What is the primary legislation governing trademarks in Thailand?
The primary legislation governing trademarks in Thailand is the Trademark Act BE 2534 (1991). Thai trademark legislation was last amended on July 28 2016 by the Trademark Act (3) BE 2559 (2016). Other important laws regarding the enforcement of trademark rights include:
- the Penal Code;
- the Civil and Commercial Code;
- the Consumer Protection Act; and
- various ministerial regulations.
Which international trademark agreements has Thailand signed?
Thailand is a signatory to the following international IP agreements:
- the Madrid Protocol Concerning the International Registration of Marks – the government filed its instrument of accession to the Madrid Protocol on August 7 2017 making Thailand the 99th member of the Madrid system. The protocol will enter into force in Thailand on November 7 2017;
- the Paris Convention for the Protection of Intellectual Property (as of August 2 2008); and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (as of January 1 1995).
Which government bodies regulate trademark law?
The Department of Intellectual Property, which is part of the Ministry of Commerce, is the main government body that regulates trademark law in Thailand.
Rights and protection
Is ownership of a trademark in Thailand determined on a first-to-file or first-to-use basis?
In Thailand, trademark ownership is determined on a first-to-file basis. It is therefore prudent for businesses that conduct (or envision that they will conduct) business in Thailand to file a trademark application, as it is difficult to challenge a prior identical or similar mark and the coexistence of identical or similar marks is prohibited in Thailand. Section 67 of the Trademark Act offers the possibility for any interested party to petition the IP Court to cancel a prior registered trademark within five years of registration by proving that it has better rights to the trademark. However, under existing case law, only marks widely known and used in Thailand can benefit from such protection.
What legal protections are available to unregistered trademarks?
Unregistered trademarks are not well protected in Thailand. Pursuant to Section 46 of the Trademark Act, the law explicitly states that "no person shall be entitled to bring legal proceedings to prevent or to recover damages for the infringement of an unregistered trademark".
Nominal protection is available under Section 272 of the Penal Code (Offences relating to Trade) against acts of passing off, which provides that:
"Whoever uses a name, figure, artificial mark or any wording used in the trade of others, or causes the same to appear on goods, packages, coverings, advertisements, price lists, business letters or the like with the intention of misleading the public about the proprietor of such goods or trade shall be liable to imprisonment for a period not exceeding one year or a fine not exceeding 2,000 Thai Baht (approximately 60 USD), or both."
Owners of unregistered trademarks may also rely on Section 420 of the Civil and Commercial Code, which states that "a person who, wilfully or negligently, unlawfully injures the life, body, health, liberty, property or any right of another person, is said to commit a wrongful act and is bound to make compensation therefore".
How are rights in unregistered marks established?
Rights in unregistered marks are established only in cases of clear infringement on a trademark owner's demonstration that the infringer acted in bad faith.
Are any special rights and protections afforded to owners of well-known and famous marks?
As a signatory to the Paris Convention for the Protection of Intellectual Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, Thailand offers some protection to well-known marks. They are protected under Section 8(10) of the Trademark Act and the Ministerial Notification regarding Rules on the Determination of Well-Known Marks dated September 21 2004 under some restrictive conditions. To determine whether a mark is well known the applicant must show that it has been:
- used on goods or services or has been been used, advertised or used by other means in the usual manner and in good faith continuously;
- widely used, whether in Thailand or abroad, in the usual manner and in good faith to the extent that it is well known among the general public or those in the relevant industry in Thailand; and
- used to the extent that its reputation for quality is generally accepted among consumers.
Such use must be conducted by the applicant or the applicant's authorised representative or licensee locally or abroad.
A system of recordation of well-known marks used to exist in Thailand, but was revoked in 2015. At present, trademarks may be officially recognised as well-known marks by:
- the trademark registrar's discretion;
- the trademark board in appeal cases; and
- the IP or Supreme Court.
To what extent are foreign trademark registrations recognised in Thailand?
