Trademark registration in Thailand – the country favors “first to file” norm. Before the applicants file a trademark application, it is essential that they conduct a series of initial and comprehensive searches of all the relevant Thailand trademark databases
What is a trademark ?Before going detailed into the definition of a trademark, it is necessary to understand what a “mark” means. Mark is a picture, photograph, drawing, design, letter, phrase, signature, combinations of color, shape or configuration of an object or any one or combination. Trademark means a mark which is used or proposed to be used on or in connection with the goods to distinguish the goods of one seller/provider from that of another seller/provider.
Trademark rulesThailand favors “first to file” norm. A brand owner possesses a valuable trademark and wants it to be protected from other owners, he/she will submit a trademark application to the national department of Intellectual Property to be granted a protection title for his/her trademark. This rule means the trademark application of the brand owner will have a priority to be considered to be protected even though that trademark was used first by another owner.
Required documents for registering trademark application in ThaiLand.In Thailand, an applicant can file a trademark application directly or through electronic system. all methods require following documents:
- Full name, address, country and activity/occupation of the applicant
- Electronic sample of the mark (5×5 cm recommended sizes)
- Description of goods and services to be protected
- Notarized Power of Attorney, where the application is made through an agent (for foreign applicants)
- Thai Power of Attorney and copy of Thai corporate certificate or ID card (for Thai applicants only)
- Country, date, and number of the priority trade mark application if priority is claimed
- Certified copy of the priority application and translation into Thai if priority is claimed
- Date of first use of trade mark (if any at time of application)
Trademark registration in Thailand – ProcessA trademark application normally takes approximately 12 to 18 months to proceed to registration if no objection from the Registrar or opposition from an interested party is encountered. The application will be examined by the Registrar, who may require amendments to the application or objection to registration of the application. If necessary, an appeal against the Registrar’s required amendments and or objections may be filed with the Trademark Board. Once the mark is accepted for publication, the mark will be present in the Thai Trademark Gazette. An opposition may be filed with the Registrar by any interested party within 60 days since the date of publication. The decision of the Registrar on the opposition may be appealed to the Trademark Committee by either party and the decision of the Trademark Committee may in turn be appealed to the Central Intellectual Property and International Trade Court. Finally, the Registrar will request payment of the registration fees. Upon payment of the registration fees, the Certificate of Registration will be issued.
Fees of trademark registration in ThailandThe official fees of trademark application is regulated in Thailand Trademark Act B.E. 2534 as follows:
|Application for registration
||to 5 items of goods or services in each class||1,000 baht per item|
|over 5 items of goods or services in each class||9,000 baht per class|
||Over 5 cm in width or length Fraction of a centimeter shall be counted as a centimeter||200 baht per centimeter|
|Opposition against an application||2,000 baht per opposition|
|Application to assign rights to an application for a trademark, service mark, certification mark or collective mark||2,000 baht per application|
|Trademark Registration in Thailand for a trademark, service mark, certification mark or collective mark||1 to 5 items of goods or services in each class||600 baht per item|
|over 5 items of goods or services in each class||5,400 baht per class|
|Replacement certificate of registration||200 baht per copy|
|Application to register an assignment or inheritance of a trademark, service mark, certification mark or collective mark||2,000 baht per application|
|Application to amend registration particulars||400 baht per application|
|Renewal of registration under||1 to 5 items of goods or services in each class||2,000 baht per item|
|over 5 items of goods or services in each class||18,000 baht per class|
|Petition to the Trademark Board to cancel the registration||1,000 baht per request|
|Application for registration of a trademark or service mark license||1,000 baht per application|
|Registration of a trademark or service mark license||2,000 baht per license|
|Application to amend the registration particulars||400baht per application|
|Petition to cancel the registration||400 baht per request|
|Application to amend the application||200 baht per application|
|Application to amend rules of a certification mark||before registration of the certification mark||200 baht per application|
|after registration of the certification mark||400 baht per application|
|Appeal against the Registrar’s order under Section 16, Section 17, Section 27 or the Registrar’s decision under Section 37||4,000 baht per appeal|
|Appeals under other provisions||2,000 baht per appeal|
|Search of registration particulars of trademarks, service marks, certification marks or collective marks or files thereof||Fraction of an hour shall be counted as an hour||200 baht per hour|
|Request for an extract of register of trademarks, service marks, certification marks or collective marks, with certification||400 baht per copy|
|Request for copy documents||20 baht per page|
|Request for certification of documents of the same case||not over 40 pages||20 baht per page|
|over 40 pages||800 baht per copy|
|Request for certification of registration||100 baht per copy|
|Other applications||200 baht per application|
|Preparation and delivery of an international application or other applications under Madrid Protocol||Preparation and delivery of an application for registration||2,000 baht per application|
|Preparation and delivery of a renewal application, an application for assignment, an application for amendment and other applications||1,000 baht per request|
|Request for recordal of an international registration to replace a registration in the Kingdom||2,000 baht per request|
Note: In the case where international application is designated to Thailand through the Madrid System for the International Registration of Marks, the official fees must be paid to the World Intellectual Property Organization.
