Trademark Disputes Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern trademark litigation in your jurisdiction?

The primary laws and regulations that govern trademark litigation in Thailand are:

• the Trademark Act BE 2534 (1991) and its amendments, which establish the substantive law governing trademarks in Thailand, including:
• • the grounds for infringement; and
  • the remedies available to rights holders;
• the Civil Procedure Code, which:
• • governs court procedures for the acknowledgement, protection and enforcement of civil rights and obligations, including trademark civil litigation; and
  • sets out the rules of evidence applicable in civil court proceedings;
• the Criminal Procedure Code, which:
• • governs the procedures for criminal litigation before the Central Intellectual Property and International Trade Court ('IPIT Court'); and
  • sets out the rules of evidence applicable in all court proceedings; and
• the Act for the Establishment of and Procedure for the Intellectual Property and International Trade Court, BE 2539 (1996), which governs the procedures for both civil and criminal proceedings in trademark disputes. It provides specific procedural rules, supplementing the Civil Procedure Code and the Criminal Procedure Code, to ensure that the process is tailored to the nature of IP-related disputes

1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?

Thailand is a contracting party to several multilateral instruments and trade agreements that have direct or indirect relevance to trademark dispute. These instruments establish substantive rights, procedural standards and enforcement mechanisms which are implemented through Thailand's domestic trademark legislation and judicial practice. They include the following:

• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs): Administered under the World Trade Organization framework, TRIPs:
• • sets out minimum standards for the protection and enforcement of IP rights, including trademarks; and
  • requires effective civil and criminal enforcement measures.
• Paris Convention for the Protection of Industrial Property: This establishes principles of national treatment, the right of priority and special protection for well-known marks, which are incorporated into the Trademark Act.
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol): This enables rights holders to seek international trademark protection through a single application, facilitating the enforcement of marks in multiple jurisdictions, including Thailand.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?

In Thailand, trademark law is interpreted and enforced in four primary forums.

Customs authorities: Customs officers are empowered to inspect, intercept and detain goods that are suspected of infringing trademark rights at borders. Although the Trademark Act BE 2534 (1991) does not specifically grant seizure powers, the Customs Act BE 2560 (2017) authorises Customs to act against goods that are suspected of violating IP rights – including counterfeit products – at points of import, export and transit.

Police authorities: Criminal enforcement is handled by:

• local police;
• the Economic Crime Division of the Royal Thai Police; and
• the Department of Special Investigation.

Upon complaint or on their own initiative, these agencies investigate and conduct raids under the Criminal Procedure Code and the Trademark Act BE 2534. They play a central role in the criminal prosecution of trademark offences.

Department of Intellectual Property (DIP): The DIP, through the Trademark Board, is responsible for administering trademark registration, opposition, cancellation and appeals. It issues binding decisions on administrative trademark matters. DIP officers may also provide expert opinions in support of law enforcement actions, particularly in determining similarity between marks.

IPIT Court: This specialised court has jurisdiction over civil and criminal trademark disputes, including infringement, cancellation and appeals of Trademark Board decisions. It interprets and applies the Trademark Act BE 2534 and provides judicial oversight in trademark enforcement.

2 Forum

2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?

In Thailand, trademark litigation is heard before the Central IP and International Trade Court ('IPIT Court'), which has jurisdiction over both infringement and validity matters. Both types of issues, whether involving the trademark infringement or challenges to the validity of a trademark, are decided in the same forum.

2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?

In trademark prosecution matters, such as oppositions, cancellations and appeals, the Trademark Board under the Department of Intellectual Property is responsible for examining and issuing decisions. If a party disagrees with the decision of the Trademark Board, it may file an appeal with the IPIT Court).

For trademark enforcement actions (eg, infringement cases), the Trademark Board is not involved. Such cases fall entirely under the jurisdiction of the IPIT Court, where disputes are heard and decided by judges. There is no jury system in Thailand.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

In Thailand, all IP matters fall under the exclusive jurisdiction of the IPIT Court. This specialised court is designated to handle all IP-related disputes, including both civil and criminal trademark matters. As such, parties do not have the option to choose between multiple courts and all trademark litigation must be brought before the IPIT Court.

3 Parties

3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?

In Thailand, the following parties have standing to file a trademark infringement lawsuit.

• Injured party: The person or legal entity directly affected by the infringement may initiate legal action in civil or criminal court. To have legal standing, the claimant must fall into one of the following categories:
• • a registered trademark owner that holds the exclusive rights to the mark;
  • a licensee that is authorised to use the mark under a valid trademark licence agreement; or
  • any person or entity with a legitimate interest in the mark that has suffered direct damage due to the infringement.
• Public prosecutor: Where law enforcement authorities such as the police have investigated and found sufficient grounds, a criminal case will be referred to the public prosecutor, who has standing to file a criminal complaint on behalf of the state.

