COVID-19 results in face mask counterfeiting
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COVID-19 results in face mask counterfeiting

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Colorful, protective handmade face masks, on top of wooden table, with copy space next to them.

Kritsana Mingtongkhum and Nathan Wood of Satyapon & Partners look at the growing business of medical mask counterfeiting as a result of COVID-19 and explore the ways in which trademark owners can protect themselves, preferably through registration, or failing that, through recourse to criminal law

There is no doubt that the world in general was caught completely unprepared for the COVID-19 pandemic, and while some countries have been weathering the storm very well, especially in South East Asia, many countries are still coming to grips with the new reality and/or are in denial about the health implications, to the detriment of their citizens. The economic impact on the other hand cannot be denied by anyone. It has been devastating and global – no country or economy has gone unscathed.

Unfortunately, brand owners were just as unprepared for the speed with which counterfeiters have taken advantage of market conditions created by COVID-19, and branded face masks are all the rage, popping up for sale on all major online marketplaces and in small shops and kiosks across Thailand and around the world. Brand owners never thought to register their marks for this niche product before, but many are considering it now. Others, like the countries in denial about the health effects of COVID, think this is a passing phase and have not adjusted to the fact that face masks, as much as we all hate wearing them, are the new normal and they are not going away any time soon, if ever. There was already a small residual market in South East Asia for masks left over from the H1N1 outbreak in 2009. It was not uncommon pre-COVID to see, perhaps every 20th person, on public transport wearing a medical mask. As COVID drags on (many experts fully expect it to last for most of next year, if not into 2022), it is not much of a stretch of the imagination to predict that wearing masks every day, especially on public transport will be ingrained into the population of the world and become a societal habit/norm.

As of April 2020, Forbes reported that already at least 20 fashion brands were now selling genuinely branded face masks, and they are extremely popular. Brand owners, particularly of high-end fashion brands, the most common victims of counterfeiting, need to include face masks in their enforcement strategy now. Wish it away or deny it and your brand will have the face mask counterfeiting equivalent of the tragedy befalling the good people of the US and Brazil, where denial and poor leadership have led to an explosion of infections. In this case, there will be widespread proliferation of counterfeits at the cost of the goodwill and reputation of your brand.

How to enforce a trademark without registration?

To the best of our knowledge, not one brand owner, aside from medical mask manufacturers, had registered a trademark for face masks pre-COVID. In many South East Asian countries, and especially in Thailand, unregistered marks have little to no protection, and to take action based on the Thai Trademark Act, i.e. on the grounds of trademark infringement, your mark must be registered for the particular good on which your mark is being used. As a result of this rule, brand owners were caught with their proverbial pants down when branded face masks exploded into the market.

We have already seen one interesting case which really underscores the creativity of infringers and the proliferation of face mask counterfeiting and trademark infringement. The brand owner found an Instagram account selling masks bearing their trademark that looked uncannily genuine, so much so that they were seriously concerned even though the seller had little stock. The case was very similar to two groundbreaking matters in Japan and the US in recent years, the Louis Vuitton v Junkmania case and the Rolex v LaCalifornien matter, as the face masks being sold were made from genuine repurposed cloth bags that the brand owner gives to each customer when buying one of their genuine products. Similar to both Junkmania and LaCalifornien, the infringer clearly stated that the masks were made from genuine material repurposed as face masks and were not made by the brand owner. However, the masks were made in such a way that the genuine logo of the brand owner was perfectly centred directly across the front of the mask. Combine that with the masks being made from the brand owner's own genuine gift bags and at a glance any member of the general public would have the immediate impression that the masks were a genuine product of the brand owner. This clearly was a purposeful use of the brand owner's trademark and material to pass off the masks as genuine products and free ride on the goodwill and reputation of the world-renowned brand.

What was even more alarming was that, after the brand owner's representation conducted a trap purchase to gather evidence against the infringer and actually received the masks in the mail, they were definitely not someone's home project. The masks were clearly professionally machine manufactured. The brand owner confirmed that the material and trademark were from one of their genuine gift bags, which means that someone was buying up/sourcing used gift bags to mass produce high-quality counterfeit face masks, which is a major concern as these masks clearly, directly damage the goodwill and reputation of the brand owner by misleading the general public.

Fortunately for the brand owner, Thailand has a less used provision of the criminal code which puts Thai law one step ahead of most jurisdictions around the world for this type of infringement. There are two types of passing off actions in Thailand. The commonly used provision found in Section 46 of the Trademark Act, paragraph 1 prohibits action based on trademark infringement for an unregistered mark. However, paragraph 2 states:

"The provisions of the Section shall not affect the right of the owner of an unregistered trademark to bring legal action against any person for passing off goods as those of the owner of the trademark."