Foreign trademark registrations are not formally recognised in Thailand. However, it is usually recommended that trademark registration in foreign jurisdictions be presented as part of the evidence in trademark litigation or appeal cases. Doing so can help to overcome objections or serve as evidence that a graphic representation is well known, provided that the mark is also well known in Thailand.
What legal rights and protections are accorded to registered trademarks?
A registered trademark provides its owner with exclusive rights to use and exploit the mark. Further, a registered mark provides additional benefits, such as:
- preventing trademark squatting;
- providing evidence of ownership;
- facilitating licensing and assignment;
- enhancing share value; and
- offering significantly better enforcement options.
Who may register trademarks?
Any legal or natural persons, regardless of nationality, may apply for trademark protection in Thailand. Foreign applicants that have filed a trademark application in another country and later file a registration application for the same trademark in Thailand within six months of the first foreign application may generally claim the first foreign filing date as the filing date in Thailand (ie, a priority right).
What marks are registrable (including any non-traditional marks)?
Thailand accepts traditional marks (ie, word, semi-figurative and figurative marks) and non-traditional marks (eg, three dimensional marks and sound marks as of September 1 2017).
However, the definition of what constitutes a mark under the Trademark Act is narrow. A 'mark' is defined as "any photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colours, figurative element, sound or combination thereof". To be registrable, a trademark must:
- be distinctive;
- not be prohibited under the Trademark Act; and
- be available (and not identical or confusingly similar to a prior registered trademark).
The Department of Intellectual Property is known to be strict regarding distinctiveness. Marks composed of numerals or letters that do not form a word (eg, DMC) are usually rejected or challenged. It is possible in certain situations to file disclaimers on descriptive or non-distinctive parts of a mark. However, such disclaimers also mean that the mark cannot be fully protected.
Can a mark acquire distinctiveness through use?
In Thailand, marks are deemed to be distinctive based on either their character or through use. At present, a trademark is considered distinctive through use only when such use is widespread and well known. An example is the restaurant chain and green tea brand OISHI. Because the term 'Oishi' means delicious in Japanese, the term, as a brand, would normally not receive IP protection for food products and services. However, years of intensive use in the local market have made the brand distinctive enough to receive IP protection. For Thai authorities to recognise a mark as distinctive by virtue of use, the applicant must provide significant evidence of the trademark's use, such as copies of ads, invoices and catalogues.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
In addition to trademarks being refused for lack of distinctive character or availability, certain types of mark are explicitly prohibited by law. Prohibited trademarks include marks that are:
- contrary to public order, morality or public policy;
- inclusive of royal or official arms, crests or flags;
- representations of members of the Thai royal family; and
- identical or confusingly similar to a well-known mark.
Are collective and certification marks registrable? If so, under what conditions?
Collective and certification marks are registrable in Thailand, provided that they follow the same general requirements of other marks. Certification marks certify:
- the origin, composition, method of production, quality or other characteristics of certain goods; or
- the nature, quality, type or other characteristics of certain services of their owner.
Collective marks are marks that are used or proposed to be used by companies or enterprises of the same group or members of an association, cooperative, union, confederation, group of persons or any other state or private organisation. Applications for the registration of collective marks are usually submitted by a community or association.
Filing and registration
Filing procedure Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
A notarised power of attorney is required from foreign applicants that wish to apply for trademark protection in Thailand. One power of attorney is sufficient for several trademark applications and no notarisation of the power of attorney is required.
What information and documentation must be submitted in a trademark registration application?
The following information must be provided as part of a trademark application in Thailand:
- the applicant's name, address and nationality;
- a sample of the mark; and
- a list of the products or services to be used in relation to the mark.
Thailand generally follows the Nice Classification for Goods and Services, but the Department of Intellectual Property does not accept general headings (eg, clothing or cosmetics). As a result, applicants must specify precise details of the types of product or service that they wish to protect (eg, t-shirts and face powder). While it is possible to amend the list of products and services at a later stage, it is recommended that likely objections be anticipated and prepared for by heeding the advice of local trademark attorneys who are familiar with Thai practice.