For a private party to file suit, it must provide evidence proving its rights in the trademark (eg, registration or licensing documents) and the damage suffered, which it has the burden of proving.

For the public prosecutor, the process typically starts with a police investigation before being passed to the prosecutor.

3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?

A trademark infringement action may be brought against a defendant that is a foreign entity with no residence or place of business in Thailand. Although the Trademarks Act does not expressly address jurisdiction, the jurisdiction of the competent court is established under other statutes – namely the Civil Procedure Code and the Criminal Procedure Code.

In terms of civil proceedings, under Section 4 of the Civil Procedure Code, a plaintiff may file a trademark infringement lawsuit with either:

• the court that has jurisdiction over the defendant's domicile; or
• the court within whose jurisdiction the cause of action arises.

If the cause of action or its effect occurs in Thailand, this provision enables the injured party to commence proceedings in the court where such cause of action exists.

In terms of criminal proceedings, Section 22 of the Criminal Procedure Code authorises the injured party or the public prosecutor to bring a criminal action before a Thai court if the offence was committed either within or outside Thailand. Accordingly, if a criminal trademark infringement by a foreign entity has a sufficient connection to Thailand, the jurisdiction of the Thai courts may still be established.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

A single trademark infringement action can be brought against multiple defendants in Thailand, provided that the claims against each defendant are based on the same facts or legal grounds – that is, if multiple parties are involved in the manufacture, distribution or sale of infringing goods.

3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?

Under the Trademark Act BE 2534, any third party may seek cancellation of a national or international trademark registration in Thailand on the grounds that the mark is contrary to public order, good morality or public policy, pursuant to Section 62.

Other grounds for cancellation, such as non-use for three consecutive years (Section 63), are available only to 'interested persons'.

3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

Under Thai law, there is no specific legal provision allowing a third party to seek a declaration of non-infringement.

4 Trademark infringement

4.1 What constitutes trademark infringement in your jurisdiction?

Trademark infringement in Thailand occurs when a person uses a mark that is identical or confusingly similar to a registered trademark without the owner's consent in the course of trade, in a manner that is likely to cause public confusion as to the source of the goods.

4.2 How is infringement determined?

Infringement is determined based on whether the mark used on the products is identical or confusingly similar to the registered trademark.

If the mark on the product is identical to the registered trademark, it is considered a counterfeit product. On the other hand, if the mark is not exactly the same but sufficiently similar to cause confusion among consumers regarding the origin of the goods, it is considered an imitation mark and also constitutes infringement.

4.3 Is wilful infringement recognised? If so, what is the applicable standard?

In Thailand, wilful infringement is recognised as a significant relevant factor that can affect the court's judgment, particularly when assessing damages or penalties for trademark infringement.

5 Bringing a claim

5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?

In Thailand, a trademark owner has several options to enforce its rights against infringement, including:

• sending a cease-and-desist letter to the alleged infringer to demand the immediate cessation of infringing activities;
• filing a complaint with relevant authorities (eg, police) to initiate investigations and possible raid operations against counterfeit goods;
• filing a lawsuit directly with the Central IP and International Trade Court ('IPIT Court') to seek injunctions and other legal remedies;
• submitting a customs recordation to Customs to enable the seizure or detention of suspected infringing goods at the border during import or export; and
• reporting infringing content to online platforms to request the removal or takedown of counterfeit listings or content.

5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?

The Trademark Act does not prescribe a specific limitation period for bringing a trademark infringement action. Instead, the applicable limitation period depends on the nature of the claim:

• Civil claims for damages: Pursuant to the Civil and Commercial Code, the limitation period is generally one year from the date on which the injured party becomes aware of both the infringement and the identity of the infringer, but in any event no more than 10 years from the date of the infringing act.
• Criminal prosecution for penalties: The limitation period for criminal proceedings is determined in accordance with Section 95 of the Criminal Code, which varies based on the maximum penalty prescribed for the offence. In cases of trademark infringement, the limitation period may range from one to 10 years. Where a civil claim for damages is directly related to a criminal action, the limitation period for such civil claim may be extended to 10 years from the date of the final judgment imposing criminal liability on the infringer.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

In Thailand, there is no legal requirement to notify the alleged infringer in advance before initiating an IP infringement action. However, it is common practice to send a cease-and-desist letter or warning letter to the alleged infringer as a pre-litigation step to encourage voluntary compliance or settlement before proceeding with formal legal action.

5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?

In Thailand, trademark infringement actions are adjudicated by the IPIT Court. A plaintiff must meet both procedural and substantive requirements as set out under the Trademark Act BE 2534 (1991) and the Civil Procedure Code.

Procedurally, the plaintiff must be either:

• the registered owner of the trademark; or
• a recorded licensee authorised to enforce the mark.

The complaint must be submitted in Thai and signed by a licensed Thai attorney. Jurisdiction lies exclusively with the IPIT Court, which handles both civil and criminal aspects of trademark disputes.