The provision sounds good, but in practice the courts have interpreted this law very narrowly, and have determined that to be successful in a passing off action under the Trademark Act the complainant bears the burden of proof. They must not only prove that their mark is known to the Thai public, but also that the defendant wilfully intended to mislead the public as to the origin of the products, and the complainant was damaged by such misrepresentation. The court has set the threshold of proof for both known status and intent to mislead very high, and claimed damages must have concrete proof (i.e. actual damages). As we all know, in the world of IP, putting a concrete value on the damage to reputation and goodwill is next to impossible, as it is largely subjective, and the Thai courts will not consider sales figures of the counterfeit goods as concrete damages as they don't feel the products are true substitutes. This means that a passing off action under the Thai Trademark Act is very difficult to prove and the burden of proof is such that the cost is very high. This is why any good IP lawyer in Thailand will advise clients to register their marks so they can pursue the much easier to prove, less costly, direct trademark infringement available under the Trademark Act.

However, in Thailand, we have a specific law under the Criminal Code Section 272 for passing off, which specifically prohibits a person from the following:

"Using a name, figure, artificial mark or any wording in the carrying on of trade of the other person, or causing 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."

Under the above section, as long as a complainant can prove that their mark is known to the relevant market segment, and the marks were used in such a way that they would cause public confusion you can hold an infringer liable for criminal charges as breach of this law is considered against public order. This is easier to prove, especially in this case, where the infringer not only prominently displayed the brand owner's mark but also made the counterfeit goods from the brand owner's own genuine material. The use of the brand owner's genuine material makes it that much easier to prove that public confusion is likely. This provision gives brand owners a tool against infringers like Junkmania and LaCalifornien at a fraction of the cost of the actions taken by the complainants under Unfair Business Practices in Japan, or by attempting to redefine what is considered a counterfeit in the Lanham Act by arguing that modification created a counterfeit good in LaCalifornien. However, in practice, the authorities are reluctant to take action unless a case is very clear-cut, and prefer to take on cases where trademarks are clearly registered and infringement is obvious.

Registration – still the best strategy

Thanks to Thailand's penal code, there is recourse for those brands that remain unregistered, provided they can meet the threshold of proof to prove public confusion is likely. Whether the brand owner intends to use the mark on face masks or is simply filing the mark as a defensive mark, registration remains the best strategy, as masks and counterfeit masks are not going away any time soon. Even in countries where common law use can be cited against infringers, registration still lowers enforcement costs drastically. The cost of registration is a tiny fraction of even one passing off action in Thailand. The prudent choice is investing in the cost of registration to combat face/medical mask infringement and the erosion of the goodwill and reputation of a brand.

Use or intent to use is not a requirement to apply for registration in Thailand. While marks do become vulnerable to non-use cancellations if they go unused for a period of three or more years, only an interested party can file a non-use cancellation action in the jurisdiction.

With the current economic climate imposed by COVID, and all clients looking to cut costs, the best advice you can give rights owners, especially those in the fashion and high-end luxury markets, is to register their marks for face/medical masks in Thailand, even if they have no intention of producing branded mask themselves. It costs a little now, but will save them a lot on future actions. If your clients are still not sure whether it's worth filing or it's too late and they need immediate help against an infringer, it may be time to have a chat with us. Bottom line registration will drastically lower brand owner's costs to enforce – even a just-filed application can be enough to scare off would-be infringers if used correctly, coupled with a well-researched and executed cease and desist letter.

COVIDの影響: 医療用マスクの偽造


残念ながら、ブランド所有者は、偽造者がCOVID-19によって生じた市場の状況に漬け込むスピードに対しても全く備えがありませんでした。ブランドのフェイスマスクは大流行しており、タイをはじめ世界中のすべての主要なオンライン販売市場、小規模店舗やキオスクなどで販売されています。ブランド所有者は、このニッチな製品に関して自社の商標を登録するということは、これまで考えたことがありませんでしたが、現在では多くの人が検討しています。COVIDの健康への影響について否定しているようなその他の国々は、これらは単なる通過点に過ぎず、私たちが皆嫌うマスクの着用が正常になっており、今後しばらくこの状況が続く(いつか終わるとすれば)という事実を受け入れていない人々もいます。東南アジアには、2009年のH1N1の発生から残っているマスクの残存市場が既に存在しました。COVIDの発生前でも公共交通機関において20 人に一人 くらいの人たちが医療用マスクを着用している姿を目にすることは珍しくありませんでした。COVID発生以降、多くの専門家が2022年までではないにしても、完全に来年のほとんどの期間にわたって続くと予想しており、特に公共交通機関での日常のマスク着用が世界中の人々に浸透し、社会的に習慣になることは、単なる想像の産物ではありません。2020年4月の時点で、フォーブスは少なくとも20のファッションブランドが既に純正のブランド品マスクを販売しており、非常に人気を集めていると報告しています。ブランド所有者、特に偽造の最も一般的な被害者である高級ファッションブランドの所有者は、直ちに施行戦略にフェイスマスクを追加する必要があります。マスクなど無くなって欲しいと願ったり、否定したりするだけであれば、御社のブランドは、現実の否定や不適切なリーダーシップによって感染爆発が引き起こされた米国やブラジルの善良な市民に降りかかっている悲劇のように、マスクの偽造に直面するでしょう。そして、御社のブランドの信用と評判を代償に偽造品が蔓延するでしょう。


