Trade and Service Marks
– The Trade Mark Act B.E. 2534 (A.D. 1991), amended by the Trade Mark Act (Issue No. 3) B.E. 2559 (A.D. 2016), in effect since July 28, 2016.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 25, 1989.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since August 2, 2008.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since November 7, 2017.
Applicant: the proprietor of the trademark or his representative must have an office or a place of business in Thailand where he can be contacted by the Registrar.
Types of marks: trademarks, service marks, certification marks, collective marks, sound marks. Groups of colors and three-dimensional marks can be registered as marks.
Registrable trademarks must consist of the following particulars: (1) a “distinctive” trademark; (2) a trademark which is not forbidden by the Law; (3) a trademark which is not identical with or similar to those registered by others.
Priority right: priority can be claimed on an application for registration of a trademark in Thailand, based on the first application filed abroad, if the Thai application is filed within six months from the first filing date by an applicant of a country where Thailand is a member of an international convention or treaty for the protection of trademarks. Under the Notification of the Department of Intellectual Property of June 30, 2000, an applicant must claim priority when submitting the trademark registration application. The following documents are also required: (1) a copy of the trademark application first filed abroad for the same trademark and goods as in the application filed in Thailand. The copy must be certified by a person with the authority to approve trademark registrations in the country of first application; (2) a document showing that the said country grants the same priority right to persons whose head office of business is in Thailand and to Thai nationals. This document may be certified by a person in authority or by the applicant himself. This document does not need to be submitted if the applicant is a national of a country where Thailand is a member of an international convention or treaty for the protection of trademarks; (3) a statement certifying that the application has either been rejected (by the Registrar) or withdrawn or abandoned by the applicant.
Classification: the International Classification of Goods and Services (Nice Agreement). Separate applications have to be filed for each class of goods. Each particular kind of goods must be clearly declared and is liable to a fee.
Multiple-class applications can also be filed in accordance with the amended Act effective July 28, 2016. No additional fee, however, for up to five items of goods/services in one class: Baht 1,000 per one item of goods/services, and for more than five items of goods/services in one class: Baht 9,000 per classification.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney with notarial certificate in which the Notary Public must independently certify that (a) the signature is genuine; and, for legal entities, (b) the person signing has the authority to do so, (c) the firm is a legal entity;
2. 1 print of the mark for each application to be registered (max. size 5 x 5 cm);
3. Description of goods to be covered in conformity with the International Classification system.
Note: all documents and marks that are not in Thai language must be translated into Thai. A power of attorney is valid for all applications of the same applicant. It is valid for one year from the signing date.
Electronic filing: available.
Electronic signatures: are accepted if the Notary Public clearly certifies the signature and the authority of the person signing the document. Scanned copies of wet signed documents are accepted, however, the Registrar may ask to review the original at a later date.
Examination: in considering applications for trademark registration, the Registrar is empowered to send an investigating letter to or call an applicant to give verbal statements, or to invite any person to give facts, explanations, etc. If, on examination, the Registrar refuses to accept an application, he must submit in writing his reason for refusal and an appeal to the Board of Trademarks can be made within sixty days of receipt of notice.
Honest concurrent user: the Registrar may permit the registration of the same or nearly identical marks by different proprietors for the same or similar goods subject to such conditions and limitations as the Registrar may deem proper to impose.
First applicant’s right: the Registrar may permit the registration of the first applicant in cases where there are different proprietors for the identical or closely resembling marks in respect of the goods of the same or different classes and the Registrar considers that the marks will confuse the public. The applicants whose applications were rejected are entitled to appeal to the Board of Trademarks within ninety days of receipt of the Registrar’s notice.
Letters of consent: not accepted.
Opposition: may be filed within ninety days of advertisement of an application. In cases where the applicant or the opposing party is dissatisfied with the Registrar’s decision, either party can file an appeal with the Board of Trademarks within sixty days from receipt of the Registrar’s notice. Furthermore, if the parties are not satisfied with the Board of Trademarks’ decision, the parties can bring lawsuit to the court within ninety days from the receipt of the Board of Trademarks’ notice.
Granting and Protection
Duration: ten years from date of application.
Renewal: for further periods of ten years. Grace period: after the expiry date, there is a grace period of six months for renewal and a surcharge of 20% of the renewal fee must be paid.
Use: compulsory. A registered trademark may be cancelled if it has not been used for a period of three consecutive years before filing a petition to cancel the registration of the mark.
Use conditions: a trademark should be used as it has been registered. Use of a mark in a form not diverging essentially from the registered one may not be regarded as trademark use. The following are considered as valid trademark use: affixing the trademark to the products or to its package; use in connection with the goods or services (e.g. invoices, stationery); export of marked goods or services to other countries.
Assignment and inheritance: shall be registered with the Registrar; transfer of the goodwill in the business is not mandatory. Partial assignment or inheritance for some or all registered goods or services are allowed.
Infringement and penalties: may be punished by filing the complaint to the court in civil or criminal proceedings. Penalties range from fines (Baht 10,000 – Baht 400,000), to prison terms ranging from six months to four years, depending on the offense committed (ref.: old Act -maximum fine Baht 10,000; maximum prison term -not more than one year; or both). A refilling offense has also been added and for those who re-use or refill packaging or containers bearing another’s registered trademark to mislead the public into believing that the goods are those of the trademark owner will be liable for imprisonment of up to four years and/or a fine of up to Baht 400,000. The proprietor of the trademark may file injunctive application to the court provided that there is express evidence that the registered trademark has been forged or imitated.
Modification of Protection after Registration
Cancellation: a registered trademark may be cancelled on application to the Board of Trademarks on the grounds that the mark (1) is non-distinctive; (2) is forbidden for registration; (3) when filed, was identical or confusingly similar to a registered trademark belonging to another person in respect of goods under the same or different classes, but having the same character; (4) is contrary to public order, morality, or public policy; (5) was registered without bona fide intention to use the mark for goods; (6) or that there has been no bona fide use for a consecutive three years before filing a petition to cancel the registration of the mark. If either party is dissatisfied with the Board of Trademarks’ decision, that party may bring lawsuit to the court within ninety days from the receipt of the Board of Trademarks’ notice. A registered trademark may be cancelled on application to the court by any interested person who may prove better title or that the mark has become common. The prescription period for filing the complaint to the court for cancellation of the trademark registration is five years from the date of the Registrar’s order for registration of the trademark.
Licensing agreement: the proprietor of a registered trademark may license other persons to use his mark. The trademark licensing agreement must be in writing and registered. A registered trademark licensing agreement may be cancelled if the proprietor of the mark or the authorized licensee can show that the agreement has already been terminated and a registered licensing agreement may become null and void if a registered trademark is cancelled. However, a licensing agreement will not be terminated due to the transfer of inheritance of the mark unless there is a provision in the agreement to the contrary.
Use: the use of the trademark by the authorized licensee shall be considered to be the use by the proprietor of the trademark.