In a time before Thailand signed the TRIPs Agreement, “Thai IP laws were woefully inadequate” says Say Sujintaya. In the 1980s, the then corporate commercial lawyer recalls: “The only executive law we had was the trade mark registration, but enforcement wasn’t effective.”
“Like most lawyers, I didn’t actually know what IP was when I joined Baker McKenzie. I took a copyright course in law school and I was doing transactional work, licensing and setting up joint ventures in Thailand.” One day, one of her partners who worked in the IP sector gave Sujintaya an opportunity that would change her career.
“He had an American client who wanted to register a trade mark, but the lady who did trade mark was not there. He said: ‘You speak English. Why don’t you come into the meeting?’” After she showed potential in trade mark law, he began training Sujintaya in IP. She says: “By the time I left Baker McKenzie for the first time, I was basically doing majority IP.”
While Sujintaya admits that she did not set out to do IP law initially, she was grateful to get stuck in, starting with anti-counterfeiting work for a global sports brand: “Instead of doing research, he allowed me to write to clients and give advice and that’s how I got into IP.”
Since the 1980s, Thailand has revised its law “to attract more investments”. “They joined TRIPs under obligations to revise the law so that it was more harmonised with developed laws in other countries and they joined WTO,” Sujintaya says, adding: “I think because I’ve been practising for so long, I’ve been able to see the evolution of Thai IP law from laws that were really inadequate to cope with the emergence of international business.”
“But as with many developing countries especially in Asia and Latin America, while the black letter of the law is quite good, enforcement has always been the problem because people didn’t really understand IP. There were a lot counterfeits and there still are but it’s cleaned up a lot.”
In recent months, the Trans-Pacific Partnership (TPP) has been a focal point of discussion, particularly in the aftermath of Trump’s controversial decision to withdraw from the Agreement. In Thailand, Sujintaya says there has been minimal concern: “Thailand was not joining. It was not a member of the TPP. Before the military government took over, they were not interested in joining.”
“TPP is pretty dead in the water because with the remaining members, even if it’s been ratified, it’s not enough to put TPP in action. I don’t think Thailand is seriously looking at it anyway. It’s been pulled under the rug; it doesn’t matter.” She adds: “Thailand now is more focused on bilateral agreements with the different countries.”
Joining the Madrid Protocol
In early August, Thailand singed up to the Madrid Protocol. This comes as part of efforts to align ASEAN with international trade mark regulation. At present, a Ministerial Regulation draft is being processed to address the “mechanical” aspects of joining the System. It is expected that the law will be affected by November 2017.
Sujintaya says: “I think one of the reasons it took so long is that there was a lot of lobbying from law firms and trade mark agencies for Thailand not to join, because we will definitely see a drop in the filings. The majority of trade mark applicants who file in Thailand are foreigners.”
“There aren’t as many Thai applicants, therefore it makes it easier for most of our clients who are multinationals to file trade marks through Madrid.” Sujintaya expects that this means that she and her peers will receive fewer instructions in direct filing: “The filing fee is the bulk of the registration fee, so for the first couple of years, we will feel the difference in our pockets because most of our clients now will be using Madrid instead of asking us to file directly.”
“But fortunately, the national constitution of the adaptation will still need to be done by law, so it means that for office actions and oppositions clients will still need to hire local law firms and trade mark agents to handle that.”
For many, the fact that applications are read in Thai is an outstanding issue. This will be addressed by the Thai government in the Ministerial Regulation. Sujintaya says: “The foreign agents will probably still need to rely on the Department of Intellectual Property (DIP) to translate the applications or the mark in Thai. We’re not really sure what the regulations are going to say. Thai is the official language, so the applications will still need to be in Thai.”
As Sujintaya points out, Japan overcame similar changes in its conversion to the Madrid system: “They’ve done Madrid too. We are going to be feeling the effects that all law firms felt when their countries joined Madrid. There will be less filing for sure but they will be compensated, because more people will be able to file trade mark applications. While we’re not getting the filing, we’ll be getting fees to handle other tasks as more applications are filed.”