What rules govern the representation of the mark in the application?
The applied for mark must be provided in a specific format of five centimetres by five centimetres, although a sample exceeding these dimensions may be submitted. The applicant must choose whether it wishes to protect specific colours or submit the trademark application without any colour claims. If a colour claim is filed, the mark will be registered specifically for the colours claimed by the applicant and the applicant must indicate Pantone codes for such colours. The applicant must indicate the pronunciation and meaning (if any) of each of the mark's component.
Are multi-class applications allowed?
Multi-class applications are allowed in Thailand. However, since filing a multi-class filing confers no advantage regarding costs or time, most applicants choose to use separate trademark applications for different class filings. The separate filings strategy increases the probability of receiving a swift registration since a multi-class application would not be granted if one or more classes is objected to.
Is electronic filing available?
Electronic filing is available in Thailand and standardised application forms have been made available to applicants since July 2017.
What are the application fees?
There are two types of official fee to be paid to the Department of Intellectual Property when applying for a trademark. The first official fee is due on filing of the application (filing fee) and depends on the number of products or services per class that the applicant would like to protect. An individual filing fee of Bt1,000 (approximately $30) per product or service specified must be paid for applications containing five or fewer products or services. For trademark applications containing more than five products or services, a filing fee of Bt9,000 ($265) is due. A second official fee of Bt600 (approximately $18) is due on acceptance of the mark for registration (registration fee) per product or service specified for applications containing five or fewer products or services. For trademark applications containing more than five products or services, a registration fee of Bt5,600 ($160) is due. If the trademark applicant chooses to designate Thailand through the Madrid System for the International Registration of Marks, official fees of Sfr418 must be paid to the World Intellectual Property Organisation.
How are priority rights claimed?
As Thailand is a party to the Paris Convention for the Protection of Intellectual Property, priority rights can be claimed within six months of the first filing of the mark in any other country or region bound by the Paris Convention or other agreements recognising priority rights to which Thailand is a party. An applicant wishing to claim priority of its foreign application must indicate in its Thai application the details of the priority application and submit a signed declaration of priority that is usually prepared by a local agent. The declaration of priority is not required for foreign applicants designating Thailand through an international application (eg, the Madrid System for the International Registration of Marks).
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are highly recommended in Thailand, as it takes between 12 to 18 months on average for a trademark application to be approved. Trademark searches help to ascertain likely objections and are helpful for detecting trademark squatters. Several types of availability search can be conducted, including:
- identical searches;
- similar searches (including phonetic transcription of marks in the Thai language); and
- device (logo) searches.
When determining the availability of a trademark in Thailand, it is important to check the class of products or services that are associated with the classes of products or services for which protection is sought. For example, a trademark application for food and beverage products should not be similar or identical to a service mark for catering services. It is also recommended to check translations and transliterations of a mark to avoid the risk of confusion or similarity as possible grounds for objection. The Thai trademark database is accessible, free of charge and available online. Local trademark agents usually include such search services in their filing fees.
What factors does the authority consider in its examination of the application?
Once a trademark application has been filed, the Thai trademark registrar will initiate a formal examination of the application to ensure that all of the required information and documentation (eg, power of attorney) has been submitted by the applicant. The Thai trademark registrar will then perform a substantive examination to check that the mark is available, distinctive, not prohibited by law and not contrary to public order. In general, an examination takes several months due to the limited number of trademark registrars and frequent objections.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes, trademark registrars carry out extensive searches, sometimes including online searches if it is suspected that an applicant may be attempting to apply for a well-known mark. Thai trademark registrars will frequently raise objections due to the suggestive or descriptive nature of a mark (ie, a lack of distinctive character). In such case, an office action is sent to the applicant or its representative to amend the application or appeal a decision of refusal of grant.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
A trademark applicant must respond within 60 days from the date of receipt of an office action sent by the trademark examiner. Every office action letter from the trademark registrar can be appealed within 60 days from the date of receipt by the Trademark Board. Two situations usually occur when a trademark application is objected.
Request for amendments or notice of provisional refusal The trademark registrar will notify the applicant if the trademark application may be accepted for registration provided that the applicant complies with the registrar's request(s). For example, the applicant may be asked to:
- specify further the types of product or services that it wishes to protect; or
- agree to a disclaimer on non-distinctive parts of its trademark application so that it can qualify for registration.
In such cases, the trademark registrar will consider the arguments and responses filed by the applicant and may:
- be satisfied with the response filed and accept the trademark application and order its publication in the Trademark Gazette;
- issue a second office action requesting further changes; or
- issue a notice of refusal.
Notice of final refusal If the trademark registrar considers that the trademark application cannot be accepted it will issue a notice of final refusal. Examples include where a mark conflicts with an earlier identical or similar trademark or is contrary to public order. In such situations, the applicant must file an appeal with the Trademark Board within 60 days of receipt of such notice if it wants the trademark application to remain active.
Can rejected applications be appealed? If so, what procedures apply?
Rejected applications must be appealed to the Trademark Board, the appellate body of the trademark office. The Trademark Board is composed of:
- the director general of the Department of Intellectual Property (as chair);
- the secretary general of the Juridical Council or his or her representative;
- the attorney general or his or her representative; and
- between eight and 12 qualified persons in the fields of law or commerce, who have IP or trademark experience and have been appointed as members by the Council of Ministers.
At least one-third of qualified members must be appointed from the private sector.
The Trademark Board has the power to:
- decide appeals against the trademark registrar's orders or decisions; and
- consider and order petitions for cancellations of trademarks or trademark licence agreements.
The average timeframe for obtaining a decision from the Trademark Board is between 18 and 24 months. Trademark Board decisions can be appealed within 90 of notification.
When does a trademark registration formally come into effect?
There are two important final stages following the examination of a trademark application: the publication stage and the registration stage.
Publication stage Once the trademark registrar agrees to grant trademark protection, it orders the trademark's publication in the Trademark Gazette. Third parties may oppose a trademark registration by filing oppositions with the registrar.
If no opposition to the application is filed within the 60 days of publication, the registrar proceeds with the trademark's registration. If an opposition is filed, the trademark applicant must file a counterstatement with the registrar within 60 days of receipt of a copy of the opposition to avoid a default cancellation of the trademark application.
After a counterstatement is filed, the registrar will make a decision on whether the opposition is receivable and inform the parties accordingly. Either party may appeal the registrar's decision to the Trademark Board and, subsequently, the IP Court.
Registration stage After the 60-day publication period has lapsed or the applicant has overcome an opposition, a request to pay official registration fees is issued by the registrar. The applicant must settle official registration fees within 60 days of receipt of the notice to pay. After registration, a trademark is deemed registered as of the date of the application's submission.
What is the term of protection and how can a registration be renewed?
A registered mark is protected in Thailand for 10 years from its filing date (or the priority application's filing date) and may be renewed for successive 10-year periods. A registered trademark must be renewed three months before the expiration of the 10-year period or during a six-month grace period after the expiry date (with a 20% surcharge of official renewal fees). Failure to renew the registration results in loss of the trademark protection.
What registration fees apply?
Registration fees depend on the number of products or services specified in an application. An individual registration fee of Bt600 (approximately $18) per product or service specified must be paid for applications containing five or fewer products or services. For trademark applications containing five or more products or services, a registration fee of Bt5,600 ($160) is due.
What is the usual timeframe from filing to registration?
The usual timeframe from filing to registration is 12 to 18 months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Third parties can oppose an application within the 60-day opposition period following publication of the trademark application in the Trademark Gazette. Valid bases for opposition include a lack of distinctiveness or arguments that the mark is prohibited or identical or similar to a trademark registered by another party. The applicant has 60 days after the receipt of opposition from the registrar to file a counterstatement. In considering and deciding the opposition, the registrar may order the applicant and the opposing party to provide statements, explanations or other additional evidence. If the applicant or opposing party fails to comply with the registrar's order within 60 days from the date of receipt of the order, the registrar will proceed to consider and decide the opposition on the basis of the evidence available. The decision regarding the opposition to registration is made by the registrar and notified to the parties.