Trademark search in Thailand
Before filing a trademark application, it is essential that the applicant should conduct a basic trademark search and comprehensive searches of all the relevant Thailand trademark databases.
This action can omit the same and similar trademarks that have been registered before. These searches will increase the likelihood of success in trademark registration in Thailand.
How priority right claimed in Thailand?
Priority rights in Thailand
Priority rights allow an applicant have an advantage of the first filling date at which he file the application of registration in a country bound by the Paris Convention or other agreements recognizing priority rights to which Thailand is a party will be considered as the filing date in Thailand.
A owner can claim his priority possesses one of the following qualifications:
- Being Thai national or foreign national of a country party to a convention or international agreement on trademark protection to which Thailand is also a party or a country ;
- According the same rights to Thai nationals or juristic persons having their headquarters located in Thailand;
- being domiciled or having a real and effective industrial or commercial establishment in Thailand or a country party to a convention or international agreement on trademark protection to which Thailand is also a party.
In order to claim priority, an applicant must indicate in its Thai application the details of the priority application and submit a signed declaration of priority that is usually prepared by a local agent. The declaration of priority is not required for foreign applicants designating Thailand through an international application (eg, the Madrid System for the International Registration of Marks
Duration of priority: six months from the first filling date
Conditions needed to claim priority when goods bearing a trademark are exhibited
First of all, such goods bearing a trademark registration in Thailand shall be exhibited at an international exhibition held in Thailand or a country party to a convention or an international agreement on trademark protection to which Thailand is also a party and organized by a government agency, public enterprise or any other government unit of Thailand or the member country or recognized by the government of Thailand
Secondly, the owner must file a trademark application for the goods exhibited in such exhibition within six months from the date of introduction of the goods into the exhibition or the first foreign filing date.
Duration of trademark certificate in Thailand
Trademark certificate is valid for a period of ten years from the date of registration and can be renewed for further ten years from the date of expiration of the initial registration or of the last.
In order to renew an application, the owner has to submit an application to the Registrar and pay the renewal fee within three months prior to the expiration date. After three months if the owner fails to submit such application he will have another six months to do so and have to pay the renewal fee and a surcharge of twenty percent thereof
During the above time, if the owner has completed his renewal payment and the trademark shall be deemed registered until the Registrar orders.
The Registrar then takes consideration whether the application is accordance with the rules and procedures under law. If the application meets the requirements, the trademark will be protected for further period of ten years from the date of expiration of the initial registration or of the last. Otherwise, the owner must correct the application within sixty days from the date of receipt of the order and shall notify the trademark owner of the order in writing without delay. If the owner does not comply with the order within the specified period, the Registrar shall order cancellation of the trademark registration.
Frequently Asked Questions
How are well-known trademarks protected in Thailand?
Cross-class protection is available for well-known marks— they are still protected even if they have not been registered in the same class or a relevant class as the offending application.
Who can file the trademark application in Thailand ?
Both domiciled and foreign domiciled applicants can have the rights to file the trademark application in Thailand.
But the notarized power of attorney (POA) is required from foreign applicants. One POA can be used for several trademark applications.
Are multi-class applications allowed in Thailand?
Yes. Multi-class applications are allowed in Thailand like Vietnam, Laos, USA, Singapore…
However, since filing a multi-class application has no advantage regarding costs or time, most applicants choose to use separate trademark applications for different class filings. The separate filing strategy increases the chances of receiving a swift registration since a multi-class application would not be granted if one or more classes are objected to.
Classification of products / services
Trademark registration in Thailand. Goods and services are classified in Thailand follows the general framework of the International Trademark Classification (Nice Classification). On practical use of Nice Classification, some specific requirements are applied as:
Using broad descriptions as “clothing” or “cosmetics” for products or services is not accepted and shall be detailed such as “hat”, “shoes”, “t-shirts”. As a result, there are a lot of objections regarding product and service descriptions in Thailand.
Note: Specific local products (such as exotic food products) have been added to the Thai classification
Can the application change after filling ?
When the application is filed, the registrar will examine the application and send a letter to notify the result within 12-18 months. However, during the examination, if the application does not meet all criteria, it may be required amendments and or objection of registration. In that case, the applicant will have a time to file or appeal against the Registrar’s required amendments and or objections may be filed with the Trademark Board. The decision of the Registrar on the opposition may be appealed to the Trademark Committee and the decision of the Trademark Committee may in turn be appealed to the Central Intellectual Property and International Trade Court.
What can the applicant do when a third party participating during the registration procedure by initiating opposition proceedings?
Once a trademark has passed the examination by the trademarks office, it will be published in the Royal Gazette. Interested third parties during a period of sixty days from the date of publication can file opposition actions against it. Opposition actions may be filed based on prior rights or absolute grounds.