Substantively, the complaint must clearly establish:

• ownership of a valid registered trademark;
• the defendant's infringing conduct – typically the unauthorised use of an identical or confusingly similar mark on related goods or services;
• a likelihood of confusion or damage to the trademark's distinctiveness or reputation; and
• the specific relief sought, such as:
• • injunctive relief;
  • damages;
  • destruction of infringing goods; or
  • statutory interest.

The level of detail in the complaint must be sufficient to demonstrate a sufficient basis for the claim. Plaintiffs are expected to submit supporting evidence, including product samples and documentation showing consumer confusion or loss of market share. General or speculative allegations may result in dismissal or require amendment.

These procedural safeguards ensure that only well-founded trademark claims proceed, thereby maintaining fairness and efficiency in Thailand's IP enforcement framework.

5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?

In Thailand, interim remedies are available in trademark litigation to provide temporary relief while the case is pending. To obtain such remedies, the plaintiff must demonstrate three key elements:

• a sufficient basis for the claim, meaning that there is a valid legal claim;
• urgency, showing that immediate relief is needed to prevent irreparable harm; and
• no adequate remedy at law, meaning that without the interim remedy, the plaintiff would suffer harm that could not be compensated by damages alone.

The most common interim remedies include:

• preliminary injunctions, where the court can issue an injunction to stop the defendant from continuing trademark infringement during the litigation process;
• seizure orders, where the court can order the seizure or detention of counterfeit goods to prevent their distribution; and
• freezing orders, where the court may freeze the defendant's assets to ensure that damages or claims can be satisfied in the event of a favourable judgment for the plaintiff.

The plaintiff can apply for interim relief early in the litigation and the court typically makes a decision quickly, given the urgency often involved in trademark matters. These remedies aim to preserve the plaintiff's rights and prevent further harm until the case is resolved, ensuring that the final judgment will be effective and enforceable.

Thailand's legal system thus offers effective provisional measures to protect trademark owners during litigation, safeguarding their interests while awaiting final adjudication.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

In Thailand, the Civil Procedure Code provides mechanisms to protect parties from litigation risks, particularly in trademark disputes involving foreign plaintiffs or potentially evasive defendants.

Under Section 253, if a plaintiff lacks a domicile or business office in Thailand and has no assets subject to enforcement, or if there is credible concern that the plaintiff may evade payment of costs should the case be lost, the defendant may petition the court to order the plaintiff to deposit money or provide security. If the court finds such concerns reasonable, it will issue an order specifying:

• the amount payable;
• the deadline by which it should be paid; and
• conditions for the security.

Additionally, Section 255 authorises the court to issue protective measures against a defendant. If there is credible evidence that the defendant intends to remove, transfer or dispose of property, whether disputed or not, in an attempt to delay or obstruct enforcement of a future judgment or to prejudice the plaintiff, the court may intervene. The court may also act if there are other necessary and just reasons to prevent irreparable harm. The court may also order to the request of protective measures to deposit money or provide security for any potential damages as they see appropriate.

Together, these provisions empower the Thai courts to maintain the integrity of legal proceedings by securing cost recovery for defendants and preventing judgment-proofing behaviour by plaintiffs and defendants alike.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

The Civil Procedure Code governs the disclosure of evidence in litigation, including trademark infringement cases. Parties must disclose relevant documents and evidence to each other, particularly those that support their claims or defences. The process is designed to ensure transparency and allow each party to prepare its case. However, there are exceptions, as the following are not subject to disclosure:

• documents covered by legal professional privilege;
• trade secrets; and
• confidential business information.

If a party refuses to disclose relevant evidence without justification, the court may draw adverse inferences. The Central IP and International Trade Court also has discretion to limit the disclosure of sensitive information that could harm a party's business interests.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

Third-party disclosure in Thailand is governed by Section 123 of the Civil Procedure Code. A party may request the court to issue a summons for relevant documents or physical evidence from a third party such as a supplier or competitor if those materials are essential to the case. However, the requesting party must clearly demonstrate the relevance and necessity of the evidence.

If the court grants the request and the third party fails to comply with the summons, it may be subject to penalties under Section 170 of the Criminal Code, which provides for imprisonment, a fine or both for failure to comply with a lawful court order.

In cases involving trade secrets, confidential information or commercially sensitive material, protective measures are available under Article 34 of the Rules for Intellectual Property and International Trade Cases BE 2540 (1997). The court may:

• prohibit the public from attending all or part of the hearing; or
• order that the facts and circumstances of the case not be disclosed or publicised.

These measures help prevent damage to a party's business or reputation or the disclosure of protected IP rights.

Notwithstanding any confidentiality orders, Thai law requires that final judgments be read in open court. Nonetheless, publication of the full decision or an accurate and neutral summary is permitted and does not constitute a breach of confidentiality

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

In Thailand, legal professional privilege protects confidential communications between a lawyer and their client made for the purpose of obtaining or providing legal advice. This privilege is recognised under the Lawyers Act BE 2528 (1985) and the Criminal Code, and applies to oral and written communications, including documents prepared in anticipation of litigation. Its primary function is to:

• preserve the confidentiality of legal consultations; and
• promote full and frank disclosure between lawyers and their clients.

