A trademark is a distinct mark, accorded to goods and/or services, as an indicator of a proprietorship, business, or individual, in order to establish the identification of the same and create a difference between other goods and/or services of the same kind, from other competing entities/businesses.
A trademark can be a sketch, picture, brand name, word, text, letter, numeral, signature, group of colors, shape, figurative element, a three-dimensional representation, or a combination of any of the above, in a creative expression. Further, in a slightly more complicated sense, trademarks may also include distinctions created on the basis of color, smell, or sound, specific to a brand.
On an unsolicited use of a registered trademark, the owner of the same may institute legal proceedings against the infringer, to prevent any further unauthorized use of the trademark. However, for the suit to be instituted or to be successful, the registration of the trademark is not mandatory, albeit preferred. In Thailand, a trademark infringement suit may be instituted against an infringer only on the basis of a mark being well known within the geographical territory of Thailand, and among the general consumer base.
Apart from the external expression grounds mentioned above, which are commonly the instituting basis for trademark applications, there are other identifying features or characteristics, which can be registered as distinct marks, which are specifically related to service imparting.
|Relevant Office||Department of Intellectual Property, Nonthaburi, Thailand|
|Law in Force||The Trademarks Act, B.E. 2534 (1991)|
|Nice Classification||Yes (10th Edition)|
|Documents required for filing a trademark application||• Full name, address, country, and activity/occupation of the applicant
• Electronic sample of the mark (5×5 cm recommended size)
• List of goods and services to be protected
• Notarized Power of Attorney (for foreign applicants)
• Thai Power of Attorney and copy of Thai corporate certificate or ID card (for Thai applicants only)
• Translation of priority documents (if priority is claimed)
|Prosecution Process||1. Filing of trademark application and required documents
2. Examination by Trademark Registrar (6 to 9 months)
3. Objection filing (response to be filed within 90 days)
4. Acceptance for publication
5. Publication of application in Trademark Gazette (opposition period of 90 days)
6. Transmission of Certificate of Registration.
|Renewal Term||Must be executed within 90 days before the expiration of 10- year period.|
Although not mandatory, trademark searches are highly recommended in Thailand, since the approval of the application warrants a time period of about 12 to 18 months. These searches help in the ascertainment of likely objections that might arise during the examination of the validity of the application and can be helpful in detecting trademark squatters. There are several types of availability searches, which can be conducted, including:
During the determination of availability of a particular trademark, it is imperative to assess the class of products and/or services that are associated with the class of products and/or services, for which the trademark is sought. This ensures avoiding the institution of any trademark which can be relatively similar to any such mark, already existing and flourishing within the market, and avoiding any legal repercussions stemming therefrom.
However, there is no official search activity under the Department of Intellectual Property website, the applicant can undertake a search in a personal capacity, pertaining to word and graphic marks, over the DIP database. For any related search for a trading name, the search can be performed at the Ministry of Commerce or via its website at www.dbd.go.th.
Trademark applications in Thailand can be filed in two categories:
These applications are filed in Thailand, without claiming any priority, through Application Form Kor- 1. Additionally, Multi-class trademark applications cannot be instituted in Thailand. However, Trademark applications based on priority claims can be filed, in Thailand, based on an application of trademark filed in a foreign country, or a convention country.
Since Thailand is a member of the World Trade Organisation and is a signatory to the Paris Convention, it allows an applicant to claim a trademark priority date, based on an application filed in another WTO or Paris Convention signatory country. For this, however, a CTC of the Priority Application must be filed within 90 days of filing the application. If in case the CTC is in any other language than English, a verified English translation copy must be provided for the same. For an applicant belonging to a country which is not a part of the WTO or not a signatory to the Paris Convention, an official notification from the Chief of Foreign Trademark Office validating the act, by the same power of Reciprocal Agreement, must be filed, along with other necessary documents.
On March 1, 2013, Thailand adopted into its system of trademark registration the Tenth Edition of the Nice Agreement, under which there are 34 classifications of goods (Classes 1 to 34) and 11 classifications of services (Classes 35 to 45). The classifications—collectively known as the International Classification of Goods and Services—are generally followed by Thailand’s trademark registrars, but at times, they require clearer and more specific descriptions for certain goods and services.
An application for registration of the trademark is to be filed with the Department of Intellectual Property, Nonthaburi, Thailand in the prescribed form with payment of requisite fees. Additionally, it can also be filed by registered mail, with payment of fee by money order, in favor of DIP. Further, an application can also be filed online at www.ipthailand.go.th and thereafter a hard copy of the Application form must be submitted to the DIP within 15 days of the online filing
In Thailand, any legal or natural person regardless of their nationality may apply for the registration of a trademark, in furtherance of a need for availing of trademark protection. Further, any foreign applicants that have filed a trademark application in another country and later file a registration application for the same trademark in Thailand within six months of the first foreign application may generally claim the first foreign filing date as the filing date in Thailand (ie, a priority right).
On filing the application with the DIP, with all the requisite documents, the trademark application will be given an application number and will be examined by the Registrar. Following the submission of the complete application, along with the prescribed fees, the Trademark Registrar will institute an examination for verification of the fulfillment of the requirements of the Application under the Trademark Act. The examination process is sought to be completed, usually, within 9 months of filing.
Post the completion of the examination period, the publication of the application is done in the Trademark Gazette, following which a 90 day period is granted to invite any opposition to the trademark application. If such opposition is filed, the applicant is offered a 90- day period to file a counterstatement. On receipt of both, the Registrar shall then deliberate over the validity of both claims. After the period of 90 days is completed, the official fees of registration must be submitted within 30 days, which warrants registration.
Once a trademark has been registered in Thailand, it is protected by the provisions for 10 years from the date of filing or date of filing of the priority application. It can further be renewed over successive periods of 10 years.
The procedure for filing a Trademark in Thailand is as follows:
A trademark application can be filed for a single class only. Multi-class applications are not permitted in Thailand. Also, Thailand allows ordinary applications or priority applications previously filed in foreign countries, within 90 days of the filing.
After a trademark has been filed, it is examined by the Registrar on the basis of distinctiveness, identification features, similarity index, public morality, or any other compliance with the law.
If in case, the Registrar notes any non-compliance with the above criteria, they may issue one or several office actions, thus, refusing the application on any given ground.
However, the applicant may file an appeal before the Trademark Board, and further, to the Intellectual Property Court, against any of the decisions.
After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing an opposition against the registration of a mark.
Post the completion of the examination period, the publication of the application is done in the Trademark Gazette, following which a 90 day period is granted to invite any opposition to the trademark application. If such opposition is filed, the applicant is offered a 90- day period to file a counterstatement. On receipt of both, the Registrar shall then deliberate over the validity of both claims. If not accepted, an appeal can be filed with the Trademark Board within 90 days of the receipt of the Registrar’s decision.
After the completion of the 90 day period and the opposition opportunity, the applicant, on submission of the official fee within 30 days, shall be awarded the registered trademark.
The Trademark Act provides for two distinct cancellation procedures, post-acceptance of registration, where, one is before the Trademark Board and the other, before the Intellectual Property Court. This must be done within 5 years of the registration of the Trademark by the Registrar and by showing that the trademark had become common to the trade in the market. For the cancellation to take place, any interested party may file an appeal to the Trademark Board on the following grounds, as it appears that the trademark:
Further ahead, some marks are explicitly prohibited by law under the Trademark Act and Ministerial Regulations, including:
As per the compliances of the DIP, there are two types of official fees that are to be paid, during the process of application of a trademark: