If Thailand is a key destination for foreign companies, they must be aware of the country’s trademark protections. It is because the protection of designs and other intellectual assets is directly proportional to the preservation of profits and brand value. Trademark registrations in Thailand for foreigners is governed by various laws and regulation which are very crucial in determining the eligibility of the foreign business in the process.
The Trademark Act B.E.2543 (1991), as revised by the Trademark Act (No.3) B.E.2559, protects trademarks, certification marks, collective markings, and service marks in Thailand (2017). Non-residents can only register trademarks with the Department of Intellectual Property by designating a Thai resident and giving them power of attorney. Thailand’s new trademark renewal fast-track system ensures that the examination of applications and issuance of the certificate of renewal takes only 45 minutes.
Now let us take a closer and deeper look at the process of Trademark Registration in Thailand for foreigners.
International Laws for Trademark Registration in Thailand
Thailand has ratified the following international intellectual property treaties:
- The government filed its instrument of admission to the Madrid Protocol Concerning the International Registration of Marks on August 7, 2017. This makes Thailand the 99th member of the Madrid system. Thailand implemented the protocol on November 7, 2017;
- The Paris Convention for the Protection of Intellectual Property (as of August 2 2008); and,
- Agreement on Trade-Related Aspects of Intellectual Property Rights (as of January 1, 1995) with the World Trade Organization.
Regulators of Trademark Laws in Thailand
Thailand’s major government entity that regulates trademark law is the Department of Intellectual Property (DIP), which is part of the Ministry of Commerce.
Rights and Protection
Ownership
In Thailand, trademark ownership is in the order in which applications are filed. Therefore, it is prudent for enterprises doing or planning to do business in Thailand to file a trademark application. Moreover, it is difficult to challenge a prior identical or similar mark, and coexistence of identical or similar marks in Thailand is forbidden. Section 67 of the Trademark Act allows any party to petition the IP Court within five years of registration. It is to have a prior registered property cancelled if it can demonstrate that it has stronger rights to the trademark. However, under current case law, only marks that are well-known and frequently used in Thailand are eligible for such protection.
Unregistered Trademarks
In Thailand, unregistered trademarks are not properly protected. The legislation expressly specifies in Section 46 of the Trademark Act that “no individual shall be able to institute legal procedures to prevent or recover damages for the infringement of an unregistered trademark.”
Acts of passing off are subject to nominal protection under Section 272 of the Penal Code (Offenses relatable to Trade), which states:
“Whoever uses a name, figure, artificial mark, or any other wording used in another trades, or causes the same to appear on goods, packages, coverings, advertisements, price lists, business letters, or the like with the intent of misleading the public about the proprietor of such goods or trade shall be liable to imprisonment for a period not exceeding one year or a fine not exceeding 2,000 Thai Baht, or both.”
Unregistered trademark owners can also rely on Section 420 of the Civil and Commercial Code. It states that “a person who, wilfully or negligently, unlawfully injures the life, body, health, liberty, property, or any right of another person is said to commit a wrongful act and is bound to make compensation.”
Recognition of Foreign Trademark Registrations in Thailand
Thailand does not formally recognise foreign trademark registrations. However, in trademark litigation or appeal cases, trademark registrations in other jurisdictions serve as evidence. If the mark is likewise popular in Thailand, this can help overcome concerns or serve as evidence that a graphic representation.
Registered Trademarks
The owner of a registered trademark has exclusive rights to use and exploit the mark. A registered mark also has additional advantages, such as:
- Preventing trademark squatting;
- Proving ownership;
- Simplifying licencing and transfer;
- Increasing share value; and,
- Providing enforcement alternatives.
Trademark Registration Eligibility
In Thailand, any legal or natural person, regardless of nationality, can file a trademark application. Foreign applicants can file a trademark application in another country. But then, they have to file a registration application in Thailand for the same trademark. They have to do so within six months after the first foreign application. Henceforth, they can normally claim the first foreign filing date as the Thai filing date.
Thailand recognises both traditional and non-traditional marks (word, semi-figurative, and figurative signs) (eg, three-dimensional marks and sound marks as of September 1, 2017).
The Trademark Act, on the other hand, has a very specific description of what defines a ‘mark’. It is “any photograph, drawing, device, logo, name, word, phrase, letter, digit, signature, a combination of colours, figurative element, sound, or a combination thereof”. A trademark must meet the following criteria in order to be registrable:
- be distinctive;
- eligible by the Trademark Act; and,
- be readily available (and not identical or confusingly similar to a prior registered trademark).
When it comes to distinctiveness, the Department of Intellectual Property is going to be tough. Numerals or letters that do not form a word (e.g., DMC) are frequently subject to rejection and disqualification. One can file disclaimers on descriptive or non-distinctive aspects of a mark in certain circumstances. Such disclaimers, on the other hand, imply that the mark cannot owe full protection.
There are various other regulations for foreign businesses for the possession of copyright and trademark. For greater understanding and practical implementation, you will need legal support. Mail us at [email protected] to obtain the trademark for your business in Thailand.