What is the usual timeframe for opposition proceedings?
The usual timeframe for initial trademark registration opposition proceedings, excluding any appeals, is less than six months.
Are opposition decisions subject to appeal? If so, what procedures apply?
The trademark registration applicant and the opposing party have the right to appeal the registrar's decision regarding the opposition. Appeals must be submitted to the Trademark Board within 60 days of the date of receipt of the registrar's notification.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
In Thailand, marks can be cancelled due to non-use by any interested party. Section 63 of the Trademark Act states that:
"any interested person or the Registrar may petition the Board to cancel a trademark registration if it is proved that at the time of registration the owner of the trademark had no bona fide intention to use the trademark with the goods for which it was registered and in fact there was no bona fide use whatsoever of the trademark for such goods or that during the three years prior to the petition for cancellation there was no bona fide use of the 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 and not to an intention not to use or to abandon the trademark for the goods for which it was registered."
In general, it is difficult to revoke a trademark for non-use as the burden of proof is on the petitioner to prove that the trademark owner had no bona fide intention to use the mark and did not use the mark. Apart from the non-use of trademarks for government-regulated products or services, where the lack of use can be proven by the lack of product or service registration with the pertinent government organisations (eg, the Food and Drug Administration), successful cancellations for non-use are rare in Thailand.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
In addition to cancellation for non-use, there are many grounds on which a trademark registration can be revoked in Thailand. Certain actions can be filed before the Trademark Board while others must be filed in court.
Incorrect registration An interested party or the registrar may petition the Trademark Board to order the cancellation of any trademark if it appears that, at the time of registration, the trademark:
- was not distinctive;
- contained or consisted of a prohibitory characteristic; or
- was identical or so similar to a trademark registered by another person that it could confuse or mislead the public as to the ownership or origin of the goods or services.
Any party that is of the opinion that a trademark is contrary to public order, good morality or public policy may petition the Trademark Board to cancel the trademark registration.
Loss of distinctiveness Any interested party or the registrar may petition the court to cancel a registered trademark by showing that, at the time of filing the legal action, the trademark has become common for the trade of certain kinds or classes of goods, to the extent that the industry or the public views the trademark as a generic term that has lost its meaning as a trademark.
Better right Within five years from the date of the registrar's order to register a trademark any party can petition the court to cancel a trademark registration by showing that the petitioner has better rights to the trademark than the party registered as its owner.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any interested party or the registrar may request revocation of a trademark registration within the time limits (if any) prescribed under Thai law.
What are the evidentiary and procedural requirements for revocation proceedings?
Any interested party that files a petition to revoke or cancel a trademark application must submit evidence of the alleged circumstances and the reason for which the mark should be revoked.
What is the appeal procedure for cancellations or revocations?
Cancellations or revocations can be appealed within 90 days of issuance with the specialised Intellectual Property and International Trade Court.
Surrender What is the procedure for surrendering a trademark registration?
The owner of a trademark may request the registrar to cancel its trademark registration as per Section 57 of the Trademark Act. In a case where the trademark in question is the subject of a licensing agreement, the licensee's consent is required unless the licence agreement provides otherwise.
Which courts are empowered to hear trademark disputes?
Since 1997, the Central Intellectual Property and International Trade Court (IPIT Court), a specialised IP court, has been the main adjudicator of trademark disputes. The Supreme Court is the final level of adjudication available for trademark disputes.
Actions What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
The owner of a registered mark can initiate administrative and judicial actions in case of infringement.
