TRADEMARK MATTERS IN THAILAND. Trademark Act (No.3) B.E (Become into effect since July 28, 2016)

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1 TRADEMARK MATTERS IN THAILAND LEGISLATION: Trademark Act (No.3) B.E (Become into effect since July 28, 2016) Marks Eligible for Registration: Trademark is a distinctive sign used in distinguishing the goods of one proprietor from the goods of another proprietor. Trademark includes photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combinations of colors, figurative element, sound or combination thereof. In addition to the other non-traditional marks, i.e., three dimensional marks and combination of colors, the current Trademark Act extended the scope of protection to sound marks. However, other non-traditional marks, such as scent, smell or taste, still cannot be registered. Marks eligible for registration in Thailand are in four categories, namely, Trademark Service Mark Certification Mark Collective Mark The provision concerning trademarks shall apply to service marks and certification marks; and the provisions concerning trademarks, except those in provisions concerning trademark licensing, shall apply to collective marks mutatis mutandis. Trademark shall mean Service Mark and the word goods shall mean services. Qualification for Registration of Mark: To be qualified for registration, a trademark must be: 1) Inherent distinctive; 2) Not identical with or confusingly similar to other person s registered trademark; and 3) Not prohibited or consist of any prohibitory characteristic, namely, being confusingly similar to other person s well-known trademarks, being or containing national flags, national emblems, emblems of Red Cross, geographical indications, for instance. Distinctiveness through uses: It may be possible for a trademark which otherwise is not distinctive to be deemed distinctive if the goods bearing the mark are substantially distributed or extensively advertised. Multi-class application and Series-mark application: Thailand now adopts multi-class application. An application may cover one trademark for the goods of different classes. Series-mark application, however, is not applicable. Kasame & Associate

2 Page 2 Classification of goods/services: Thailand adopts International Classification of Goods and Services under NICE Agreement for classification purposes. However, the descriptions of goods or services to be designated in the application must be clearly specified on an item-by-item basis. This is prescribed by the Trademark Act. Neither broad descriptions of goods nor class headings would be acceptable. Search: To determine the availability for registration, a search can be conducted at the Trademark Office or online database. Filing requirements: In filing an application for registration of trademark, the following documents and information are required: 1) Applicant s name, address and nationality 2) A specific list of goods to be designated in the application. 3) Sample of trademark (not more than 5x5 cm or otherwise additional fee must be paid). 4) An executed Power of Attorney (for the application to be filed by a representative). 5) For the foreign applicant, the executed Power of Attorney needs notarization by Notary Public. Legalization is not necessary. ** 6) If the mark contains non-english words, English translation as well as pronunciation of the mark is required. 7) Priority documents (if any). ** The Notary Public is required to certify that 1) the signature is genuine and 2) in case the applicant is a legal entity, it is also required to certify that 2.1) the applicant is a juristic person and 2.2) the signatory person has authority to sign on behalf of the applicant. The Power of Attorney must be submitted along with the application. One general Power of Attorney is sufficient for any numbers of applications filed at the same time or later. Conventional Priority: In case where the application was filed aboard, it is possible for the applicant to claim the priority of the basic application provided that the application filed in Thailand within 6 months as from the first trademark application filing date. For claiming the rights of priority, the following documents are required: a) A certified true copy of trademark application as first filed in foreign country issued by the relevant authority. b) An affidavit ratifying that the foreign application has never been refused for registration, nor has been revoked or abandoned by the applicant. In case that the priority documents cannot be submitted along with the application, an extension of time for 60 days can be applied for.

3 Page 3 Language: Application and all requisite documents must be filed and submitted in Thai language or translated into Thai. In case of the document made in other language than English, please provide us with an English translation of the documents. Use or Intention-to-Use Requirement: Use of mark is not a pre-requisite for filing and it is not compulsory to state as to whether the mark has been used before filing or not. Besides, there is no system for submission of proof of use or non-use, either to maintain the registration or to avoid the cancellation. Term of Protection and Renewal: The term of protection is 10 years from the registration date. The date of filing is deemed the registration date. The registration may be renewed in each period of 10 years by filing a renewal application within 3 months prior to the expiry date with a grace period of time for late filing of 6 months. Registration of the ground of honest concurrent use (co-existence): Theoretically, if, in the Trademark Registrar s view, there have been honest concurrent users under special circumstances, the Trademark Registrar may allow the registration by more than one owner of a trademark which is identical with or similar to a registered trademark in respect of goods of the same class of goods of a different class but found by the Registrar to be of the same character subject to such conditions and limitations as to the mode or place of user or such other conditions and limitations as the Registrar may think fit to impose. Chance of registration under the ground of honest concurrent use depends on whether we can sufficiently prove that the mark has been honestly and concurrently used in Thailand. It would be helpful if the mark has already been used in Thailand. Nevertheless, it is quite hard to be successful. Procedure and Time Frame to Registration: I) Prosecution of Trademark (Smooth Cases): After filing application, it would take approximately 6 to 8 months before the Trademark Registrar would examine the application. The Trademark Registrar would check the formality and then examine as to whether the trademark is distinctive enough to acquire registration, as to whether the trademark is similar to prior registered trademark and as to whether the trademark is contradicting to the provision for registration or not. As a result of examination, if there is no official instruction, the application shall be published in the official Trademark Gazette for opposition for 60 days. (When there is official instruction, please refer to II.) If no opposition is lodged, the application shall be mature to registration, i.e., the official notice for payment of registration fee shall be issued within a couple of weeks for the applicant to pay the registration fee within 60 days. Then, the certificate of registration will be issued to the applicant. (When there is an opposition, please refer to III.)

