As the summer is fast approaching, many European companies engaged in tourism industry are looking for opportunities to expand their business into South-East Asian countries. Thailand, for example, offers many promising business opportunities for the European SMEs in tourism industry as tourism is one of the fastest growing industries in there. However, European SMEs should not let the summer’s heat take their focus away from IP protection when planning their move to Thailand, because IPR infringements are still commonplace in Thailand. Today’s blog post, thus, discusses IP Protection in Thailand, focusing particularly on the tourism industry.
Tourism industry in Thailand continues to offer many lucrative opportunities to European SMEs as Thailand remains one of the most popular tourist destinations in the Asia Pacific region due to its white sandy beaches, abundant tropical nature, inexpensive accommodation and well-developed transport and communication infrastructure. Underpinned by government’s and private sector stakeholders’ recent efforts to market Thailand around the globe, the industry has grown to become one of the country’s most productive and sustainable industries, contributing a total of EUR 69bn towards the economy in 2014, making up more than 19% of the GDP of Thailand.
SMEs engaged in tourism need to pay special attention to protecting their intellectual property (IP) rights, because despite recent improvements in Thailand’s IP legal framework, IP infringements are still relatively common in the country. IP rights are a key factor for business success and neglecting to register them in Thailand could easily end SMEs’ business endeavor in the country. Thus, a robust IPR strategy is needed, when entering the lucrative market of Thailand.
Brand Protection is the Key Factor of Success in Tourism Industry
Branding is crucial for the tourism sector, as it allows companies to differentiate themselves from the rest, creating a niche market and an individual appeal that will translate into more tourist arrivals. In tourism sector ‘destination branding’ is equally important to company branding. Destination branding often relies on a logo and a tagline, the examples being the Swiss resort St. Moritz using the tagline ‘Top of the World’, the Tourism Malaysia campaign of ‘Malaysia, Truly Asia’, or Tourism Authority of Thailand recent campaign of “Discover Thainess”.
SMEs are strongly advised to register their brand name, logo and tagline as a trade mark in Thailand to protect their brand because IP rights are territorial and European trade marks do not enjoy automatic protection in Thailand. There is also some additional protection for unregistered ‘well-known trade marks’ in Thailand, provided that the mark is ‘well-known’ in Thailand. A well-known mark can be protected through initiation of a legal action for ‘passing off’. The law against ‘passing off’ is intended to prevent other traders from unfairly riding on the reputation and success that a company has built for its trade mark. Furthermore, the current Thai Trademark Act prohibits registration of trade marks that are similar to well-known marks. However, Thai authorities normally require a trade mark registration certificate to initiate trade mark enforcement proceedings, so it is still very important to register trade mark in Thailand.
Thailand adopts the ‘first-to-file’ system, meaning that the first person to register a trade mark owns that mark. It is particularly important for the SMEs to register trade mark in Thailand because trade mark piracy due to ‘bad faith’ registration is a problem. ‘Bad faith’ registration means that a third party, not owning the trade mark, registers European SME’s trade mark, thereby preventing the legitimate owner from registering it. These unscrupulous companies normally try to resell the trade mark to its owner at an inflated price.
In Thailand, a trade mark may be composed of a photograph, drawing, device, brand, name, word, text, letter, numeral, signature, combination of colors, figure or shape of an object, sound, or any combination thereof. Additionally, three-dimensional signs can also be registered as trade marks in Thailand.
Trade marks are registered at the Department of Intellectual Property of the Ministry of Commerce and registration costs between EUR 50 and EUR 420 for one class, depending on how many items of goods and services are registered. This also excludes agent fees. SMEs should bear in mind that they need to be represented by an agent when registering their trade mark in Thailand. SMEs should also keep in mind that trade mark application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation.
Don’t Forget to Protect your Brand Also in Thai Language
As the registration of a trade mark in original Roman characters does not automatically protect the trade mark against the use or registration of the same or similar trade mark written in local Thai script, it is highly advisable to additionally register a version of your trade mark also in Thai script. Furthermore, if there is no existing name for SME’s brand in Thai script, it is possible that one will be adopted by local consumers either by way of translation or by transliteration, and not necessarily with the right connotations or image that the SME would wish to convey.
As Thai script has its unique characteristics, therefore, SMEs’ local equivalent trade mark should be carefully developed with the help and guidance of trade mark, marketing and PR experts, as well as native speakers and translators.
Consider Also Protecting your Internet Domain Name
Most companies engaged in tourism rely on websites to attract customers and thus protecting online domain name is of utmost importance for the SMEs. It is advisable to register internet domain names in Thailand because a registered Thai domain name will prevent others from using that company name or brand name as their website name. Internet domain name registration is also important because problems like ‘cybersquatting’ still persist in Thailand. Cybersquatting means that a third party registers a domain name that is identical to European company’s product or trade mark name, with the purpose of selling the domain names back to the rightful owner at a premium price.
Internet domain names can be registered with the Thai Network Information Centre (THNIC) and this should be done together with trade mark registration in Thailand, as THNIC requires trade mark registration certificate to register the internet domain name for SME’s brand. It is also possible to register internet domain name based on company registration, using the name of the company. Internet domain name registration typically costs around EUR 25 per year, much cheaper than having to solve domain name disputes.
It is advisable to monitor similar domain names and protect your domain name in case of confusion or cybersquatting, as registered Thai domain names are often the key to business growth locally and thus cybersquatting and other online IP infringements can seriously hurt SMEs’ business.
Always Enforce your Rights
Entering a new market and protecting IPRs also means being ready to enforce or defend these rights in order to ensure that business objectives are met and therefore budget planning for enforcement is the key to a successful business strategy. When European SMEs identify infringement, they should actively enforce their rights in Thailand through the various avenues available. If SMEs manage to build a reputation for ‘being litigious’ then unscrupulous companies will be less likely to infringe their rights in the future.
In the case IP infringement in Thailand, there are three main avenues of enforcement that SMEs can consider, which include: administrative actions, civil litigation and criminal prosecution. However, administrative actions and civil litigation can be ineffective or costly and criminal proceedings are oftentimes preferred. In many cases, however, mediation via the Thai Department of Intellectual Property should be considered as a viable option, particularly for SMEs facing budget constraints.
South-East Asia IPR SME Helpdesk
The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (email@example.com) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.
The South-East Asia IPR SME Helpdesk is co-funded by the European Union.
To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.