According to Sujintaya, smaller firms will be most susceptible to the adverse effects of switching over: “If smaller firms are dependent on trade mark registration as a bread and butter, they will definitely be affected.” For full-service IP firms, “even if there is going to be a slowdown in registration at the beginning or during the first few years, we still have other departments that we can try to grow in. It’s the local law firms who mostly do trade mark registration that will be affected financially.”
A likely strategy for smaller law firms would be to “get into the patent space and do patent prosecution”, Sujintaya says: “Not necessarily doing the high end work such as patent searches, FTO or drafting but just focusing on the prosecution.”
ASEAN commerce and IP
With Thailand’s admission to the Madrid system, ASEAN is one small but important towards IP unification. In terms of free flow of goods, Sujintaya has already noticed some progress in the ASEAN Economic Community (AEC): “Myanmar hasn’t joined Madrid yet, but they still have time. Laos and Cambodia, in terms of commerce are very small markets. Myanmar would be the biggest, but I don’t think it makes much of a difference whether they join or not in terms of ASEAN trade itself. Trade is continuing regardless of whether they are members of Madrid or not.”
“I think what’s more interesting is the newly emerging discussions about possibly having an ASEAN trade mark. It would be like the EUTM. If you file an application in one ASEAN country, you could seek coverage in other ASEAN countries.” In Thailand, a discussion about this idea existed over 10 years ago. Sujintaya explains: “These conversations went away because they could not agree. Now, they’ve picked up again at IP association level. I don’t think that it has gone up to high-ranking government in any country just yet, but at least it’s been initiated which is a good thing.”
While there are many useful conversations happening in Thailand and ASEAN, Sujintaya mentions that “a big unhappy camper” has changed the global IP model: “Before Brexit, ASEAN would always look to the EU.”
“Despite the big differences between ASEAN and EU in terms of number, lack of enforcement and law – we would always look at that. But with Brexit, I think the whole ASEAN single market has sort of taken a step back.” Sujintaya suspects that this will influence ASEAN’s approach to IP and force the market to consider inventive ways of going forward.
Trade Mark Act – implementing new changes
From September 1, the Thai Department of Intellectual Property will accept registration of sounds. Sujintaya says: “The Ministerial Regulation of that has not been issued, even though the law was effected last July so they are a little behind on that.”
For practitioners, the proposal to reduce the 90-day notice period to respond to an office action to 60 days “is causing some practical problems”. Sujintaya says: “Because many of our clients are overseas, by the time we report the office action, they have to gather evidence to file a response. We do think that the 90 days is quite a lot – by then, you have lost one month so clients have not been that happy with that.”
Contrastingly, the reduction of fees has come as a pleasant surprise: “Fees are obviously a lot better now there is a maximum lump sum, rather than a charge per good. Some of the changes are welcome.”
As leader of Baker McKenzie’s Asia Pacific IP practice, over 80% of Sujintaya’s clients are international. The rest are local. For the most part, Sujintaya says that it has been “business as usual” since the Trademark Amendment Act was enforced last year: “IP is a long term investment. The trade mark is valid for 10 years. I think that even if there are cutbacks, it will not be so much in the registration, but in searches and enforcement. The searches might be conducted by district.” In strategy, Sujintaya predicts that trade mark owners will not “go after small retailers, but large manufacturers”.
“In terms of registration budget, I don’t think they can afford to cut that back because of long term investments and again, the cost of getting protection for trade mark is much bigger than not having protection. I guess now, with Madrid, we will probably see more filing.”
Thai Patent Act amendments
In June, the DIP released a draft of “very controversial” amendments to the Thai Patent Act: “They had one public hearing and the draft has gone back. They were meant to have a public hearing since, but they haven’t set a date.” Among proposals is the plan to grant patent owners the right of pre-grant inspection rights. Market commenters suspect that this opportunity will be abused.
