THAILAND TRADEMARK NOW. (An in-depth walkthrough in an FAQ format of everything Trademark Thailand) Chapter 1: Filing the Thai Trademark Application – Basic Overview of the Thai Trademark Registration System

 Thailand Intellectual Property – Trademarks

Basic Overview of Thailand’s Trademark Registration System 

(THAILAND TRADEMARK NOW FAQ Chapter 1)

FILING THE THAI TRADEMARK APPLICATION

1.    Can my Mark / Trademark / Logo / Brandname be registered as a Trademark in Thailand?

What can be registered as a Trademark in Thailand?

1.1    Prerequisites:

    • must be distinctive;
    • not be prohibited under this Act; and
    • not be identical or confusingly similar to another registered Trademark.

1.2    What?

    • Section 7(1) TA 1991
    • Trademarks, Collective Marks, Certification Marks, Service Marks
    • May include 3D Designs, Photographs, Paintings, Device, Design, Words, Letters, Numerals, Phrases, Configurations of Goods, Unique Color Combinations

1.3     Must not include (inter alia):

    • national insignia; national flags; royal insignia; royal representation; medical emblems; contrary to public policy; national emblems and flags of foreign states, international organizations; geographical indications; other Trademarks prescribed by the Ministerial Notifications

2.    Which class of goods or services does my product fall under?

What are the classes of goods and services?

  • The classification of goods and services in Thailand adheres to the International Classification System (Nice Agreement, 9th Edition). The list is annexed hereto as “Schedule A”.
  • The specification of goods or services must be specifically itemized in the application. Should the goods or services be too broadly specified, the Registrar may require further details and amendments.

3.    Must I register my Trademark to use it in Thailand?

Are Trademarks required to be registered in Thailand? Does my brandname have to be registered? Can I use my Mark without registering it?

          No. However, it is strongly advised.

4.    Are multi-class applications available in Thailand?

 Is there a route for a single application to cover various classes of goods?

No.   Separate applications are required for each class and no single application can be filed for multiple classes.

5.    What is a Trademark search?

What are Trademark or potential conflict mark searches?

A Trademark search is a search of the Trademark Register to ascertain whether there is any identical or confusingly similar Trademarks in all classes which applications have been pending or which have been previously registered.

6.    Where and how can I conduct a Trademark search?

Where do I go to conduct a Trademark search? How is the Trademark search available? Can I perform / conduct a Trademark search by myself?

6.1     The Trademark search may be conducted in various forms:

    • Official Publication
    • Computerized Datum
    • Microfiche
    • Word Marks and Graphic Marks

6.2     The Trademark search may be conducted vide:

6.3     The language used for Trademark search is Thai

6.4     There is an hourly official fee imposed by the DIP to conduct the search

6.5      Trademark searches may be conducted by the Applicant but it is strongly advisable to seek the assistance of a professional

6.6      Trade Name searches instead must be conducted at the Ministry of Commerce or via its Department of Business Development (DBD) website at www.dbd.go.th

7.   Is a Trademark search necessary for the registration of a Trademark?

Must I perform a Trademark search before applying for registration of my mark? Is a Trademark search required / mandatory? Can I perform

No. However, it is prudent practice to avoid unnecessary cost, delay, objections, etc. It is strongly advised that Applicants perform a search prior to filing an application to avoid potential conflicts with former registered marks and possibly ultimately prevent the Applicant’s application.

8.    What documents / information do I need to provide to file an application for registration of a Trademark in Thailand?

What are the filing requirements for a Trademark application in Thailand?

8.1     What particulars of the Applicant do I need to provide for an individual applicant?

  What are the individual Applicant’s particulars required?

    • Name
    • Citizenship
    • Nature of business
    • Address

8.2    What particulars of the Applicant do I need to provide for an Applicant which is a corporate entity?

What are the corporate entity’s particulars required?

    • Name
    • Type of entity
    • Registered address
    • Nature of business
    • Country of incorporation
    • State of incorporation (for US Corporation)

8.3    What illustrations of the mark do I need to provide?

What sample / specimens of the mark is required?

    • Clear sample(s) of Trademark
    • Electronic form: TIFF, JPEG, other generally accepted forms
    • Physical form
    • Word mark: Typeface to be specified
    • Black & White mark:  5 copies to be provided
    • Colored mark: Provide 30 copies to be provided
    • Stylized and Device mark: 15 copies to be provided
    • 3D Shape mark: Technical drawings of relevant perspective elevation views to be provided

8.4    What particulars of the mark am I required to furnish?

What details of the mark do I need to provide?

    • Goods / Services need to be precisely described and specifically itemized
    • International Class(es) where they fall within must be specified

8.5    What additional documents do I need to supply in respect of a Priority Claim based on an application in a foreign country?

What are the additional documents required for if I am claiming priority based on an application in a foreign country?

    • CTC of Priority Application (within 90 days of filing of Application): If in a language other than English, a Verified English translation need to be supplemented
    • Statement of Priority Claim: which is a declaration from the Applicant certifying that the basis application has neither been rejected nor withdrawn
    • Priority of Particulars: date, application number, country of filing
    • Mark must be identical to the mark where priority is based on
    • An official notification issued by the chief of the foreign Trademark office indicating that the jurisdiction of first filing grants the same rights of priority to Thai Applicants filing applications in that country, i.e. a Reciprocal Agreement (note that member countries of the WTO and the Paris Convention are exempt from this requirement)

8.6    What documents are to accompany a Trademark application in Thailand?

 What are the forms required to be submitted along with an application?

 i) Notarized POA (note that the Application may be filed first and extensions of time granted for this to follow)

8.61 Must the POA be original?

Is the original POA required to file a Trademark application in Thailand?

A copy notarized as a CTC is sufficient.

8.62 What in the POA has to be notarized?

What are the requirements for notarization in respect of the POA for a Trademark application in Thailand?

All signatures and every page needs to be notarized.

8.63 What form of the POA is required for multiple / future Trademark applications in Thailand?

Are copies sufficient for multiple/future applications?

One POA (original / copy notarized as a CTC) form is sufficient for multiple and future applications.

8.64 Must the POA be legalized?

Is there a requirement for legalization of the POA for Trademark applications in Thailand?

No.

          ii) Copy of Certificate of Registration (if any)

9.    Are there any other specific requirements for application to register a Certification Mark?

 Are there special requirements to register a Certification Mark? How to register a Certification Mark in Thailand?

 Apart from the normal requirements, the following are required:

The Applicant must submit regulations concerning the uses of the Certification Mark along with the application. These regulations must indicate the following:

    • The origin, composition, production method or manufacturing method, quality or other characteristics of the goods or services to be certified; and
    • The rules, procedures and conditions for authorizing uses of the Certification Mark.
    • The Applicant must also demonstrate that the Applicant does in fact have the ability to certify the characteristics of the goods or services as provided in these regulations or to demonstrate that the Applicant is well qualified to certify the merits of the goods or services.

10.  Must there be use of the mark before Application?

 Is it compulsory to file a Declaration of Use? Does the mark have to be used previously to be able to be registered in Thailand?

No. However, submission of Evidence of Use or Proof of Use may be submitted together with the Application or within 30 days of the filing for the purpose of establishing ‘distinctiveness’ under Section 7(2) TA. This is not normally done until an OA is issued or an Opposition is received.

11. Must I register my mark in different colors if I intend to use it likewise?

Must I file separate  Trademark applications if I wish to use my mark in different colors in Thailand?

No. Where a Trademark is registered without limitation of color, it is deemed to be registered for all colors. – Section 45 TA 1991.

12. Where do I apply for the registration of Trademarks?

 Where do I file an application for registration?

  • DIP
  • By registered mail with payment of fee by money order to the DIP
  • Online at www.ipthailand.go.th, thereafter a hard copy of the Application form must be submitted to the DIP within 15 days of the online filing

13. Can I file the Trademark application myself? Can I file the application if I am not in Thailand?

Who is allowed to file an application for registration of a Trademark in Thailand?

Yes. However, note:

  • The Applicant or his agent needs to have a fixed place of business or a contact address in Thailand
  • Non-resident Applicants can only register a Trademark by appointing an Agent who is a Thai resident and granting him/her a POA
  • The Application needs to be done locally
  • The language of prosecution is Thai

14. What is the procedure/process involved in filing a Trademark application in Thailand?

         What is the procedure to file a Trademark Application?

Please see the flowchart annexed hereto as “Schedule B”

15. What does the ‘examination’ stage in a Trademark application in Thailand entail?

What is the function of the Registrar during the examination?

The registrar will examine the Trademark application to determine:

  • whether the Application is in compliance with the formalities
  • whether the mark is identical or confusingly similar to any prior registered Trademark

16. What is the usual timeline for this ‘examination’ stage?

How long does the examination stage take in Thailand? How long will it take for it to commence?

Generally:

  • It takes 4 – 7 months from the date of filing till the commencement of the examination stage
  • The ‘examination’ stage normally takes 2 – 4 months
  • All in all, it generally may take 6 – 11 months before an Office Action or a request to pay the Publication fee is received, but sometime it can take up to 18 months

17. What is an Office Action? How do I deal with an Office Action issued upon my Thai Trademark Application?

What essentially is an Office Action?

  • The term ‘Office Action’ generally is used for an official notice issued by the DIP
  • Office Actions are generally either instructions or objections
  • The correct method of responding to an Office Action is by submitting a formal reply, adhering or responding to the instruction or objections, e.g. amending the Application if there are instructions or objections, amending the Application if there are instructions as to mere formalities or replying to an Office Action stating that the mark is descriptive, filing a disclaimer statement where instructed, and so forth
  • A Final Office Action is effectively and commonly known as a Filing Refusal

18. When are Office Actions Final Office Actions or Filing Refusals?

When can you no longer ‘respond’ to your Office Action? Has my Trademark registration been rejected?

Final Office Actions / Filing Refusals are incurred when (inter alia):

  • The Registrar decides that you have made too many attempts or have exhausted your options and no longer states that you have an option to amend / fix it in the Office Action
  • The Registrar cites another Mark against yours
  • There is an inherent defect in your application and the Registrar does not state that you have an option to amend / correct the defect

However, do note that if there is a genuine error in the Registrar’s decision, such Final Office Actions / Filing Refusals may be withdrawn in the Registrar’s own discretion. In Thailand, continuous, professional liasion with the Department of Intellectual Property is strongly advised for smooth sailing of Trademark Applications.

19. What is the typical Office Action issued in Trademark applications in Thailand?

What is the Office Action commonly issued by the DIP?

  • That the formalities have not been adhered to, the Application is not in order
  • That the mark being applied for is descriptive (of the nature and quality of the goods/services)
  • That the classification of goods / services is erroneous
  • That the mark being applied for is identical or confusingly similar with a prior registered mark

20. What is the deadline to reply / respond to an Office Action and is this deadline extendable?

What is the given time frame to reply / respond to an Office Action? What is the timeline to adhere / comply with the Registrar’s instructions / objections?

The time frame varies according to the type of Office Action; generally:

  • Office Action regarding the amendment of specification of goods, instructions to file disclaimer statements, instructions to file mark association applications = 90 days
  • Office Action concerning the submission of Evidence of Use = 60 days

These deadlines are non-extendable

21. Can I Appeal against a filing refusal or objection by the Department of Intellectual Property in Thailand?

What is the Appeal process against a filing refusal or objection by the DIP?

  • An Appeal from the DIP has to be taken to the Trademark Board within 90 (ninety) days
  • On Appeal, the Board will decide whether to overturn the DIP’s decision or dismiss the Appeal
  • It will take about 12 (twelve) months for the Trademark Board to deliver its decision
  • The decision of the Trademark Board is ‘final’ – Section 18 TA 1991
  • However, an ‘Appeal’ lies with the CIPITC where the Board’s decision is ‘unlawful’ or ‘illegitimate’ – Case No. (Red) IP 106/2546; Societe BIC v Department of Intellectual Property (Supreme Court Case No Tor Por 38-41/2547)
  • Subsequenty, the Applicant may Appeal against the CIPITC’s unfavorable decision to the Supreme (Deeka) Court

22. Where is the mark published?

What does the publication stage for a Trademark application in Thailand entail?

