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FAQ: The Trademark System in Thailand
12 September 2012
Gladys Mirandah of Patrick Mirandah Co offers the following quick reference guide for the trademark system in Thailand.
Q: What is the law that regulates trademarks in Thailand?
A: The Trade Mark Act B.E.2534 as amended by the Trademark Act (No.2) B.E.2543 is in force currently and governs trademark matters.
Q: What is the office in charge of trademarks in Thailand?
A: Trademark rights are acquired on the basis of proper registration with the Trademark Office of the Department of Intellectual Property of Thailand (DIP), which also acts as the Registrar of Trademarks, under the administrative authority of the Ministry of Commerce.
Q: Is Thailand part of the Paris Convention Priority Right?
A: Yes. Hence, it is possible to claim priority from member countries.
Q: Does international application based on the Madrid Agreement exist in Thailand?
A : No. Hence, domestic applications need to be filed as international applications under the Madrid Protocol cannot designate Thailand.
Q: How are trademark rights claimed in Thailand?
A: By registration of a mark, the owner has the following rights: (a) right to use or permit others to use the trademark, (b) right to prohibit others from using the trademark and (c) right to assign and/or license the rights of trademark. The use of a mark means the conduct of the following acts: (i) Affixing the protected mark to goods, packages of goods, means of business or supplying services and communicating papers in business activities, (ii) Circulating, or offering, advertising, storing for sale of, goods bearing the protected mark, and (iii) Importing goods or services bearing the protected mark.
Q: Are collective trademarks recognized by the Law of Thailand?
A: Yes, the Thai Trademarks Act defines collective marks as a mark used on goods and/or services having the same characteristics that are traded jointly by several persons or legal entities to distinguish the goods and/or services from others of the same kind. Such marks are recognized in Thailand.
Q: How are goods classified for Trademark purpose, by international or local classification? How many classes are there?
A: The international classification of goods/services under the Nice Agreement, the 9th Edition, is currently applied in Thailand. The specification of goods/services of an application should include those goods/services upon which the mark is used or there is a present bona fide intention to use the mark. Those goods/services must be described in sufficient detail. All 45 classes of the 9th edition are available.
Q: What is the official language for trademark prosecution?
A: Thai.
Q: What are the filing and prosecution procedures?
A : Stage 1: Filing, Stage 2: Formality Examination, Stage 3: Substantive Examination, Stage 4: Publication, Stage 5: Opposition (if any), Stage 6: Registration, Stage 7: Renewal.
Q: Are multiple class filings available?
A: Multi-class applications are not available in Thailand.
Q: What documents are necessary for filing?
A: A notarized power of attorney by an authorized person with a company seal, if any, affixed. A scanned copy at least is required at the time of lodgment of the application with the understanding that the original would be filed at a subsequent stage.
Q: Are extensions of office action deadlines available?
A: No, response to office actions need to be filed within the prescribed deadlines. Extensions are not available.
Q: What is the term of trademark protection?
A: 10 years (renewable)
Q: From which date can the trademark renewals be filed?
A: A request for renewal must be filed within six (6) months prior to its expiry date. The renewal date is nonextendable.
Q: What documents are required for filing a trademark renewal?
A: i) A notarized power of attorney executed by an authorized person(s) and affixed with the company seal (if any), and ii) a copy of the Certificate of Registration.
Q: Are parallel imports allowed?
A: Yes, unless the condition of the goods is changed or impaired or not suitable to use in the local environment.
Q: Is relief against groundless threats available?
A: Yes.
Q: What infringement remedies are available?
A: The remedies available in an infringement action include preliminary and permanent injunctions, delivery up of infringing goods and machines used in making infringing goods, rendition of accounts of profit or damages.
Q: What alternative dispute resolution methods are available?
A: Negotiation, mediation, conciliation and arbitration.
patrick mirandah (thailand) co. ltd
12 Floor Unit 1202-1, Exchange Tower
388 Sukhumvit Rd.
Klongtoey, Klongtoey
Bangkok 10110, Thailand
T: +66 2 663 6363
F: +66 2 663 6364
E: thailand@mirandah.com
W: www.mirandah.com