Administrative actions In addition to the opposition and cancellation procedures described above, administrative actions include mostly alternative dispute resolution procedures through the Department of Intellectual Property. The alternative dispute resolution procedure can be requested by either party and consists of mediation between the infringer and the plaintiff. Although alternative dispute resolution is a cost-effective procedure, it is rarely used as plaintiffs usually prefer criminal enforcement.
Criminal actions Judicial actions include criminal and civil actions. Criminal prosecution represents the majority of trademark infringement enforcement efforts in Thailand. It is a cost-effective and quick and efficient remedy. Criminal actions are initiated with the filing of a criminal complaint with the police. The police can then petition the court for a search warrant. If a warrant is issued, a police raid is carried out to collect evidence of the infringement and arrest the infringers.
Thailand's enforcement bodies include:
- the Department of Special Investigation, which was established in October 2002;
- the Economic Crime Investigation Division, a specialised police unit widely used by trademark owners;
- the Metropolitan Police Bureau;
- the Provincial Police Bureau; and
- the Food and Drug Administration.
Under the Trademark Act, the maximum penalty for trademark infringement is four years' imprisonment and a fine of Bt400,000. The maximum penalties for trademark imitation are two years' imprisonment and a fine of Bt200,000.
Civil actions Registered trademark owners may also commence a civil suit based on the Civil and Commercial Code. However, civil actions for trademark infringement are still relatively rare in Thailand. Strategically, a civil action can be helpful for preliminary measures. For example, the registered trademark owner can petition the court for an order to preserve relevant evidence in relation to the alleged infringement (ie, an Anton Pillar order) or for an injunction order.
Who can file a trademark infringement action?
The owner or a registered trademark licensee authorised by the owner can file a trademark infringement action in Thailand.
What is the statute of limitations for filing infringement actions?
Different statutes of limitations apply to civil and criminal cases in Thailand. For criminal cases, statutes of limitation depend on:
- the nature of the infringement (whether it is a compoundable or non-compoundable offence); and
- the maximum penalties under the Trademark Act or the Criminal Code.
In general, speaking, the statute of limitation is 10 years for offences punishable by imprisonment of one to seven years (ie, trademark infringement).
However, for compoundable offences, if the injured person fails to lodge a complaint within three months from the date of the offence and the offender is known by the injured person, criminal prosecution is precluded by prescription.
For civil cases, a claim for damages arising from a wrongful act is barred by prescription after:
- one year from the day on which the wrongful act and the person bound to make compensation became known to the injured person; or
- 10 years from the date on which the wrongful act was committed.
However, if the damages are claimed on account of an act punishable under the criminal law for which a longer prescription is provided, the longer prescription will apply.
What is the usual timeframe for infringement actions?
The timeframe for infringement actions is generally one to two years for criminal and civil cases, depending on other circumstances surrounding the case.
Injunctions What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
It is possible, yet difficult, to obtain a temporary injunction to minimise the effects of trademark infringement in Thailand. There are two types of preliminary injunction in Thailand:
- the conventional type under the Civil Procedural Code; and
- the provisional injunction under the rules of the IPIT Court.
Under the Civil and Procedural Code, an application for a provisional injunction can be executed ex parte at any time before the granting of the decision, but after the filing of the claim. Two conditions must be met:
- there must be clear and convincing evidence that the party against which injunctive relief is sought has engaged in the infringing activities; and
- there must be proof of irreparable harm if the relief were not granted promptly.
In the case of a preliminary injunction under the rules of the IPIT Court, the applicant may file an ex parte application at any time before the filing of the claim if:
- there are reasonable grounds for filing the application and sufficient reasons for the court to grant such application;
- the nature of the damage incurred cannot be resituated by financial measures or any other form of indemnity; or
- the prospective defendant is unable to compensate the applicant for the damage or it might be difficult to enforce the judgment against the prospective defendants afterwards.
In practice, temporary injunctions are hard to obtain and granted only in exceptional circumstances.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
Civil and criminal remedies are available to owners of infringed marks. Under the Trademark Act, the maximum penalties for trademark infringement are four years' imprisonment and a fine of Bt400,000. The maximum penalties for the imitation of a registered trademark are up to two years' imprisonment and a fine of up to Bt200,000.
