In this 2016 decision, Public Prosecutor, Office of the Attorney-General vs. Mr. Santad Korthong and Others (2016) – Supreme Court Decision Number 50/2559 the Thai Supreme Court, determined the Defendants’ actions constituted trademark infringement under the Trademark Act, but rejected the Prosecution’s claim the same actions also constituted an offense under the Criminal Code.
The Injured Party was a manufacturer and distributor of various products to which its trademark had been applied, including printing ink stored in cartridges to be used with printers. The Defendants had collaborated to refill empty cartridges with ink of other origins and placed the same in paper bags bearing stickers showing the Injured Party’s trademark.
The Intellectual Property and International Trade Court decided that such actions constituted trademark infringement under Sections 108 and 110(1) of the Trademark Act. Section 108 of the Trademark Act orders that:
“Any person who counterfeits a trademark, service mark, certification mark or collective mark registered in Thailand by another person shall be liable to imprisonment not exceeding four years or a fine of not exceeding four hundred thousand baht or both.”
However, the Prosecution had made an argument in the complaint that the Defendants’ action also constituted an offense under the Criminal Code, but this point was neither expressly considered nor dismissed by the IPIT Court. Thus, the Prosecution appealed to the Supreme Court seeking liability under the Criminal Code as well.
Section 272 of the Criminal Code states:
“Whoever:
- Uses a name, figure, artificial mark or any wording in the carrying on trade of the other person, or causes the same to appear on goods, packing, coverings, advertisements, price lists, business letters or the like in order to make the public to believe that it is the goods or trade of such other person;
[…]
shall be punished with imprisonment not exceeding one year or fined not exceeding two thousand Baht, or both.
The offence under this Section is a compoundable offence.”
The Supreme Court observed that, by the nature of the goods in question, i.e. printing ink, the relevant trademark cannot be affixed directly to the goods itself, and the use of trademarks on such goods therefore usually requires the mark to be affixed on the packaging.
Thus, by placing cartridges into paper bags bearing stickers showing the Injured Party’s trademark, the Defendant’s acts constituted use of another party’s trademark. As this use was for the purpose of misleading consumers into believing the printing ink inside the cartridges originated from the Injured Party, the conditions necessary for a trademark counterfeiting offense were satisfied.
However, as the Injured Party’s trademark was lawfully registered, the Court decided that the counterfeiting thereof constituted a counterfeiting offense under Section 108 of the Trademark Act, which is a provision specifically applicable to infringement of registered marks.
The Court refused to accept the claim that the Defendant’s acts constituted infringement under the Criminal Code, explaining that Section 272(1) is only applicable to counterfeiting of unregistered marks.
By dismissing the appeal, the Supreme Court illustrated counterfeiting offenses under the Trademark Act and under the Criminal Code are mutually exclusive, the former applicable only to cases of registered marks, while the latter to unregistered marks.