However, legal privilege in Thailand is subject to certain limitations:

• Communications made in furtherance of illegal activities, such as fraud or criminal conduct, are not protected and may be admissible in court; and
• Privilege may not extend to communications with in-house counsel or non-licensed attorney advisers, as Thai law does not explicitly recognise such roles within the scope of privilege.

While trade secrets and confidential commercial information are not automatically privileged, parties may apply for protective measures under Article 34 of the Rules for Intellectual Property and International Trade Cases BE 2540 (1997). The court may, at its discretion, exclude the public from hearings or restrict publication of sensitive case details to protect business interests.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?

The procedure for collecting and presenting evidence in trademark infringement litigation is governed by the rules of the Central IP and International Trade Court ('IPIT Court'). Parties must submit relevant documentary and physical evidence – such as infringing products, packaging, advertisements or sales records – within a timeline prescribed by the court. This usually occurs before the witness examination stage, depending on the court's procedural order.

The court may permit both fact and expert witness testimony to support claims or defences. Additionally, parties may submit requests for the court to issue subpoenas for witnesses or summonses for documentary or physical evidence. The court may also conduct on-site inspections or appoint experts to examine infringing goods or services where appropriate.

During the proceedings, the opposing party may raise objections to the admissibility or relevance of submitted evidence. The court:

• maintains discretion to determine whether the evidence meets the threshold of credibility and relevance; and
• ultimately, assigns weight to the evidence in its judgment.

The evidentiary process in the IPIT Court is structured yet flexible, allowing the judge to ensure fairness and thoroughness while adhering to procedural efficiency. The standard of proof is the balance of probabilities in civil proceedings and the burden of proof rests with the claimant to establish the infringement and resulting damages.

7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?

In trademark litigation in Thailand, documentary evidence, physical evidence and witness testimony are commonly used. Expert evidence is accepted, particularly in technical or specialised areas related to the trademark, such as distinctiveness or likelihood of confusion. Survey evidence, though less common, may be used to show consumer perception or confusion regarding the trademark. Expert and survey evidence are typically accepted, though they are not used in every case. Their admissibility depends on:

• the case's specifics; and
• the court's discretion.

7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?

Any evidence from criminal proceedings can be used in civil trademark infringement cases in Thailand, particularly when both cases involve the same disputes, facts and parties. In such instances, the civil court will generally await the final judgment of the criminal court and adopt the established facts from that proceeding when determining the civil claim. Criminal evidence – including witness testimony, investigation reports and seized infringing goods – may be submitted in civil litigation, provided that it complies with the evidentiary requirements under the Civil Procedure Code. While the standards for admissibility may differ between criminal and civil proceedings, courts have the discretion to admit such evidence if it is deemed relevant and properly presented.

However, the reverse does not always apply. Evidence from civil proceedings may not necessarily be admissible in criminal cases, as its acceptance depends on its relevance and reliability and the court's discretion under the stricter evidentiary standards of criminal procedure.

7.4 What are the applicable standards of proof?

In civil trademark infringement cases in Thailand, the standard of proof is the preponderance of the evidence, meaning that the party with the more convincing and credible evidence is likely to prevail. The claimant is not required to meet the higher threshold of 'clear and convincing' evidence but must still present sufficient proof to establish that:

• infringement occurred; and
• the defendant's actions caused actual harm.

The court will assess whether it is more likely than not that the plaintiff's claims are true based on the overall weight of the evidence presented.

In contrast, criminal trademark infringement cases in Thailand are subject to a significantly higher standard of proof. Given that criminal sanctions can severely impact a defendant's rights and liberties, the prosecution must establish guilt beyond a reasonable doubt. This requires the court to be firmly convinced that the defendant committed the alleged wrongful acts. If the court harbours even a slight doubt, the benefit of that doubt must go to the defendant, potentially resulting in an acquittal. This elevated standard underscores the serious consequences of criminal liability and serves as a safeguard against wrongful conviction.

7.5 On whom does the burden of proof rest?

The burden of proof lies with the party asserting a disputed issue. In trademark infringement cases, the plaintiff must prove the key elements of the claim, including:

• ownership of a valid trademark;
• its use in commerce; and
• that the defendant's conduct amounts to infringement, typically by showing a likelihood of confusion among the public.

Conversely, if the defendant raises affirmative defences such as prior use or fair use, the burden shifts accordingly, requiring the defendant to substantiate those claims. This allocation of burden ensures that each party must provide sufficient evidence to support the facts that it relies upon in the dispute.

8 Defences and counterclaims

8.1 What defences are typically available in trademark litigation?

In Thailand, common defences in trademark litigation include:

• non-infringement, where the defendant contends that there is no likelihood of confusion between the marks;
• no use in commerce, arguing that the plaintiff has failed to use the trademark as required by law; and
• fair use, which may apply if the defendant uses the mark in a non-confusing, descriptive or comparative context.

Other potential defences include:

• acquiescence, where the trademark owner has allowed the infringing use without objection; and
• prior use, which may be asserted if the defendant can demonstrate earlier use of a similar or identical mark.

Additionally, it is common for the defendant to argue that the plaintiff is not the rightful owner of the trademark.

8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?

In Thailand, a defendant may file a counterclaim in the Central IP and International Trade Court ('IPIT Court') asserting that:

• the plaintiff is not the rightful owner of the trademark; and
• the defendant is the actual owner.

In such cases, the defendant may also seek compensation from the plaintiff for damages arising from the wrongful assertion of trademark rights. This form of counterclaim is strictly limited to ownership disputes.

In contrast, challenges to a trademark's validity or revocation – such as those based on lack of distinctiveness, generic or descriptive character or non-use for three consecutive years – may be raised as defences in infringement proceedings but do not serve as grounds for a counterclaim. These issues must instead be pursued through cancellation petitions filed with the Department of Intellectual Property under Section 61 of the Trademark Act BE 2534 (1991). Such proceedings are administrative in nature and lie outside the jurisdiction of the IPIT Court in infringement litigation.

Accordingly, while revocation and invalidation actions follow a separate administrative route, counterclaims based on ownership may be brought directly before the IPIT Court, providing defendants with a judicial mechanism to contest the plaintiff's rights and assert their own entitlement to the trademark.

8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?

In Thailand, an otherwise valid and registered trademark may be deemed unenforceable under certain circumstances. One key ground is bad-faith registration. If the defendant can demonstrate that the trademark was registered with dishonest intent, such as to block a legitimate user or misappropriate goodwill, the court may decline enforcement based on equitable principles, even though Thai law does not expressly define 'bad faith' under the Trademark Act.

Non-use is another critical issue. If the registered trademark has not been used in Thailand for three consecutive years without just cause, it may be subject to cancellation under Section 63 of the Trademark Act BE 2534 (1991). Although non-use is not a standalone defence in litigation, it may weaken the plaintiff's claim or support the defendant's parallel cancellation action.

Further, a trademark may be unenforceable if it is deceptive or misleading, such as by falsely indicating geographic origin, in violation of public order or morality under Sections 7 and 8 of the act.

Lastly, a defendant that has used a similar or identical mark in good faith prior to the plaintiff's application may argue that enforcement would unfairly prejudice its pre-existing rights. In such cases, the Thai courts may deny or limit remedies, including injunctive relief or damages.

9 Settlement

9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

In Thailand, mediation and settlement discussions are encouraged but not mandatory in trademark infringement cases. The Central IP and International Trade Court may recommend mediation at an early stage of the proceedings to promote efficient dispute resolution and reduce judicial backlog. Cases are often referred to the court's Mediation Centre, where a court-appointed mediator facilitates dialogue between the parties in an effort to reach an amicable resolution. While participation in mediation is voluntary, it is increasingly recognised as a practical and cost-effective approach in IP disputes. If the parties decline mediation, they may proceed with litigation without prejudice. Nevertheless, the court may continue to encourage settlement discussions at various stages throughout the trial.

Thailand also applies mediation in criminal actions involving trademark infringement. Although trademark counterfeiting and trademark imitation are uncompoundable offences, meaning that the injured party cannot withdraw the complaint, the court may nonetheless take the positive outcome of mediation into consideration when rendering its criminal judgment against the infringer. In practice, this often results in the suspension of sentence or the deferral of sentencing.

9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

Court proceedings in Thailand may be stayed, continued in parallel or discontinued in view of the mediation and settlement discussions. If the parties reach an agreement during litigation, they may request the court to postpone the proceedings to finalise the settlement terms. Once a settlement is reached, the parties may request the court either to dismiss the case or to issue a consent judgment by submitting a signed settlement agreement. A consent judgment is deemed a final judgment and is not subject to appeal, ensuring that the agreement is legally binding and enforceable.

When proceedings are stayed due to a breakdown in the parties' negotiations, the court may schedule a mediation session to facilitate and encourage the finalisation of the settlement. Alternatively, the court may allow the litigation to proceed in parallel with the parties' ongoing private negotiations. This flexible approach allows the parties to resolve disputes efficiently while ensuring that court proceedings continue without unnecessary delays.

9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

The results of settlement discussions must be reported to the court. If the parties reach a settlement and wish the court to issue a consent judgment instead of having the plaintiff withdraw the case, they must submit the settlement agreement for the court's review and approval. The agreement must be in writing and the court will evaluate whether it complies with applicable laws and public policy. If the court approves the settlement, it will issue a judgment by consent. If the parties fail to report the results of the settlement discussions, or if they do not wish to continue with the settlement or are unable to reach agreement, the case will proceed and the court will continue with the litigation.

10 Court proceedings for infringement and validity

10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

Court proceedings in Thailand are generally public, as transparency is a cornerstone of the Thai legal system. Anyone may attend court sessions to observe ongoing trials and proceedings. However, parties may request the protection of certain confidential information, such as trade secrets or sensitive commercial data, under the Civil Procedure Code or the Rules for Intellectual Property and International Trade Cases BE 2540 (1997). Additionally, the court has the discretion to issue orders to maintain confidentiality in specific instances – particularly where the disclosure of sensitive information could significantly harm a party's business interests or competitive position – including by:

• prohibiting the public from attending all or part of the hearing; or
• ordering that the facts and circumstances of the case not be disclosed or publicised.

10.2 Can a trademark owner sue for infringement and passing off in the same action?

A trademark owner may bring claims for both trademark infringement and passing off in the same action under Thai law. Infringement claims are grounded in the violation of registered trademark rights under the Trademark Act BE 2534 (1991); whereas passing-off claims arise from the misrepresentation of goods or services as being connected with the trademark owner, even without a registered mark, as prescribed under Section 272 of the Criminal Code. Such situations often occur where the infringing conduct involves goods or services that fall both within and outside the scope of the owner's registered trademark protection under Thailand's trademark system.

The Central IP and International Trade Court ('IPIT Court') allows both trademark infringement and passing off claims to be addressed in a single legal proceeding if the trademark owner can demonstrate that the infringing party's actions have caused confusion or misrepresentation, thereby harming its business or reputation. This approach enables the court to consider both statutory claims under the Trademark Act BE 2534 (1991) and civil and criminal claims based on the principles of fraudulent sale:

• streamlining the litigation process; and
• providing a more efficient means for the trademark owner to seek remedies.

10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

In Thailand, trademark infringement proceedings may be initiated through two main avenues.

First, the trademark owner may file a criminal complaint with the Economic Crime Division of the Royal Thai Police. If the alleged infringer denies wrongdoing during the investigation, the case may be referred to the public prosecutor, who can proceed with criminal prosecution before the IPIT Court. Alternatively, the trademark owner may file a criminal action directly with the IPIT Court without first referring the matter to an enforcement authority.

Second, the trademark owner may pursue civil litigation directly by filing a complaint with the IPIT Court through a licensed Thai attorney. The process includes:

• a preliminary hearing;
• submission of evidence; and
• a ruling on remedies such as injunctive relief or damages.

Appeals may be filed with the Court of Appeal for Specialised Cases and subsequently with the Supreme Court.

Trademark validity challenges are handled separately through cancellation actions before the Department of Intellectual Property (DIP), typically on grounds such as:

• lack of distinctiveness; or
• conflict with an earlier mark.

These are administrative proceedings and are distinct from infringement actions. However, in infringement litigation, the defendant may challenge the plaintiff's trademark ownership – which, while procedurally separate, can materially affect the court's consideration of the infringement claim.

10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?

In Thailand, trademark infringement proceedings before the IPIT Court typically take six to 12 months at the trial level, depending on:

• the complexity of the case; and
• the court's availability.

While Thailand does not have a formal fast-track procedure, the court may expedite proceedings in urgent matters, such as those involving imminent harm to the public, upon the court's discretion.

For trademark validity proceedings, which are administrative in nature and handled by the DIP, the process generally takes around six to 12 months as well. If a party is dissatisfied with the DIP's decision, it may file an appeal with the IPIT Court, which will result in additional judicial review and may extend the overall timeline depending on:

• the issues raised; and
• whether the case proceeds to further appellate levels.

10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?

In Thailand, the IPIT Court does not have the authority to issue extraterritorial injunctions, whether interim or permanent, under Thai law. This limitation arises from the territorial nature of Thai jurisdiction, which restricts the court's authority to acts and parties within Thailand. While Thailand is not a party to certain international treaties governing cross-border enforcement, such as the Hague Convention on the Recognition and Enforcement of Foreign Judgments, the core reason lies in Thailand's domestic legal framework, which does not empower its courts to grant orders affecting conduct outside its territory or to enforce foreign IP rights directly. Thai courts are generally limited to granting injunctions within the territorial scope of Thailand. However, they may grant interim relief such as freezing assets or ordering the suspension of infringing activities within Thailand's jurisdiction.

10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

In Thailand, decisions of national courts are binding within the jurisdiction and are followed by lower courts unless overturned on appeal. Foreign court decisions are generally not binding, although they may be considered persuasive authority – particularly when dealing with international trademark disputes or interpreting international agreements. Thai courts may reference foreign rulings, especially those from jurisdictions with similar legal frameworks or those that have issued decisions on matters of international law, such as the Paris Convention or the Agreement on Trade-Related Aspects of IP Rights. The court's reliance on foreign decisions is discretionary, based on the relevance and reasoning of the foreign judgment to the Thai legal context.

