【Research Center for the Legal System of Intellectual Property】

Activities

Allocation of enforcement resources in enforcing rights of Intellectual Property Right

Research Associate Tetsuya Imamura

I had a discussion with a judge of the Central IP & IT Court when I visited Thailand. In Thailand, the practice to solve IP infringement as a criminal case has become widely established. It is quite different from Japan that uses civil solutions mainly. Behind its background, there are several systematic factors. For example, in criminal procedures, prosecuting a private citizen is possible there. It is also possible for a private citizen to be a joint prosecutor with a public prosecutor. Also Thai copyright law has a rule to refund 50% of the fine imposed as criminal penalty based on the judgment if it is claimed. (There seems also an ongoing discussion whether this system should be abolished by revising a law.) The more fundamental problem is that the system of claiming compensation does now work well because most of the cases are caused by the poor people who committed the crime for a living.

But then, overdependence on criminal justice in IPR cases has a different factor than these systematic factors. It is said that there has been a recent policy by Thai Department of Intellectual Property, DIP to recommend right enforcement by criminal procedures. For these several years, the DIP has actively promoted the method to solve IPR cases by using criminal procedures. This could be one outcome from these efforts. The ratio of criminal prosecution in IPR cases related to IP&IT Court has been more than 95% since the establishment of the court.

To enforce the right, human and material enforcement resources is necessary. But the enforcement resources that the state power has are limited. The limited resources must be allocated to the civil justice system, the criminal justice system and the administration system. The way of allocating the limited resources represents the nation's policy itself. In other views, the issue of allocating the enforcement resources is equivalent to the issue of allocating the state budget. For example, if the state emphasizes the criminal justice system, it needs to spend a certain amount of the budget for organizing the police or so. The domestic political dynamics affects such cases. In this regard, the allocation of the enforcement resources is clearly one-sided to criminal justice system in Thailand. It is uncertain whether this imbalance is good or bad to current Thailand. At least, according to the judge whom I discussed with, it is undesirable.

Japan advocates an IP based nation and the whole nation is taking measures for preventing counterfeits. I myself have participated in several research organizations. The state of right enforcement in Asian countries, especially the way of allocating enforcement resources quite differs from each country. Thailand uses mainly criminal procedures. Like Japan, Korea uses civil procedures mainly. China, which used to use mainly the way of solving cases by the government, has expanded the use of civil justice system recently. Vietnam or Indonesia is lacking the enforcement resources, first of all. We do not know which way is right or wrong, and cannot force them to adopt one of them. TRIPS agreement made a point to clarify that no obligation is put on member countries in terms of the allocation of enforcement resources. I dare not say the cases in Thailand is so, but the strong demand for the measures preventing counterfeits could bring a biased system which is unique to IP field. It may sound so typical, but it is very significant to design a balanced system.