Thailand Trademark Law and Registration Requirement
In Thailand, trademarks (including certification marks, collective marks, and service marks) are governed by the Thailand Trademark Act and must be registered with the Thailand Department of Intellectual Property (DIP).
Section 6 of the Act states that in order to be registrable, a trademark must:
(1) be distinctive,
(2) not be prohibited by the Act, and
(3) not be the same or similar to a trademark which has already been registered by another person in Thailand.
To obtain the exclusive right to use a trademark and prevent those competitors from using it, an owner must register a trademark with DIP. However, Thailand law also recognizes the rights of unregistered trademarks; namely, an owner of unregistered trademark can take action against acts of passing off.
Non-Thai applicant can only register their trademarks by appointing a Thai resident by granting them the power of attorney.
Since 2016, trademark owners who wish to protect their trademarks across different classes of goods and services can do so by filing a multi-class application. While this procedure has the advantage of alleviating paperwork, this might however slow down the registration if a refusal is issued relating to one of the classes designated in the application.
Thailand has implemented classification manuals in line with the Nice Classification system.
Black & White or Color mark?
A mark registered in black and white or using a grayscale will be protected in all other colors (a mark registered in two or more colors will only be protected with the colors claimed). Thus, it is advisable not to register the mark in color to provide the widest protection possible to the mark.
An owner of a trademark that has been filed or registered in a country who also signed the Paris Convention and/or is a member of WTO, may claim the first foreign filing date as the filing date in Thailand, if the application is filed in Thailand within 6 months from the first filing date.
The Protocol has been entered into force for Thailand since November 2017.
Procedural Stages for Trademark Registration
There are four main procedural stages for registration of a trademark application in Thailand:
1. Filing of Trademark Application
4. Registration (Paying registration fee & issuance of Certificate of Trademark Registration)
How long does registration take?
The process normally takes 1-2 years.
- The renewal request can be filed within 3 months prior to the expiration date (Section 54).
- Late renewal is possible in the 6 months following the expiration date (grace period) and sanctioned with a 20% surcharge of the official fees.
- A new certificate of registration will be issued 3 to 4 months after the renewal application filed.
- Pending / registered trademark can be assigned or transferred to another party.
- The assignment or transfer needs to be registered at the DIP to take effect.
- The assignment will be effectively registered within 3 to 6 months. For registered trademarks, a new Certificate of Registration in the name of the new owner will be issued.
- The owner of a trademark can authorize someone else to use their trademark in connection with some of or all the goods and/or services designated in the registration, with a license agreement.
- To be effective in Thailand, this license agreement must be registered with the DIP, and include the conditions and terms of the use of the trademark and specify the goods or services with which the trademark is to be used by the licensee.
- The registration of the license agreement takes 6-12 months.
- The trademark owner must retain control over the quality of the goods or services provided under the license agreement. Failure to exercise such control can be cause for the cancelation of the license agreement by the Trademark Board, upon request by the registrar or a third party. The license may also be canceled by the Trademark Board if it is demonstrated that the use of the trademark by the licensee either confused the public or is contrary to public order, morality or policy.
- Assignment or inheritance of the trademark will not revoke existing license agreements.
According to the Trademark Act, any interested person or the Registrar may file a petition to the Board of Trademarks to cancel a trademark registration. The petitioner must be able to prove one of the following:
- At the time of registration, the owner of the trademark had no bona fide intention to use the trademark with the goods or services for which it was registered, and in reality the trademark has never been used for such goods or services in a bona fide manner; or
- During the three years prior to the petition for cancellation, there was no bona fide use of the trademark for the registered goods.
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Saowaluck Lamlert (APPLE)