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 identification of the same and create a difference between other goods and/or services of the same kind, from other competing entities/businesses.
Trademarks in Thailand may be designated by the following symbols:
™ (for an unregistered trademark, but for which application has been filed)
℠ (for an unregistered service mark, but for which application has been filed)
® (for a registered trademark)
A trademark can be a sketch, picture, brand name, word, text, letter, numeral, signature, group of colours, 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 distinction created on the basis of colour, 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 unauthorised 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 mark, which 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)|
|Multi- Class System||Yes|
|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 a validity of application and can be helpful in detecting trademark squatters. There are several types of availability searches, which can be conducted, including:
i. Identical searches;
ii. Similar searches (including phonetic transcription of marks in Thai language); and
iii. Device or logo searches
During the determination of availability of a particular trademark, it is imperative to assess the class of products and/or services which 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 to avoid 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 personal capacity, pertaining to word and graphic mark, over the DIP database. For any related search for trade name, the search can be performed at the Ministry of Commerce or via its website at www.dbd.go.th.
Trademark application in Thailand can be filed in two categories:
• Ordinary Applications
• Convention Application (claiming priority from a convention country)
Ordinary Trademark Applications
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 claim can be filed, in Thailand, based on an application of trademark filed in a foreign country, or a convention country.
Convention Trademark Applications
Since Thailand is a member of World Trade Organisation and is a signatory to the Paris Convention, it allows an applicant to claim 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 favour 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
Requirements for Filing a Trademark Application in Thailand:
Who can file a Trademark Application in Thailand?
In Thailand, any legal or natural person, regardless of their nationality may apply for the registration of trademark, in furtherance of a need for availing 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 examination for verification of the fulfilment 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 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 an opposition is filed, the applicant is offered a 90- day period to file 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.
Duration of 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 priority application. It can further be renewed over successive periods of 10 years.
The procedure for filing a Trademark in Thailand is as follows:
1. Filing a trademark:
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.
2. Examination/Issuance of Office Action:
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 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 opposition against the registration of a mark.
Post the completion of 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 an opposition is filed, the applicant is offered a 90- day period to file 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 with the registered trade mark.
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:
• was not distinctive, or
• contained or consisted of a prohibitory characteristics, or
• was identical with a trademark registered by another person for goods of the same class or of different class with the same character, or
• was so similar to a trademark registered by another person that the public might be confused or misled as to the owner or origin of the goods in the same class, or goods of different class with the same character in its trademark, or
• the trademark was not used, or
• the trademark is contrary to the public order, good morality or public policy.
Further ahead, some marks are explicitly prohibited by law under the Trademark Act and Ministerial Regulations, including:
• any mark which is contrary to public order, morality or public policy
• marks registered or not, which are identical with well-known marks as prescribed by the Ministerial Notifications, or so similar thereto that the public might be confused as to the owner or origin of the goods
• geographical indications protected under the law on geographical indications
• state arms or crests, royal seals, official seals, Chakri emblems, emblems and insignia of the royal orders and decorations, seals of office, seals of ministries, bureaus, departments or provinces
• national flags of Thailand, royal standard flags or official flags, national emblems and flags of foreign states or international organizations
• royal names, royal monograms, abbreviations of royal names or royal monograms, representations of the King, Queen or Heir to the Throne, names, words, terms or emblems signifying the King, Queen or Heir to the Throne or members of the royal family
• marks identical with or similar to a medal, diploma or certificate or any other mark awarded at a trade exhibition or competition held by the Thai government or a Thai government agency for public enterprise or any other government organ of Thailand, a foreign government or international organization unless such medal, diploma, certificate or mark has been actually awarded to the applicant for goods and is used in combination with the trademark
• other trademarks prescribed by the Ministerial Notifications.
As per the compliances of the DIP, there are two types of official fee which are to be paid, during the process of application of a trademark:
1. The first official fee is due on filing of the application, depending on the number of products or services per class, for which an application is filed.
2. The second official fee which is due on acceptance of the mark for registration, per product/service.
A registered mark is provided protection in Thailand for 10 years from its filing date (and from the priority application’s filing date) and can be further renewed for successive 10-year periods.
A registered trademark must be renewed 3 months BEFORE the expiration of the 10-year period or during a 6-month grace period AFTER the expiry fate. Any subsequent failure in renewal of registration will result in loss of trademark protection.