11 Remedies

11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?

In Thailand, trademark owners may pursue civil, criminal and border enforcement remedies against infringement:

• Civil actions allow for injunctive relief, monetary damages and destruction of infringing goods.
• Criminal sanctions under the Trademark Act BE 2534 (1991) include fines, imprisonment or both, particularly in cases of counterfeiting or wilful imitation.
• Rights holders may also record their marks with Thai Customs to intercept counterfeit goods at the border.

These combined mechanisms provide a robust framework for trademark enforcement in Thailand.

11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

Punitive or enhanced damages are not available under Thai law, as Thailand follows a compensatory damages system. Trademark owners may only recover actual damages proven to result from the infringement. Courts assess damages based on factors such as lost profits, market impact and the infringer's intent; but they will not award more than what is necessary to compensate the injured party. In cases of wilful infringement or counterfeiting, criminal penalties, including fines and imprisonment, may apply.

Additionally, in civil trademark litigation, as well as in criminal trademark cases that include a civil claim for damages, the trademark owner may seek statutory interest on awarded damages, calculated from the date on which the infringement occurred until full satisfaction of the judgment, pursuant to the Civil and Commercial Code. The Thai courts generally grant such interest in addition to compensatory damages, provided that the claim for interest is expressly pleaded and properly supported in the complaint. This approach ensures that the injured party is compensated for both:

• the harm caused by the infringement; and
• the time value of money lost over the course of the litigation.

11.3 What factors will the courts consider when deciding on the quantum of damages?

When determining the quantum of damages in trademark infringement cases, the Thai courts consider several key factors, including:

• the actual damages suffered by the trademark owner, such as lost profits;
• the infringer's profits derived from the unlawful use of the trademark;
• the market impact;
• harm to the trademark's reputation;
• the infringer's intent, particularly in cases of wilful infringement or counterfeiting;
• the duration and scope of the infringement; and
• the strength and recognition of the trademark – stronger, well-known marks typically command higher compensation.

12 Appeals

12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

A judgment of the Central IP and International Trade Court ('IPIT Court') may be appealed to the Court of Appeal for Specialised Cases. The appellant must file either an appeal or a request for an extension of time to appeal within one month of the date of the IPIT Court's judgement. The appeal must clearly set out the grounds for appeal, which may include an error in law, fact or judicial discretion made by the lower court. Failure to comply with the procedural timeframe may result in forfeiture of the right to appeal, unless justified under exceptional circumstances.

If the one-month deadline to appeal lapses, the right to appeal is generally forfeited. However, an exception may apply where the delay is caused by force majeure or an unforeseeable and unavoidable event that a reasonable person could not have prevented, even with appropriate precautions. If such circumstances prevent the appellant from filing the appeal or a request for an extension within the prescribed period, the appellant may submit a petition seeking the court's permission to appeal out of time. The court will consider the merits of the petition and the reasons for the delay before deciding whether to grant such permission.

12.2 What is the average time for each level of appeal in your jurisdiction?

Under Thai law, the Court of Appeal must render its judgment within one year of the date on which the appeal is submitted, in accordance with the applicable procedural rules.

Similarly, the Supreme Court – the highest court of Thailand – must also render its judgment within one year of the date on which the appeal against the Court of Appeal's decision is filed.

13 Costs, fees and funding

13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

The costs and fees incurred in trademark litigation in Thailand can be divided into two categories: in-court fees and out-of-court expenses.

In-court fees include:

• court filing fees; and
• summons delivery fees.

If a party prevails, the court may order the losing party to reimburse the prevailing party for the court filing fees.

Out-of-court expenses include:

• attorneys' fees;
• documentation and translation costs;
• interpreters' fees; and
• transportation expenses.

While the prevailing party may also seek reimbursement for attorneys' fees, the court has discretion to determine the amount awarded, which is typically based not on the actual fees paid but rather on what the court considers reasonable under the circumstances. Other out-of-court costs are generally not recoverable.

13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Under Thai law, an agreement to calculate attorneys' or legal fees based on a percentage of the assets that the client will receive from winning a case is considered void, as it violates professional ethical standards. Lawyers who engage in such practices may be subject to disciplinary action under the Lawyers Council Regulations on the Ethics of Lawyers BE 2529 (1986).

However, Thai law does not prohibit attorneys from charging fees based on a portion of the disputed amount or claim value. In this context, a legal services agreement that sets attorney fees as a percentage of the disputed amount is valid and enforceable, provided that it complies with:

• Section 150 of the Civil and Commercial Code;
• the Lawyers Act BE 2528 (1985); and
• the Lawyers Council Regulations on the Ethics of Lawyers BE 2529 (1986).

