Protection of Well-known Trademark
Trademark Act B.E. 2534 (AD 1991) as amended by the Trademark Act (No.2) B.E. 2543 (AD 2000) provides protection of well-known trademarks by prohibiting the registration of the mark identical with or confusingly similar to well-known trademarks regardless of whether they are registered in Thailand or not. Section 8(10) of the Trademark Act stipulates as follows:
“Section 8: Trademarks having or consisting of any of the following characteristics shall not be registrable:-
(10) A mark registered or not, which is identical with a well-known mark as proscribed by the Ministerial Notifications, or so similar thereto that the public might be confused as to the owner or origin of the goods”
Effective from August 1, 2005, by a regulation “Department of Intellectual Property Regulations on Recordal of Well-Known Marks B.E. 2548 (AD 2005)” issued by the Department of Intellectual Property (“DIP”) by virtue of the Announcement of the Ministry of Commerce on Criteria for Consideration of Well-Known Marks, it is possible for a well-known trademark to be recorded at the Trademark Office.
Under the mentioned regulation, a well-known mark can be recorded with the Trademark Office if it meets the followings criteria:
1) It is a trademark, service mark, certification mark, collective mark or any other mark that has been used in respect of things apart from goods or services.
2) It is a mark, either registered or unregistered.
3) It is a mark identical with those being applied for recordal.
4) It is a mark that has been extensively and regularly used in respect of the goods or services by ways of sale, or has been used or advertised, or had been used by any other ways in good faith until present.
5) It is a mark that has been extensively and regularly used in good faith, regardless of such use has been made in Thailand or in foreign countries, until become known to public or related field of public in Thailand.
6) It is a mark that has been used so until it is well-known and recognized among the consumers.
7) It is a mark that has been used by the owner or its representative or licensee.To record the well-known trademark, it is required to submit the supporting evidences along with the recordal application. The supporting evidences can be the followings:
1) Documents showing the public recognition such as magazines, periodicals, newspapers, catalogues, and etc.
2) Documents showing sale of goods bearing the mark such as receipts, invoices, import-export documents, tax receipt, and etc.
3) Documents showing marketing activities such as advertisement, retail and wholesale information public relation, and etc.
4) Documents showing the size of the enterprise
5) Other evidences showing use or registration of mark or reputation or protection and maintenance of reputation in mark such as appraisal of price, sales ranking, announcements showing the fame, certificates issued by respectable organizations, publications through Internet, suppress measures against a mark infringement, etc.The application will be examined by the Well-known marks Committee and if the mark meets the above-mentioned criteria, it will be recorded in the register of the Trademark Office. However, if it does not, the Committee shall issue a refusal order to the applicant. Nevertheless, the applicant is entitled to file an argument against the refusal to the Director General or otherwise the Committee shall reject the application.
Advantages of the Recordal of Well-known Trademark
The trademark owner would benefit from the recordation as it could prevent any person from registering a trademark identical with or confusingly similar to the well-known trademark already recorded. Besides, in the Court case, it is required to prove to the Court that the uses of any trademark identical with or similar to the owner’s trademark might mislead the public as to the proprietorship or source of origin of goods. In the case that the trademark is recorded as well-known trademark, it is presumed that there is a likelihood of confusion.
Nevertheless, although the mark is not recorded as a well-known trademark, it does not prejudice the trademark owner’s right under Section 8(10) of the Trademark Act mentioned above.
Click here to view well-known trademarks recorded at the Thai Trademark Office.
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