the alleged infringer a chance to prepare a defense or destroy evidence.
When Litigation Becomes Necessary
If a cease-and-desist letter doesn't work, or the situation is urgent, the mark owner has the following statutory rights:
- Injunction - Section 116 lets the mark owner petition the court to order the person to stop or refrain from acts under Sections 108, 109, or 110, where there is clear evidence that such an act is being or is about to be committed
- Confiscation of infringing goods - Section 115 requires that goods imported or possessed for distribution in violation of the Act be confiscated, whether or not anyone is convicted
- Criminal liability for dealers and importers - Section 110 applies the same penalty as Section 108 or 109 (depending on whether it's counterfeiting or imitation) to anyone who imports, distributes, offers for distribution, or possesses for distribution goods bearing a counterfeit or imitation mark
- Penalty for falsely claiming registration - Section 111 sets a penalty of up to 1 year imprisonment, a fine of up to THB 20,000, or both, for representing a mark as registered in Thailand when it is not
Important note: the Trademark Act B.E. 2534 clearly sets out injunctive relief (Section 116) and criminal penalties, but unlike the Patent Act, it does not contain its own civil-damages provision. Claiming damages in a trademark infringement case generally relies on general tort law principles, which have their own details and evidentiary requirements best discussed directly with a lawyer. This article does not cite a specific general-tort-law section, since that falls outside what's been verified directly against Department of Intellectual Property sources.
What the Process Generally Looks Like
Trademark infringement cases in Thailand are heard by the Central Intellectual Property and International Trade Court, the same specialized court that hears patent cases. The process generally starts with filing a complaint along with evidence; if you're seeking a temporary injunction while the case is pending, that typically requires a separate petition. The case then proceeds through trial, which includes presenting evidence to establish the degree of similarity between the marks and the alleged infringer's intent. Actual timelines and costs vary widely case by case, so a general article like this one cannot state a fixed timeframe.
Working with a Trademark Agent vs. a Litigator
Responding to trademark infringement usually requires both expertise in comparing marks and litigation expertise. Patent To You's team advises from the initial assessment and evidence-gathering stage through to direct court representation - not simply referring you to an outside law firm. That said, every case's outcome depends on its own specific facts and evidence; no result can be guaranteed in advance for any case.
Frequently Asked Questions
What's the difference between a counterfeit and an imitation trademark?
Under the Trademark Act B.E. 2534, Section 108, counterfeiting means making a mark identical or virtually indistinguishable from another party's registered mark - punishable by up to 4 years imprisonment, a fine of up to THB 400,000, or both. Section 109 imitation means making a similar mark with intent to mislead the public into believing it belongs to the original owner - a lighter penalty of up to 2 years imprisonment, a fine of up to THB 200,000, or both. The key difference is the degree of similarity and intent.
Can I sue for infringement of an unregistered trademark?
Under Section 46, the owner of an unregistered trademark has no right to sue for infringement under the Trademark Act itself, but can still sue for passing off under general law - a different and typically harder-to-prove route than suing under a registered mark. If your mark isn't registered yet, registering it promptly is worth considering to get full statutory protection.
