Trade marks are essential for brands relying on the reputation and goodwill they have built with their clients and customers and should be afforded comprehensive protection, ideally before market entry. This article provides SMEs with a background to Thai trade mark law, as well as the registration and enforcement procedures available in the country.
As always, if you’d like more information on how to protect and enforce your trade marks in Thailand, check out our in depth IPR factsheet, or get in touch with our Helpdesk experts for free, in-depth advice!
What are trade marks?
A trade mark is a sign, used in trade to distinguish the goods and services of one trader from those of another. Trade marks can take the form of pictures, names, words, letters, figures, a composition of colours, or a combination of these elements. Whilst the primary function of a trade mark is as a badge of origin, they can also, as a result of consistently good products or services gain status as an indicator of quality, or through advertising become a status symbol symbolising a certain quality of life or style.
Registration of a trade mark provides the rights holder with an exclusive right to exploit that mark within the geographic territory in which it has been registered, whether this be for direct commercial use, or licensing activities etc.
Trade marks in Thailand
Along with the regular styles of trade mark mentioned in the previous section, it is also possible to register three-dimensional signs as trade marks in Thailand. However, this is a relatively new development and very few applications have actually been accepted for registration at time of writing.
Thailand is a party to the Paris Convention for the Protection of Industrial Property, and as such applicants who have filed for trade marks in other party states may claim a right of priority if applying in Thailand within 6 months of this original application. Where the applicant cannot claim priority, it is important to apply before market entry as Thailand operates a strict ‘first-to-file’ system and there are still widespread issues of ‘bad faith’ registrations and ‘trade mark squatting’.
There are amendments in progress which will alter the Trademark Act to allow for recognition of sound and scent marks. This new draft also suggests changes to streamline the examination procedure, and a revision of the current fee structure. Other amendments in this draft include:
- Thailand’s compliance with the Madrid Protocol by 2015
- Allowance for multiple-class applications
- Introduction of a six-month expiry grace period for trade mark renewals
- Shortening the maximum number of days for oppositions and responses to official actions from 90 days to 60 days
- Increased government fees
- Ensuring that trade marks provide protection against ‘refilling’ practices
The registration process for trade marks in Thailand typically takes between 12 and 18 months. Once registered, trade mark protection lasts for 10 years from the filing date, or the priority date where this has been claimed. Trade marks can be extended indefinitely for consecutive 10 year periods, subject to the timely application for renewals.
Registering a trade mark in Thailand
Any individual or corporation can file a trade mark registration in Thailand, either through a local qualified trade mark agency or by themselves where their domicile/head office is in Thailand, or they have real business operations/dealings in Thailand. All application forms and required documents must be submitted in Thai, or accompanied by a Thai translation.
At present, official fees are calculated per product/service designated, and not by ‘class’ (i.e. the product categories or industry sectors in which applicants choose to register). Currently these fees amount to approximately EUR 12 per product/service at time of filing, with a further EUR 7 payable at time of registration. The fee structure is under review however so SMEs are advised to visit the Department of Intellectual Property’s (DIP) website for more information on fees.
Applications can be submitted either to the DIP at the Ministry of Commerce, or through the online registration system found on the DIP website. The documents and information required are as follows:
- 1 electronc sample of the mark in black and white, or in colour (max 5cmx5cm)
- Full name, address, country, and occupation of the applicant
- Description of the services and goods to be designated
- Notarized power of attorney, where the application is made through an agent
- Country, date, and number of the priority trade mark application, where claiming ‘right of priority’
- Certified copy of the priority application and translation into Thai, where claiming ‘right of priority’
- Date of first use of trade mark (if any at time of application)
Once the application is submitted, the registrar will send a letter to notify the applicant of the result of the examination within 12-18 months. Once the mark has been accepted by the registrar, it will be published for a 90 day period for third party opposition. If no opposition is submitted in this time, the mark proceeds to registration and the certificate of registration is issued.
There are three main avenues for IP enforcement available in China, as well as a system of customs control which we will discuss in more detail in a future Helpdesk article. In many cases however, private mediation via legal professionals can be an effective first line of defence and should be considered as a viable option. In the event of infringement SMEs are encouraged to seek advice and support from legal professionals as to the current domestic administrative/judicial policy and the chances of success of different actions. SMEs are of course also welcome to contact the Helpdesk for free advice on how best to react to infringements and find the right lawyer to deal with your case.
Due to a lack of resources and proper training in administrative enforcement agencies, coupled with weak punishments imposed on confirmed infringers, administrative measures are generally seen to be ineffective in Thailand. The system also suffers from leaks and corruption which undermines raid actions and investigative procedures.
This being said, the Thai government has committed to improve its administrative enforcement agencies with a focus on large-scale infringers and dangerous goods, primarily in ‘priority areas’, such as MBK and Panthip Plaza in Bangkok, Patong, Kata, and Karon beaches in Phuket, Walking Street in Pattaya, etc. As yet it is unclear where exactly improvements will be made and how this will affect the system as a whole however.
Civil litigation is rarely used for IP cases in Thailand due to difficulties in proving ‘actual damages’, the lack of a formal discovery process, and the delays common in prosecuting cases. In addition, the Thai judiciary is still inexperienced in dealing with IP issues and case outcomes can be unpredictable.
Civil courts can in theory grant injunctions and awards of damages, however, difficulties in proving ‘emergency’ make injunctions rare and damages are still very low by international standards, often not covering the costs of bringing the action to court in the first place.
Criminal prosecution is generally considered to be the most cost-effective enforcement mechanism available to IP rights holders in Thailand. However, search warrants are difficult to obtain and, as with administrative actions, leaks and corruption in the police force can render them fruitless.
The Thai judiciary has also been reluctant to impose harsh penalties on infringers, and as such there is little deterrent provided by even high profile criminal actions. Penalties for trade mark infringement for example can include a maximum fine of approximately EUR 10,000 and/or a prison sentence of up to 4 years. Fines rarely reach the maximum threshold however, and most sentences are reduced or suspended, especially for first-time offenders.
For more information on how to protect and enforce your trade marks in Thailand, check out our in depth IPR factsheet, or get in touch with our Helpdesk experts for free, in-depth advice, tailored to the needs of your business.