13.3 Is third-party litigation funding permitted in your jurisdiction?

Third-party litigation funding is not expressly regulated or prohibited under Thai law. While there is no specific statute that addresses or authorises third-party litigation funding, the concept is generally unfamiliar in Thai legal practice and remains uncommon.

In principle, litigation expenses are expected to be borne by the parties themselves. If a third party were to fund litigation in exchange for a share of the proceeds, such an arrangement may raise concerns under Thai public policy or ethical rules, particularly if it interferes with the independence of the lawyer or the integrity of the proceedings.

Moreover, attorneys in Thailand are governed by the Lawyers Act BE 2528 (1985) and the Lawyers Council Regulations on the Ethics of Lawyers BE 2529 (1986), which prohibit certain fee arrangements, such as contingency fees that are tied directly to the outcome in a way that is deemed unethical.

As a result, while there is no outright legal ban, third-party litigation funding remains rare and potentially sensitive under Thai legal and professional ethics standards. Any such arrangement will require careful structuring to avoid violations of local laws and ethical guidelines.

14 Protection of unregistered marks

14.1 Is any protection available for unregistered marks in your jurisdiction?

The owner of an unregistered trademark generally cannot bring a claim for compensation based solely on the unauthorised use of its mark, as registration is required to obtain full legal protection under Thai law.

However, if an impersonator falsely presents its goods as those of the trademark owner by misrepresenting the origin or engaging in passing off, such conduct may constitute a fraudulent sale. In these cases, the trademark owner may seek compensation under the Trademark Act BE 2534 (1991), which provides remedies for the wrongful use of a trademark to deceive consumers and misappropriate the goodwill of the rightful owner.

While remedies are available in cases of fraudulent misrepresentation, the most effective way to prevent infringement and secure exclusive rights is to register the trademark with the Department of Intellectual Property (DIP), thereby ensuring comprehensive legal protection.

14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?

Although foreign trademarks that are not registered in Thailand may be used for commercial purposes without violating Thai law, since the Trademark Act BE 2534 (1991) does not require prior registration as a condition for use, such marks do not enjoy legal protection. The primary disadvantage is that if another party registers the trademark in Thailand first, the original foreign user may lose the rights to that mark within the jurisdiction.

A further disadvantage, as noted in question 14.1, is that the owner of a foreign trademark not registered in Thailand generally cannot claim compensation solely for unauthorised use, as Thai law grants full protection only to trademarks registered with the DIP. However, if an impersonator misrepresents the origin of its goods or otherwise engages in passing off by presenting them as those of the foreign trademark owner, such conduct may constitute a fraudulent sale. In these circumstances, the foreign trademark owner may seek both:

• the imposition of criminal punishment for the passing-off offence under the Criminal Code; and
• compensation for damages arising from a tortious act under the Civil and Commercial Code.

15 Trends and predictions

15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

The current trademark litigation landscape in Thailand is marked by increasing awareness of IP rights, especially as businesses continue to expand both domestically and internationally. Trademark protection remains a critical concern and the Thai legal system provides a robust framework for enforcing trademark rights, primarily governed by the Trademark Act BE 2534 (1991) and its amendments. The Supreme Court has issued several significant verdicts in trademark litigation, emphasising:

• the need for clear evidence of infringement; and
• the importance of proactive enforcement.

One prevailing trend in trademark litigation in Thailand is the rise of online and digital infringement cases, especially with the growth of e-commerce platforms. This trend is pushing for more modernised approaches to IP enforcement, including taking action against online marketplaces and websites that infringe trademark rights.

Additionally, the Supreme Court is increasingly recognising the importance of balancing the interests of brand owners and public welfare in cases involving generic or descriptive marks. This is crucial in:

• maintaining the integrity of the trademark registry; and
• ensuring that only distinctive marks are protected.

Over the next 12 months, continued procedural improvements can be expected, particularly in relation to expedited processes for non-complex trademark cases. The judiciary is also likely to encourage the use of alternative dispute resolution such as mediation as a means to alleviate court congestion and reduce litigation costs. While criminal enforcement remains the dominant route for addressing trademark infringement, civil actions are used more selectively.

16 Tips and traps

16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?

• Tips: Clients that are new to trademark litigation or that lack prior experience should begin by gathering solid evidence and consulting with experienced trademark litigation counsel to establish the right path from the outset. The evidence collected should include:
• • clear documentation of the infringer's actions, such as:
  • • written materials;
    • photographs;
    • advertisements; and
    • witnesses; and
  • quantifiable damages incurred.
• Building a strong, well-prepared foundation significantly improves the chances of a successful outcome.
• Traps: Delaying enforcement or sending vague or poorly crafted cease-and-desist letters can weaken your position and even invite counterclaims. Another common pitfall is assuming that mere trademark registration guarantees protection – without proactive monitoring and timely legal action, your rights can quickly erode or go unprotected. Additionally, relying on unseasoned trademark litigation counsel who lack expertise in this specialised area can result in adverse outcomes, undermining your case and increasing the risk of failure.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.