4 Page 4 For smooth cases, it normally takes approximately one year from the application filing date to obtain a registration certificate II) Prosecution of Trademark (When there is official instruction) If there is an instruction, such as amendment of description of goods or disclaimer of non-distinctive element, etc., the applicant has to file a response to comply with the instruction or to appeal against the instruction to the Trademark Board within 60 days from the receiving date of the instruction notice. Failure of filing a response or an appeal by the prescribed date, the application shall be automatically dismissed. If there is an objection, e.g. on the grounds of similarity, non-distinctiveness, prohibited trademark, and the ground related to the local circumstances, the applicant has rights to file an appeal against the objection with the Trademark Board within 60 days from the receiving date of the objection notice. Failure of filing an appeal by the prescribed date, the application shall be automatically dismissed. It takes approximately 1.5 to 2 years before the Trademark Board s decision is passed. If there is no further instruction or the applicant complies with the instruction, or the Trademark Board dismisses the objection, the application shall be published in the official Trademark Gazette for opposition for 60 days. III) Prosecution of Trademark (When there is an opposition) Appeal: If an opposition is lodged, the applicant is entitled to file a counter-statement to the Trademark Registrar within 60 days from the receiving date of the opposition notice. Failure of filing a counter-statement within the prescribed date, the application shall be dismissed automatically. If the applicant files a counter-statement, it would take about 8 to 12 months before the Trademark Registrar s decision would be rendered. Any party who dissatisfies with the decision is entitled to file an appeal with the Trademark Board within 60 days from the receiving date of the decision from the Trademark Registrar. It would take around 1.5 to 2 years before the Trademark Board s decision is passed. Any party who does not agree with the decision is entitled to file a complaint with the Court within 90 days from the date of receipt of the decision. If the Trademark Registrar, the Trademark Board or the Court insists the registration, meaning the application is finally approved, the application shall be mature to registration, i.e., the official notice for payment of registration fee shall be issued within a couple of weeks for the applicant to pay the registration fee within 60 days. Then, the certificate of registration will be issued to the applicant. In case where the applicant does not agree with the Trademark Registrar s instruction, the applicant is entitled to appeal to the Trademark Board within 60 days from the date of receipt of the official notice of instruction. It would take about 1.5 to 2 years before the Trademark Board would render their decision.

5 Page 5 The Trademark Board s decision is final at the administrative stage. Nevertheless, it is possible to file a case before the I.P. Court if the applicant does not agree with the decision. The Court has more liberal mind in granting registration of trademarks. We have experienced that the Court has trended to grant registration rather than denial. The Court procedure will take about 12 months to know the result. There is no deadline to file appeal to the Court. It, however, should be filed without delay. Opposition: After the application has been examined and approved for registration, the application shall be published in the official Trademark Gazette for 60 days. Within the publication period, any interested party may file an opposition with the Trademark Registrar on the following grounds: 1) The opponent has a better title to a trademark than the applicant does. 2) The trademark is not registrable under Section 6 of the Trademark Act, namely, 2.1) The mark is not distinctive. 2.2) The mark is identical with or confusingly similar to prior registered mark. 2.3) The mark is a prohibited mark (e.g. identical with or confusingly similar to wellknown mark). 3) The trademark is contradictory to the registration provision. Assignment of Trademark Application / Registration: It is possible to assign either registered trademark or pending trademark application and record the assignment at the Trademark Office. The assignment or transfer by succession of a registered trademark shall be registered with the Trademark Registrar. The assignment of the right to an application shall be notified to the Trademark Registrar prior to registration by the assignor or assignee. Under the current Trademark Act, partial assignment is possible. There is no longer need for trademarks to be assigned or transferred altogether. Trademarks may be assigned or transferred for all or some of the goods for which the trademark is registered. Trademark Licensing: The owner of a registered trademark may license other person to use the trademark for all or some of the goods for which the trademark is registered. Trademark licensing agreements must be made in writing and registered with the Trademark Registrar. Applications to register a licensing agreement shall comply with the rules and procedures prescribed in the Ministerial Regulations and shall show at least the following particulars: 1) Conditions or terms between the trademark owner and licensee to insure effective control by the registered owner of the trademark over the quality of the goods of the licensee; and 2) The goods for which the trademark is to be used.

