03-06-2012 (Newsletter Issue 4/12)
New Trademark Bill Approved
A Draft Trade Mark Bill was approved by the Cabinet in Thailand on November 22, 2011, and the approved version was submitted to the Parliament for its final consideration and approval. It is expected to come into force in June 2012.
The Bill contains several significant points, which the Department of Intellectual Property believes will expand the scope of trade mark protection in Thailand, and accelerate and facilitate the registration process, and provide for more suitable fees for registration.
Under the Bill, “scent and sound” have been included in the definition of the term "mark" in order to extend the scope of protection to these non-traditional trade mark forms.
The Bill also provides clearer and more specific criteria for the purpose of determining whether a mark is distinctive. A distinctive status is ascribed to an invented word, invented number, or invented character. They can therefore be registered as trademarks.
The Bill also provides that a shape mark has a distinctive status, if the shape of the mark does not indicate the nature of the goods, or obtain technical results, or give substantial value to the goods.
Moreover, the Bill provides that if a trade mark is not inherently distinctive, as provided by law, it can acquire distinctive status by way of acquiring a secondary meaning - that is, by proving that the mark has been used in association with the applicant's goods or services in a commercial sense, and through such usage, has become well known in Thailand. The trade mark will thereby become distinctive.
Source: Siam Premier International Law Office Limited, Thailand on www.aippi.org
Legal basis is the Trademark Act, A.D. 1991, effective February 13th, 1992, and amended by the Trademark Act (No. 2) A.D. 2000, effective June 30th, 2000.
On August 1st, 2005, a new regulation came into force concerning the recordal of well-known marks due to the large number of trademark owners that expressed interest in recording their famous marks. The Department of Intellectual Property (DIP), has then started accepting applications to record well-known marks.
A “Mark” shall include a portrait, picture, device, brand, name, word, statement, letter, numeral, signature, combination of colours, figurative element, or any combination there of. Three-dimensional marks are registrable.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Trademark Office.
A separate application has to be filed for each class.
It is possible to apply for other similar trademarks as associated trademarks in the same application.
Foreign applicants need a local agent.
A notarised power of attorney is necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration or first office action is approx. 12 to 18 months.
Prior to registration, the trademark application is published in the “Trademarks Journal”.
The opposition period is 90 days from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
There is no grace period for trademark renewals.
Use of a registered trademark is not a must, but it is strongly recommended in order to prevent any vulnerability due to cancellation. Any interested party may petition for cancellation based on non-use of a registered mark during three years prior to the petition for cancellation.
The trademark office charges the government fee based on the number of items of the goods and services applied under the application, namely, (i) for filing for filing new application stage at the rate of THB 500.00 (approx. EUR 12.50) per one item and (ii) for registration stage at the rate of THB 300.00 (approx. EUR 7.50) per one item. The publication fee is free of charge.
Trademark Licence Agreement
Licences of trademarks registered in Thailand must be in writing and registered with the Trademark Office. It is permitted to license the use of unregistered trademarks. A licence may cover all or some of the goods or services for which the trademark is registered. It is required that the licence agreement details the goods or services for which the mark will be used. The sale of a registered trademark does not automatically terminate the licence.
The following statutory provisions prescribe the terms of licensing:
1. The use of the licensed trademark by the licensee is deemed to be use by the trademark owner.
2. Unless otherwise provided for in the licence agreement, the trademark owner shall have the right to use the trademark himself and to license other persons to use the mark.
3. Unless otherwise provided for in the licence agreement, the licensee shall have the right to use the trademark throughout the country for all the goods/services for which the trademark is registered and for the entire term of the trademark registration.
There are provisions in law for the mandatory recordal of a licensee with the Trademark Office. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement but it should contain particulars as to:
1. The mark(s) to be licensed
2. The goods or services to be covered
3. The right of the licensor to exercise effective control over the quality of the licensed goods
4. Whether the licence is exclusive or non-exclusive
The following documents are required for a recordal:
1. The notarised original licence agreement
2. Notarised powers of attorney in favour of the licensor and the licensee
3. The original trademark registration certificate
The licence becomes effective as of the date specified in the agreement. It will only become enforceable against third parties upon its recordal. The licence is not required to be published.
It is generally presumed that use of a registered licensee is permitted use but this will depend entirely on the merits of each case. The licensee may join the trademark owner in infringement proceedings. He can request the trademark owner to institute infringement proceedings unless the licence agreement provides otherwise. The licensee may institute infringement proceedings himself if authorised by the owner to do so. He may institute proceedings in his own name if the proprietor refuses or neglects to do so. It is advisable to cite the proprietor as co-defendant in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
Chavalit & Associates Limited, Bangkok, Thailand
Baker & McKenzie, Bangkok, Thailand
Chavalit & Associates Limited, Bangkok, Thailand