Upon approval by the Registrar, the Mark is published in the Thai Trademark Gazette for a period of 90 (ninety) days.

23. How do I lodge an opposition?

How can I oppose the registration of a Mark?

During the publication stage, an Opposition can be lodged with the Trademark Registrar, i.e. filing a Notice of Opposition stating one or more of the following grounds reproduced below.

24. Am I entitled to oppose? What are the grounds for Opposition?

Will my Opposition be considered? Are my reasons for Opposition valid?

An Opposition can be lodged by ‘any person’s – Section 35 TA 1991, although in the DIP guidelines and general IP literature there seems to be a qualification on who is ‘interested’. It is submitted then that any person who is merely ‘remotely affected’ satisfies this qualification. In any event, it is doubtful that a Registrar would ignore a legitimate objection merely on this ground as if indeed the mark should not be registered on the provided grounds (except perhaps ‘better title’), for it is the Registrar’s oversight and the Opposition should be allowed. Hence, it is my opinion that an Opposition can be lodged by any person, so long as the Opposition is not merely fanciful or frivolous.

25. What are the grounds for Opposition?

Which grounds are normally invoked for an Opposition against a Trademark application in Thailand?

  • An opponent has a better title to a Trademark than the Applicant does
  • The Trademark is not registrable under Section 6 TA, namely:
    • It is not distinctive
    • It is a prohibited mark (e.g. identical with or confusingly similar to a well-known mark)
    • It is identical with or confusingly similar to a prior registered mark
    • The Trademark is contradictory to any registrability requirements

26. What are the common grounds for opposition?

Which grounds are normally invoked in lodging an Opposition against a Trademark application in Thailand?

The grounds commonly used by opponents are:

  • The published mark is identical or confusingly similar to their marks
  • The published mark does not fulfill the registrability requirements

27. Can the ‘owner’ of a Trademark which is not registered in Thailand file an Opposition against a similar Trademark Application in Thailand?

Can the ‘owner’ of an unregistered Trademark file an Opposition against a similar Trademark Application?

Yes, such ‘owner’ is entitled to do so on the following grounds:

  • He has a better title to the Trademark than the Applicant
  • The Trademark is not registrable, as in it is not distinctive, prohibited, identical to a well-known mark, similar or identical with a prior registered mark

27. What is the Opposition process/procedure like?

What happens after I file an Opposition? What happens after an Opposition is filed against my Trademark application in Thailand?

  • After the Opposition is lodged, the Trademark Registrar shall send a Notice of Opposition to the Applicant
  • Evidence supporting the Opposition must be submitted along with it (at the time of filing). However, an extension of 30 (thirty) days from the date of filing may be granted, whereupon another extension of 30 (thirty) days may be granted (0 + 30 + 30 days)
  • The Applicant is entitled to file a Counter Statement thereto, defending/arguing against the Opposition. This counter-statement has to be filed with the Trademark Registrar within 90 (ninety) days from the receipt date of the Notice of Opposition
  • Failure of the Applicant to file this counter-statement will cause his Trademark application to be automatically dismissed
  • Upon receipt of the Applicant’s counter-statement, the Trademark Registrar will take approximately 8 – 12 (eight – twelve) months to render his/her decision
  • The Registrar will normally dismiss the Opposition or the Application, or odirect that amendments be made to the Application

28. I have failed to file my Opposition within time, can I seek an extension?

Is the Opposition period for filing an Opposition against a Thai Trademark application extendable?

No.

29. Is the decision of the Trademark Registrar in determining the Opposition final?

Can I Appeal against an unfavorable Registrar’s decision after an Opposition?