私たちの知る限り、COVIDの発生前には、医療用マスクメーカーを除いて、マスクの商標登録をしていたブランド所有者は1件もありませんでした。東南アジア諸国の多く、特にタイでは、未登録の商標はほとんどまたは全く保護されていません。したがって登録商標侵害を理由にタイの商標法に従って行動を起こすには、商標が使用されている特定の商品に商標を登録する必要があります 。 そのため、ブランドマスクが市場で爆発的な売れ行きを見せた時、ブランド所有者は面食らいました。

私たちは、偽造者の「創造性」、マスクの偽造、そして商標侵害の急増を明確に示す事例をすでに目の当たりにしています。ブランド所有者は、驚くほど本物そっくりの商標が付いたマスクを販売するインスタグラムのアカウントを発見し、在庫が殆ど無くなっていたにもかかわらず、真剣に懸念していました。この訴訟は、販売されているマスクが、ブランド所有者が純正の製品一つを購入する一人一人の顧客に提供する純正の別の用途に使われた布バッグから作られていたという点で、近年の日本と米国で発生した2つの草分け的な問題である ルイヴィトン(Louis Vuitton) vs ジャンクマニア(Junkmania)訴訟 と ロレックス(Rolex) vs ラ・カリフォルニア(LaCalifornien)訴訟に非常に類似していました。ジャンクマニアとラ・カリフォルニアと同様に、偽造者はマスクがフェイスマスクとして再利用された純正の素材から作られ、ブランド所有者によって作られたものではないことを明確に表示していました。ただし、マスクはブランド所有者の純正ロゴがマスク正面の真ん中に配置されるように作られており、それをブランド所有者の純正ギフトバッグから作られたマスクと組み合わせると、一般市民が一目でマスクはブランド所有者の純正製品であると印象付けられます。これは明らかに、ブランド所有者の商標と素材を意図的に使用して、マスクを本物の製品として渡し、世界的に有名なブランドの善意との評判に便乗したものです。








登録: 依然として最善の戦略





Kritsana Mingtongkhum

Kritsana Mingtongkhum is a partner at Satyapon & Partners and head of trademarks and litigation. His reputation in the IP industry has been growing exponentially. He was recently elected by his peers for a second term on the ASEAN IPA Thailand Committee, and has now been elected to serve on the APAA committees as a member of the APAA Trademark Committee. After many years of voluntary service to the Intellectual Property Association of Thailand (IPAT), he has now been appointed general secretary of the organisation.

He is a favourite among clients who respect his work ethic and solid advice. Many of our recent new major local clients are a direct result of his hard work. He is also very popular with Japanese clients and pre-COVID routinely visited Japan. He was recently a guest speaker at the Ministry of Agriculture, Forestry and Fisheries Japan. He heads our extremely busy trademark department, overseeing an enormous volume of prosecutions, office actions and responses while concurrently heading our litigation team. Just last year he was the team lead for the largest patent seizure in Thai history on behalf of a Japanese Fortune 500 client.


Kritsana Mingtongkhum 氏の知的財産権業界での評判は飛躍的に高まっています。最近、同僚が2 期めとなる ASEAN IPA タイ委員会に選出され、 APAA 商標委員会のメンバーとして APAA 委員会に選出されました。そして、長年にわたるタイの知的財産協会(IPAT)へのボランティア奉仕の後、組織の書記長に任命されました。



Nathan Wood

Nathan Wood, a recent graduate of Thammasat University Law School in Bangkok, has been working with Satyapon & Partners for a little over three years. He came to the firm with over 25 years of experience in operations and sales management, with a long history in contract negotiation, facilitation, drafting and interpretation. He is a prolific and accomplished writer; in the short time since he joined the legal industry he has already contributed to many major IP publications, including INTA, Managing IP, and the prestigious Sweet & Maxwell.

Mr Wood understands clients' objectives from their point of view. This has allowed him to establish himself as an innovative problem-solver and strategist. He brings an invaluable different business perspective that works very well with our strong team of classically trained lawyers.


バンコクのタマサート大学ロースクールを卒業したばかりのWood氏は、Satyapon&Partners Limitedに 3 年余り勤務しています。この会社には、業務および販売管理において 25 年以上の経験と、契約交渉、円滑化、起草および解釈についての豊富な経歴をひっさげて入社しました。彼は多作で成功した作家であります。同氏は法曹界に参加してから短期間で、国際商標協会(INTA)、『Managing IP』(知的財産権管理)誌、名高いSweet&Maxwell社などの多くの主要な知的財産権の出版物にすでに掲載されたり、投稿したりしています。


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