Protect Your Corporate Identity
Thailand does not have any international agreements on trademark ownership. If your trademark is not registered in Thailand it is in danger of being claimed by another party. To regain control of your trademark after it has been registered by another person, is expensive and will take years, Even then you may lose your trademark in Thailand unless you register it before someone else.
If you as the true owner then wanted to challenge the ownership of the mark you may submit a petition to cancel the registration at the Intellectual Property Court in Bangkok. This petition must be submitted within five years of the date that the previous registration of the mark in Thailand was approved, and the proof needed in order to cancel the registration is substantial .
The first step that an investor who owns the trademark should do, is protect their rights by registering the trademark at The Trademark Division of the Department of Intellectual Property (Ministry of Commerce).
In order to get the trademark registered it must:
- be distinctive
- not be the same as or similar to a trademark already registered by another person and not be otherwise prohibited by law.
Some of the issues associated with registering marks in Thailand are:
Determining whether a given mark is distinctive is with the discretion of the Registrar at the Trademark Division of the Department of Intellectual Property. A distinctive mark separates the goods or services with which the mark is used from other goods and services. It must have one of the following:
- a combination of colors represented in a special manner, stylized letter(s), numeral(s) or invented word(s);
- a word or words that has no direct reference to the character or quality of the goods and is not a geographical name designated by the Ministerial Notifications;
- a personal name, a surname not being such according to its ordinary signification, a name of a juristic person or a tradename represented in a special manner;
- the signature of the applicant for registration or some predecessor in his business or the signature of another person with his or her permission;
- a representation of the applicant or of another person with his or her permission or of a dead person with the permission of his or her ascendants, descendants and spouse, if any;
- an invented device.
Three of the most common issues which arise concerning whether a mark is distinctive:
- Stylized Letter(s), and Invented Word(s)
- No Direct Reference to the Character or Quality of the Goods
- Exception: Proof of Use
If you have a trademark that has been extensively used in Thailand prior to submitting the trademark application can be deemed distinctive even if it does not comply with the above listed rules. This use must be such as adverts, promo pieces, letterhead, etc in Thailand.
Not the Same or Similar to a Trademark Registered by Another Person
If a mark is the same or similar to a mark previously registered by another party you will not be allowed to register it. Many of our clients have us do a search at the Trademark Division of the Department of Intellectual Property to determine whether anyone has previously registered the same or a similar mark in Thailand . They then know (before submitting the application) that the application may be rejected on this basis.
Not Prohibited by Law
The law specifically states that marks having the following characteristics cannot be registered:
- a mark, registered or not, which is identical with a well-known mark, as prescribed by the Ministerial Notifications, or so similar that the public might be confused as to the owner or origin of the goods;
- state arms or crests, royal seals, official seals, Chakkri emblems, emblems and insignia of the royal orders and decorations, seals of office, and seals of ministries, bureaus, departments or provinces;
- national flags of Thailand , royal standard flags or official flags;
- royal names, royal monograms, or 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;
- national emblems and flags of foreign states, emblems and flags of international organizations, emblems of heads of foreign states, official emblems, quality control symbols and certification symbols of foreign states or international organizations, and names and monograms of foreign states or international organizations, unless permission is given by the competent officer of the foreign state or international organization;
- official emblems and emblems of the Red Cross or appellations “Red Cross” or “Geneva Cross”;
- a mark 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, 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;
- any mark which is contrary to public order, morality or public policy;
- trademarks similar to those under ii., iii., iv., vi., vii., or viii;
- geographical indications protected under the law on geographical indications;
- other trademarks prescribed by the Ministerial Notifications which are famous trademarks. Even though the Registrar is mostly just concerned with other marks registered in Thailand only. Trademarks registered in other countries are not taken into account when determining trademark ownership rights with one exception which is famous marks such as Coke or McDonald’s.
Trademark Protection in Thailand The Trademark Act B.E. 2534 provides protection for four kinds of marks as following:
Trademark means a mark used or proposed to be used on or in connection with goods to distinguish the goods, for which the Trademark of the proprietor of such trademark is used, from goods under another Trademark.
Service Mark means a mark used or proposed to be used on or in connection with services to distinguish the services of the proprietor of such service mark from services under another person’s service mark.
Certification Mark means a mark used or proposed to be used by the proprietor thereof on or in connection with goods or services of another person to certify the origin, composition, method of production, quality or other characteristics of such goods or to certify the nature, quality, type or other characteristics of such services.
Collective mark means a trademark or service mark used or proposed to be used by companies or enterprises of the same group or by members of an association, cooperative, union, confederation, group of persons or any other state-owned or private organizations.
Intellectual Property can be divided into two categories as follows:
• Industrial Property
• Copyright and related rights
Industrial Property can be divided as follows:
• Patent (Patent for invention, utility model and design)
• Integrated Circuit
• Trade Secret
• Trade Name
• Appellations of Origin
Term of Patent protection
– Invention patents shall be valid for 20 years from the date of application.
– Design patents shall be valid for 10 years from the date of application. An expired patent cannot be extended.
Term of Copyright protection
In general, the term of protection for Copyright exists for the life of the author plus 50 years after the death of the author. In case of a work is of joint authorship, Copyright exists for the life of the joint-authors plus 50 years as from the death of the last surviving co-author. In the case where the author is a juristic person, copyright exists for 50 years from the time of authorship. Copyright in photographic, audiovisual, cinematographic and audio and video broadcasting works as well as sound recordings exists for 50 years from the time of authorship. Copyright in works which are created during the course of employment, instruction or commission exists for 50 years from the time of authorship. Copyright in a work of applied arts exists for 25 years from the time of authorship. In the case that the work is published during such period, copyright exists for 50 years from the first publication with the exception of copyrighted works in the field of applied arts, which exist for 25 years from the date of the first publication.