Council of State Approves Draft Trade Mark Bill
10 October 2012
The Thai Department of Intellectual Property prepared and submitted a Draft Trade Mark Bill to the Thai Council of State for its consideration and review in 2008. After pending for consideration for more than three years, the Council of State recently approved the Bill and submitted it to the Cabinet for consideration and approval, reports Dan Greif, co-head of the intellectual property practice at Siam Premier International Law Office in Bangkok.
On November 22, 2011, the Bill was approved by the Cabinet and the approved version was submitted to Parliament for final consideration and approval before being published in the Royal Gazette and becoming enforced.
The Bill contains several significant points, says Greif. The Department of Intellectual Property believes the Bill will expand the scope of trademark protection in Thailand, make the registration process faster and easier and provide more suitable fees for registration.
Under the current law, “mark” is defined as a photograph, drawing, device, manual, signature, combination of colours or shapes or a configuration of an object or any one or the combinations thereof. Under the Bill, “scent and sound” have been included in order to expand the definition of mark protected in Thailand.
The Bill also provides clearer and more specific criteria for distinctive status as to whether the mark is distinctive or not. The Bill provides that an invented word, invented number or invented character have distinctive status and are able to be registered as trademarks.
“Such criteria dispel a long history of arguments between applicants and trademark examiners on whether such marks can be registered and protected under the trademark system,” says Greif. “The Bill also provides that a shape mark has a distinctive status, and that the shape of a mark cannot indicate the nature of the goods, cannot obtain a technical result and cannot give substantial value to the goods.”
The Bill also provides specific criteria for scent and sound marks stating that such marks cannot indicate directly to the character or nature of the goods and cannot be the scent or sound of the goods themselves.
Greif says the Bill provides that if a trademark is not inherently distinctive as provided by law, it can acquire distinctive status by way of acquiring a secondary meaning – that is, proving that the mark has been used in the applicant’s goods or services in commerce and has become wellknown in Thailand. The trademark will then become distinctive.
The Bill also provides for multipleclass applications in place of a traditional single-class application, and shortens the length of time for responding to any office instruction or decision from 90 days to 60 days.
“The competent authority believes that the current timeframe is too long and only prolongs the registration process,” says Greif.
