This article describes two major seizures by the Thai Customs Department in August 2009. In addition, the article offers a discussion of the border measures that are available to intellectual property rights owners and analyzes the draft of the new Customs Act, which is expected to clarify the procedures for taking actions at Thailand’s borders.

Among other successful litigation cases for Tilleke & Gibbins, the summer of 2009 is notable for three decisions announced by the Dika Court (Supreme Court) that not only have allowed our client’s valuable trademarks to register but also serve as a guideline for brand owners who may face issues of descriptiveness and similarity. Although the Supreme Court’s decisions are not considered precedents to follow under the Thai legal system, lower courts do in practice consider the merits and principles of prior Supreme Court rulings as guidelines when reviewing similar cases.

Buyers in an intellectual property acquisition in Asia and the West want to know the same information about the IP they are acquiring, but the process must be conducted differently in Asia. In Western deals, buyers typically can rely on the statements and warranties accompanying the acquisition agreements for the IP, but in Asia, buyers must be more proactive in performing their own due diligence. Buyers should therefore obtain local advice to ensure that there are no hidden difficulties accompanying their newly acquired IP.

In 1992, Thailand amended its Patent Act in order to ensure compliance with TRIPS, which significantly increased the level of pharmaceutical patent protection. Prior to this amendment, pharmaceutical products had been excluded from patentability. This article examines the patent application for the antiretroviral drug zidovudine, which was initially filed in 1986 with 15 claims covering the process for preparation of the pharmaceutical formulation.

With the techniques of intellectual property infringers and counterfeit goods traders in Thailand becoming more complex, and with the global economy proceeding toward a sluggish recovery, Tilleke & Gibbins has designed new strategies to help clients handle enforcement of intellectual property rights ever more efficiently and cost-effectively. Our years of experience combating infringement and counterfeiting have taught us that brand owners must be proactive and take all reasonable precautions to ensure that their intellectual property rights are secured.

This brief article provides an update on the opening of the Patent Cooperation Treaty (PCT) Receiving Office in Thailand on September 29, 2009. The PCT will enter into force for Thailand on December 24, 2009.

Customs recordal is one of the legal measures that IP owners can employ for enforcement at the borders. The Customs Law provides that IP can be recorded with local Customs offices or the General Customs Department in Hanoi. This article provides an overview of the procedures.

When creating trademarks, pharmaceutical companies often choose words that are similar to the generic names of the International Nonproprietary Name (INN) system administered by the World Health Organization. These marks frequently incorporate the first or last syllables of the relevant INN. The chart below provides samples of trademarks—registered in Class 5 for pharmaceutical products—that are similar to an INN.