The Thai government hopes that Thailand can become a great world trendsetter for fashion design in the near future. Although there is no specific legislation that protects fashion design, there are various Intellectual Property Rights provisions that can be called upon to secure exclusive fashion design rights as well as a general tort provision against unfair competition and passing off.
Artistic works are the works expressly protected by the Copyright Act. The definition of ‘artistic works’ being the many categories of artistic works used for utility, decorating material or equipment, or for commercial purposes. The period of protection is 25 years and the Act states that a work may be categorized as an artistic work in spite of the work having no artistic value. As a fashion design falls within this definition, it can be protected as a work of applied art. Therefore acts of selling; keeping in possession or offering for sale; renting or offering for rent; importing or making an order for importation of a protected work without the permission of the copyright owner constitutes copyright infringement.
Design patents are available with a 10-year protection period in Thailand. However, it is debatable whether this can be applied to fashion designs. Section 56 of the Thailand Patent Act provides that a patent may be granted for a new design for industry, including handicraft. Although this suggests that protection only extends to product designs, this section could also be read broadly as covering fashion designs. It is not known whether the Registrar of the Department of Intellectual Property (Registrar) will allow a fashion design to be protected under Section 56. This is because a fashion design must be ‘new’ in order to be patentable. A fashion design is only deemed new if it is not widely known, used or described in a published patent application in Thailand. It must never have been disclosed in a document or printed publication anywhere in the world and it must not be similar to any existing designs.
The Thailand Trademark Act defines a trademark as a mark that is used, proposed to be used or in connection with goods for the main purpose of distinguishing the goods under that particular trademark from other goods bearing the trademark of others. The definition also includes any shape or three-dimensional object. Therefore it is possible for fashion designs to be protected under trademark laws as a form of trade dress. So as to qualify for protection, the design (three-dimensional mark) must be distinctive; must not be identical or similar to a trademark registered by a third party and must not amount to a mark barred by the Trademark Act because of public policy. The registration of a mark in Thailand means that the proprietor has exclusive rights to its use for the goods in respect of the mark registered. Actions that constitute criminal infringement are: forgery and imitation of registered marks with the view of misleading the public into believing that the imitation is that of the registered proprietor; the importation, selling, offering or possessing for the purposes of sale of products bearing the forged or imitated mark.
Unfair competition and passing off
Although no specific legislation governs unfair competition and/or passing off, these claims may be taken out under Section 420 of the Civil and Commercial Code. Section 420 is a Thai tort provision that states that any ‘person who, willingly or negligently, unlawfully injures the life, body, health, liberty, property, or any right of another person, is said to commit a wrongful act and is bound to make compensation therefore.’ In order to claim under Section 420, one has to establish that he has legal rights in the design and that an individual’s actions of copying the design are unlawful and calculated with a view to harming the rights of the Plaintiff.
In spite of all these options, it should be noted that the Thai legislative has not explicitly addressed whether fashion works may be protected in Thailand. Therefore none of the provisions mentioned above specifically safeguard fashion designs against copying, which is commonly known as knock-offs. It would be more informative if the Thai legislative were more explicit regarding the protection of fashion designs but like most Asian countries, the governments are all moving towards a more IPRs protection friendly regime.