Trademark Protection System in Thailand
“Trademark” is a distinctive sign used in distinguishing the goods of one proprietor from the goods of another proprietor.
Under the Thai Trademark Act B.E. 2534 amended by Trademark Act (No.) B.E. 2543, “Trademark” includes “photograph, drawing, device, brand, name, word, letter, numeral, signature, combinations of colors, shape or configuration of an object or any one or combination thereof; and there are four categories of marks available for registration in Thailand, namely,
-
“Trademark” means mark used with the goods to distinguish the goods of one owner from the goods of
another person.
- “Service
Mark” means mark used with the services to distinguish the services
of one owner from the services
of another person
-
“Certification Mark” is used in certifying the origin, composition, method of production, quality or other
characteristics of such goods or services.
-
“Collective Mark” is used by companies or enterprises of the same group or by members of an association,
cooperative, union, confederation, group of persons or any other state or private organization.
Trademark Protection
A trademark can be protected by registration under the Trademark Act B.E. 2534 amended by Trademark Act (No. 2) B.E. 2543 and to be registrable, a trademark must be:
1) Distinctive;
2) Not prohibited or not consist of any prohibitory characteristic; and
3) Not identical with or similar to other person’s registered trademark causing confusion or misunderstanding as to proprietorship or source of origin of the goods or services.
Trademark Procedure
To obtain a protection of trademark in Thailand, a registration of trademark must be obtained from the Department of Intellectual Property (DIP) initiated by filing application with the Trademark Office, based on “first-to-file system”.
Thailand adopts the International Classification of Goods and Services under NICE Agreement (There are 45 classes of goods and services). However, under the Trademark Act, the descriptions of goods to be designated in the application must be clearly specified on an item-by-item basis. In other words, neither broad descriptions of goods nor class headings would not be acceptable.
One application can cover one trademark in one class. Multi-class application or series trademark application is not available in Thailand.
The provision concerning trademarks shall apply to service marks and certification marks; and the provisions concerning trademarks, except those in provisions concerning trademark licensing, shall apply to collective marks mutatis mutandis. “Trademark” shall mean “Service Mark” and the word “goods” shall mean “services”.
Examination
After the application is filed, it would take approximately 6 to 8 months before the Trademark Registrar would examine the application.
The Trademark Registrar would check the formality and then examine as to whether or not the trademark is distinctive enough to acquire registration, as to whether or not the trademark is similar to prior registered trademark and as to whether the trademark is contradict to the provision for registration or not and issue official notice of instruction, if any.
If there is no official instruction or the applicant completely complies with official instruction, the application shall be published in the official Trademark Gazette for 90 (ninety) days. If no opposition is made within 90 (ninety) days from the date of publication, the registration of the mark will be mature to registration. The certificate of registration will be issued to the applicant. Totally, it takes approximately one year. However, in case of objection or other complications, the application may take up to two years.
Term of Protection
The term of protection is 10 (ten) years from the registration date. The date of filing is deemed the registration date.
Renewal
The registration may be renewed in each period of 10 (ten) years by filing a renewal application within 90 (ninety) days prior to the expiry date.
Click here to view flow chart of trademark registration system in Thailand.
Requirement for filing Trademark Application
In filing an application for registration of trademark, the following documents and information are required:
1) The applicant’s name, address and nationality.
2) A specific list of goods to be designated in the application.
3) Sample of trademark (not more than 5x5 cm or otherwise additional fee must be paid).
4) An executed Power of Attorney (in case of the application to be filed by a representative). The Power of Attorney must be submitted to the Trademark Registrar along with the application.
For the foreign applicant, the executed Power of Attorney needs notarization by Notary Public. Legalization is not necessary. Click here to view our suggested form of Power of Attorney.
5) Priority documents (if any).
Trademark Search
It is available for conducting a trademark search at the Trademark Office to determine the availability of registration of the proposed trademark in Thailand before filing the application.
Priority
In case where the application was filed aboard, it is possible for the applicant to claim the priority of the basic application provided that the application filed in Thailand within 6 (six) months as from the first trademark application filing date.
Use or Intention-to-Use Requirement
It is not required to state as to whether the mark has been used or to submit any relevant document.
Appeal
In case where the applicant does not agree with the Trademark Registrar’s instruction, the applicant is entitled to appeal to the Trademark Board within 90 (ninety) from the date of receipt of the official notice of instruction. The Trademark Board’s decision is final (at the administrative stage.)
Opposition
After the application is examined and approved for registration, the application will be published in the official Trademark Gazette for opposition for 90 (ninety) days. Within the period of publication of 90 days as from the date of publication, any interested party may file a notice of opposition with the Trademark Registrar stating the following possible grounds:
1) An opponent has a better title to a trademark than the applicant does.