Will this right be used responsibly? Sujintaya says: “Obviously, if you ask an NGO, they would say no because they are very anti-pharmaceutical patents so if there’s no examination and just a pre-grant, it could be problematic.” At present, no one is sure which amendments will be passed in the Act, but there is consensus that the DIP need to clarify several points including the definition of traditional knowledge: “They talk about traditional knowledge as something that can be part of a pattern, so there are various novelty requirements and a whole slew of issues that are definitely unclear,” says Sujintaya.
“There is no specific IP protection over traditional knowledge. These are things that are specific to a region, a country or certain industry – how do you protect that? We’re unclear how traditional knowledge will be woven into the amendment to the Patent Act.” A second revision is due before the end of the year.
With the view of improving IP law and international relationships, Sujintaya notes: “The government are seriously trying to cut down on counterfeit goods, from the top down. They are taking action against malls that are notorious for selling counterfeit goods not just in Bangkok, but in Phuket and Chiang Mai.”
The government is asking for cooperation from mall landlords to cancel the leases of tenants who continue to sell counterfeit goods. So far, the plan seems effective: “We’re beginning to see the crackdown already, there are malls where before you would have seen nothing but counterfeit products – they’ve actually cleared up.”
Before the military government came into power, Thailand ran similar programmes without success: “This is coming from the prime minister himself, but we also suspect that he is doing this because he has an upcoming visit to the US with Donald Trump.”
“I think in an effort to try and get Thailand off the Priority Watch List, he has introduced this crackdown. It remains to be seen whether this will be permanent or they will just clean up and go back to normal, once Thailand is removed from the priority Watch List.”
There are benefits to being in the good graces of the US, Sujintaya says: “It will give more confidence to foreign investors who want to invest in Thailand. They will say: ‘If I come and invest in Thailand, I know that my IP will be protected because the government is enforcing IP laws.”
Work and play
As a partner in Baker McKenzie’s Bangkok office, Sujintaya has worked in everything including brand protection, IP enforcement, patents and entertainment law. She says: “Because my clients come from different industries, I have industry knowledge in pharmaceutical, software, hardware, merchandising for the studios, as well as consumer products.”
Her favourite area of work is in production for Hollywood movies: “It’s not pure IP. It’s not just drafting the copyright releases, it’s not just advising on the crew agreements or location agreements but advising on import agreements.”
She says: “It’s much more interesting and it’s a lot of project work. You see them coming in the beginning, you help them with their work permits, with the location, they’re here for a few months, they go and then you see the movie in the theatre!”
For Sujintaya, it’s a bit of “personal fun”: “I get to go the studio, visit the set, meet the producers and the stars. There are also things about compliance and anti-corruption. Bribery compliance is a big area when we’re doing production work. I like the enforcement work.” While Sujintaya has not taken on any acting roles herself, she managed to get her daughter a walk-in Todd Phillips’ 2011 hit The Hangover Part II.
Sujintaya counts herself lucky to live in Thailand “where it’s not uncommon to have domestic help". She says: “I can have a driver and maids which can help take care of the day-to-day household stuff but they can’t make decisions for you. They’re not your substitute.” While she has someone to “make the bed, do the laundry, the cooking and the grocery shopping”, Sujintaya still exercises strict time management to complete daily tasks at work so she can spend any excess time focusing on her family.
After so many years in the profession, Sujintaya says: “I’m so fortunate because I’m in a unique position where I’m a US lawyer, working in Bangkok at an international firm where we offer Thai legal advice. I’m in such a senior position now, a lot of what I do is managing the business and whenever I want to practise law, I’ll just pick up the phone and work on some opinions.”
“What I find most rewarding now is the ability to have a succession plan, to train the lawyers and say, even when I’m not here, this is what you’re going to inherit from me. I built up this practice, I have to make sure that it will be maintained, clients will be retained and the business will grow. So that’s the challenging part.” Ultimately, Sujintaya measures her success not by “the number of cases or the number of movies” she has worked on but the assurance that “someone will inherit all of that experience and build on it.”