Punitive damages are not allowed in typical trademark infringement cases. However, punitive damages may be claimed under the Product Liability Law in the case of "knowing or reckless behaviour or failure to take appropriate action after learning that goods were unsafe; provided that punitive damages may not exceed two times the actual compensation".
What customs enforcement measures are available to halt the import or export of infringing goods?
Border measures may be utilised against counterfeited trademarked and copyrighted products. Trademark owners or their representatives in Thailand can file a trademark notice with Customs to request that officers seize and prosecute infringers. They can also file a request to detain a suspected shipment. In the case of seizure, the trademark owner must confirm within 24 hours whether the seized products are counterfeit.
Customs officers also regularly perform ex officio customs actions. As there is no customs trademark registry, it is important that trademark owners provide customs officers with updated contact details of their representative in Thailand. Doing so aids a timely inspection of the suspected counterfeit products. Customs will usually issue fines based on the market value of the infringing trademarked goods.
What defences are available to infringers?
Most infringers, particularly first-time offenders in trademark infringement cases, plead guilty in order to receive a more lenient penalty. Alternatively, infringers will usually try to build a non-infringement case, claiming that their mark is not identical or similar to the registered mark (ie, the passing-off defence) or that the mark is registered for different products or services than the infringing products. In civil cases, the infringers will usually try to conceal or hide evidence of the sale of infringing products.
What is the appeal procedure for infringement decisions?
Infringement cases decided by the IPIT Court can be appealed to the Supreme Court by either party within one month of the IPIT Court decision.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
A registered or pending trademark application can be transferred to or inherited by other parties. The Trademark Act specifically requests that assignments be in writing and recorded with the registrar. A deed of assignment specifically indicating which trademark applications are to be assigned must be signed by the assignee and the assignor.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Registered trademarks can be licensed by means of a written licence agreement and duly recorded with the registrar. Failure to register the licence agreement for registered trademarks makes such agreements ineffective and void.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The rules governing trademark licensing are strict in Thailand. For example, licensing agreements must contain specific provisions, such as the quality control of products or services of the licensee by the licensor. In addition, a notarised power of attorney and the original certificate of registration are required to prove the existence of the trademark application. It is highly recommended to have a local attorney review and record a trademark licence agreement to ensure its enforceability in Thailand.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
Under the new Secured Transaction Act, effective as of July 2016, trademarks can be used as collateral. The borrower (ie, the IP owner) must execute a written agreement with its creditor (ie, a financial institution) and the creditor must take steps to register the security agreement with the Department of Business Development. The borrower can retain its right to possess collateral (ie, the IP asset) and put it to commercial use, unless both parties agree otherwise.
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Trademarks frequently overlap other types of IP right, such as copyright (for logos) and designs (trade dress and design patents). The owners of unregistered trademarks frequently rely on such other rights when available. Notably, although it is possible to protect three-dimensional marks in Thailand, the Department of Intellectual Property is reluctant to grant protection for such marks. For example, packaging is accepted as a three-dimensional mark only if it can function as a designation of origin and does not suggest a utility function.
What regime governs the protection of trademarks online and domain names?
As regards the protection of trademarks online, the new Computer Crime Act, which came into effect on May 24 2017, provides for:
- a permanent injunction to block websites that host IP-infringing content; or
- the removal of such data.
Section 20(3) of the act states that in the case of dissemination of computer data which criminally infringes IP rights, an official may file a motion with evidence to the court requesting cessation of the dissemination or deletion of such data with approval from the minister of digital economy and society.
As regards domain names, the Thailand Network Information Centre registers '.TH' domain names for domestic entities or entities that own a registered Thai trademark. This not only prevents cybersquatting, but also makes it possible in the case of a dispute between a trademark and a domain name to rely on the provisions of the Trademark Act, the Civil Code and the Criminal Code.
Previously published by lexology.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.