2) The trademark is not registrable under Section 6 of the Trademark Act, namely,- It is not distinctive.
- It is a prohibited mark (e.g. identical with or confusingly similar to well-known mark).
- It is identical with or confusingly similar to prior registered mark.3) The trademark is contradictory to the registration provision.
After an opposition is lodged, the Trademark Registrar shall send a notice of opposition to the applicant entitling the applicant to file a counter-statement arguing against the opposition to the Trademark Registrar within 90 (ninety) days from the receipt date of the opposition notice from the Trademark Registrar. Failure of filing of a counter-statement, the application will be automatically dismissed.
It would take about 8-12 months before the Trademark Registrar would render his decision. Any party who does not agree with the Trademark Registrar’s decision may file an appeal with the Trademark Board within 90 (ninety) days from the date of receipt of the decision from the Trademark Registrar. It would take around 12 (twelve) months before the Trademark Board would render their ruling. Then, any party who does not agree therewith may file a complaint with the Court within 90 (ninety) days from the date of receipt of the decision from the Trademark Board.
Registration of Certification Mark
In obtaining the certification mark registration, apart from the necessary documents for registration of trademark in general, the followings shall also be required: -
1) It is required to submit the regulations concerning the uses of the certification mark along with the application. The regulations concerning the uses of the certification mark must indicate the followings: -
1.1 The origin, composition, production method or manufacturing method, quality or other characteristics of the goods or services to be certified; and
1.2 The rules, procedures and conditions for authorizing uses of the certification mark.
2) It is required to demonstrate that the applicant has an ability to certify the characteristics of the goods or services as provided in the regulations or to demonstrate that the applicant is well qualified to certify the merits of the goods or services.
Cancellation or Invalidation of Trademark Registration
After the trademark is granted registration, it may be possible for the trademark registration be revoked or cancelled on the following grounds:-
The followings are possible ways for cancellation or invalidation of trademark registration:
1) Cancellation or Invalidation by the Trademark Board:
1.1 Any interested person or the Trademark Registrar may petition the Trademark Board to order the cancellation if it appears that the trademark should not have been granted registration as, at the time of registration, the trademarka) was not distinctive, e.g., it has direct reference to the characteristics or quality of goods designated in the application
b) contained or consisted of a prohibitory characteristics, e.g., it was same as or
confusingly similar to well-known trademark
c) was identical with other person’s registered trademark for the goods of the same class or of different classes with the same character
d) was so similar to other person’s registered trademark that might cause confusion or misunderstanding to the public as to the proprietorship or source of origin of the goods of the same class or different classes with the same character.1.2 Any person may petition the Trademark Board to cancel the trademark registration if the mark is contrary to public order, good moral or public policy.
1.3 Any interested person or the Trademark Registrar may petition the Trademark Board to order the cancellation of trademark registration if it is proved that at the time of registration, during the three years prior to the petition for cancellation there was no bona fide uses of trademark for the goods for which it was registered (ground of non-use basis) unless the owner can prove that such non-use was due to special circumstances in the trade.
2) Cancellation or Invalidation by the Court (“IP&IT Court” - The Central Intellectual Property and International Trade Court):
2.1 Any interested person or the Trademark Registrar may petition the Court to cancel the trademark registration by showing that at the time of filing the legal action, the trademark had become common in a particular business or goods and that it lacks meaning of trademark.
2.2 Any interested person may petition the court to cancel a trademark registration within 5 (five) years from the date of registration order (ground of better title) by showing that he has better rights in the registered trademark than the person registered as its owner.
Rights Conferred to the Registered Owner
The registered owner shall have the exclusive right to use the registered trademark for the goods for which it is registered and is entitled to initiate legal action preventing or recovering damages from the infringers.
The current Thai Trademark Act also stipulates criminal provisions punishing violators against the trademark registered in Thailand. The offences and penalties under the Trademark Act against the infringers are as follows:
- Any person counterfeits other person’s trademark registered in the Kingdom or sells, possesses for sale, imports into the Kingdom of goods bearing counterfeit trademark shall be punished up to 4 years imprisonment or up to Baht400,000 fine or both;
- Any person imitates other person’s trademark registered in the Kingdom in order to cause confusion or sells, possesses for sale, imports into the Kingdom of goods bearing imitate trademark shall be punished up to 2 years imprisonment or up to Baht200,000 fine or both.
Assignment
It is possible to assign either registered trademark or pending trademark application and record the assignment at the Trademark Office. To record the assignment by agreement, the Assignment Agreement entered into between the assignor and the assignee is required. Partial assignment is not possible.
Licensing
The owner of registered trademark may license other persons to use such registered trademark with the goods for which it was registered, entirely or partially. The use of the trademark by the registered licensee shall be deemed the use by the owner.Click here to view more details.
.gif)