  • Any party who diasgrees with the Trademark Registrar’s decision may file an appeal with the Trademark Board within 90 (ninety) days
  • It generally takes around 12 (twelve) months for the Trademark Board/Committee to adjudicate and rule on the Appeal
  • Thereupon, any party who disagrees with the Trademark Board/Committee’s decision may file a complaint with the CIPITC within 90 (ninety) days from receipt of the said unfavorable decision
  • If the CIPITC’s decision is unfavorable, an Appeal thereupon can still be taken to the Supreme (Dika) Court whose decision is final

30. Does the Thailand Trademark system give priority to the first-to-file or the first-to-use?

Does Thailand practice the first to file or first to use system in respect of Trademarks?

First to file.

31. Since the Thailand Trademark system gives priority to the first-to-file, what can I do if another person first registers the Trademark that I have been using?

What is the aggrieved first user of a Mark’s recourse in Thailand’s Trademark Law?

  • Filing an Opposition claiming better right, the mark is unregistrable because it is identical or confusingly similar to their mark, etc.
  • Petition to the CIPITC a Cancellation Action claiming a better right (within 5 (five) years) to the Trademark – Section 67 TA 1991
  • Filing a Cancellation Action claiming that the mark is identical or very similar to a well-known mark – Section 61(2) and Section 8(10) TA 1991, etc.
  • Filing a Cancellation Action for Non-Use – Section 63 TA 1991
  • Common-law ‘Passing Off’ – Section 46 TA 1991

32. What is the evidentiary threshold required of Evidence / Proof of Use?

How much Evidence of Use is needed to satisfy Section 7(2) TA 1991?

  • The threshold required for Evidence of Use is relatively high:
  • Voluminous evidence showing long-term, consistent use of the mark is required
  • If the Applicant wishes to show use of the mark vide advertisements and publications, these have to have been made consistently through-out the long period of use
  • The Courts have opined that the minimum period of use should be 2 (two) years. Nonetheless, Applicants are advised to submit evidence showing the use of their marks for a period of 5 (five) years and above to increase the chance of cloaking the mark with Section 7(2) ‘distinctiveness’ – “JobsDB” Case, Supreme Court Decision 5403/2551
  • Further, the Evidence of Use submitted must show usage of the mark in the exact same manner of style, shape, form and content that has been applied for registration. If this is not so, the Courts may be reluctant to grant monopoly rights to the mark even where evidence makes it obvious that a variation of the mark has been used for a very long term – Evidence of Use of a variation of the mark for 50 years was held to be insufficient in the “Maggi” Case, Supreme Court Decision 2044/2552

33. How long does a Trademark registration last in Thailand?

What is the validity period of a Trademark registration?

10 years from the date of filing (deemed as registration date – Section 42 TA 1991)

34. What are the effects of Trademark Registration?

What rights does Trademark Registration confer upon the owner?

Legal Ownership:  The exclusive right to use the mark for the registered goods or services – Section 44 TA 1991

Legal Protection:  Any other person whom wrongfully uses the mark are infringing upon the Intellectual Property rights of its owner and are subject to both civil and criminal liability. Expedited enforcement of these rights. Increased fines for infringement of Trademarks which are registered.

Legal Certainty:    Assurance of the owner that he is not unknowingly infringing on an existing mark

Legal Proof:             An unregistered mark’s owner will find it very difficult to enforce their proprietary rights to retaliate against infringement proceedings brought against them.

… to be continued

Please follow BANGKOK LEGAL BLOG (BLB) for answers to hundreds of questions relating to the Trademark system in Thailand.

Next: International Trademarks!

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For more information on the foregoing, please contact the author JOEL LOO SEAN EE, the Bangkok-based Senior Regional Counsel at Kelvin Chia Thailand and a member of Kelvin Chia Partnership’s Regional Practice Group at Joel.Loo@KCPartnership.com.

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This article is published to provide general information only and is not offered as specific advice on any particular matter – This information is to be taken subject to proper consultation with a lawyer.

All written material on BANGKOK LEGAL BLOG (BLB) including this post are the Copyright of Joel Loo Sean Ee. Any attempt to plagiarize or reproduce these materials in whole or in part, in verbatim or in paraphrase, or in any other form that it can be conceivable that such attempt is being made is an offense in law and will be an invitation by offenders to face charges and prosecution in a Court of Law.
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