6 Page 6 The use of the trademark by the registered licensee shall be deemed the use by the registered owner. Registration of Certification Mark: To obtain a certification mark registration, apart from the necessary documents for registration of trademark in general, the followings shall also be required: - 1) It is required to submit the regulations concerning the uses of the certification mark along with the application. The regulations concerning the uses of the certification mark must indicate the followings: - 1.1) The origin, composition, production method or manufacturing method, quality or other characteristics of the goods or services to be certified; and 1.2) The rules, procedures and conditions for authorizing uses of the certification mark. 2) It is required to demonstrate that the applicant has an ability to certify the characteristics of the goods or services as provided in the regulations or to demonstrate that the applicant is well qualified to certify the merits of the goods or services. Cancellation or Invalidation of a Registered Trademark: After the trademark is granted registration, it may be possible for the trademark registration be revoked or cancelled. Cancellation or invalidation of a registered trademark may be challenged on the following grounds: a) Cancellation or Invalidation by the Trademark Board: Cancellation on the ground that the mark was not qualified for registration: An interested person or the Trademark Registrar may petition the Trademark Board to order a cancellation of any trademark if it appears that, at the time of registration, the trademark was not qualified for registration, for any of the following reasons: a) It was not distinctive b) It was identical with other person s registered trademark c) It was similar to other person s registered trademark that might cause confusion or misunderstanding d) It contained or consisted of a prohibitory characteristic, e.g., it was same as or confusingly similar to well-known trademark Any person may also petition the Trademark Board to cancel the trademark registration if the mark is contrary to public order, good moral or public policy. Cancellation on the ground of non-use: Any interested person or the Trademark Registrar may petition the Trademark Board to order a cancellation of trademark registration on the ground of non-use basis if it is

7 Page 7 proved that, during the three years prior to the request for cancellation, there was no bona fide uses of trademark for the goods for which it was registered unless the owner can prove that such non-use was due to special circumstances in the trade. If although a cancellation is filed, the registered owner has right to prove the uses or special circumstances preventing him from actual uses. There is no system for submission of proof of use or non-use, either to maintain the registration or to avoid the cancellation. Based on our experience, the Trademark Board would not easily revoke registration of trademark basing on the ground of non-use. The registered owner is entitled to submit a reply to the Trademark Board explaining the special circumstances as mentioned above. In other words, it is possible for the registered owner to prove that such non-use was due to special circumstances in trade. There are no criteria for such proof. According to the precedent Trademark Board s decisions, there were very rare cancellation cases which have been successful. The Trademark Board rather cancels trademark registration only when it is apparent to the Trademark Board that there was no use and the owner has no intention to use such registered trademark. b) Cancellation or Invalidation by the Court (The Central Intellectual Property and International Trade Court or IP&IT Court ): Cancellation on the ground that the trademark had become common to trade: Any interested person or the Trademark Registrar may petition the Court to cancel a registered trademark by showing that, at the time of filing the legal action, the trademark had become common to the trade for certain kinds or classes of goods to the extent that to the trade or in the public eye the trademark had lost its meaning as a trademark. Cancellation on the ground of better title: The possible way to have the registered mark revoked on the ground of better title is to lodge a complaint with the Court. Within 5 years from the date of the Trademark Registrar s order to register a trademark, an interested person may petition the Court to cancel the registration upon showing that he has better title than the registered owner. Rights Conferred to the Registered Owner: The registered owner shall have the exclusive right to use the registered trademark for the goods for which it is registered and is entitled to initiate legal action preventing or recovering damages from the infringers.

8 Page 8 Punishable Offences: The current Trademark Act also stipulates criminal provisions punishing violators against the trademark registered in Thailand. The offences and penalties under the Trademark Act against the infringers are as follows: - Any person counterfeits other person s trademark registered in the Kingdom or sells, possesses for sale, imports into the Kingdom of goods bearing counterfeit trademark shall be punished up to 4 years imprisonment or up to Baht400,000 fine or both; - Any person imitates other person s trademark registered in the Kingdom in order to cause confusion or sells, possesses for sale, imports into the Kingdom of goods bearing imitate trademark shall be punished up to 2 years imprisonment or up to Baht200,000 fine or both. - Any unauthorized refilling of a genuine packages or containers bearing a registered trademark of other person in order to mislead the public into believing that the goods are of such other person shall be liable to imprisonment up to four years or a fine up to Baht400,000 or both. - Any unauthorized refilling of a genuine packages or containers bearing a registered trademark of other person in order to mislead the public into believing that the goods are of such other person shall be liable to imprisonment up to four years or a fine up to Baht400,000 or both. Madrid Protocol: On August 7, 2017, the Government of Thailand deposited its instrument of accession to the Madrid Protocol and enters into force as from November 7, ****************************

9 Page 9 Thailand - Trademark Registration Flow Chart Filing Application Examination Official notice Compliance with the instruction (within 60 days) Appeal to the Trademark Board (within 60 days) Publication for opposition For 60 days Overturn by Trademark Board Dismissed by Trademark Board Appeal to Court Opposition to Trademark Registrar within 60 days Counter-statement to Trademark Registrar within 60 days Trademark Registrar s decision Appeal to the Trademark Board (within 60 days) Registrar s order for Payment of Registration fee (within 60 days) Trademark Board s decision Certificate granted Appeal to Court (within 90 says) Court s Judgment