General Notes
The
Trademark Act 1991 was amended by the Trademark Act 2000. The
amended Trademark Act took effect on June 30, 2000.
The
Act provides for registration of the following:
- TRADEMARK
- SERVICE
MARK
- CERTIFICATION
MARK
- COLLECTIVE
MARK
- TRADEMARK/SERVICE
MARK LICENSE/USER AGREEMENT
Unregistered marks are
not protected under the Trademark Act. A trademark registration
is valid for 10 years from application date, renewable for successive
10-year periods.
Instruction
Notes
General:
All words in a mark and all documents required for filing an application
must be translated into Thai. All translations will be prepared
by Tilleke & Gibbins.
Search:
Before filing of applications, it
is advisable to conduct a search of the marks which require registration
to ascertain whether they are available for registration.
Application for Trademark/Service
Mark Registration:
In a mark application, the full class heading of the International
Classification of Goods and Services cannot be used. In other
words, an application cannot be filed for a whole class. The goods
must be specifically listed in detail, and the government fee
is calculated based on this listing.
After
an application is filed and processed, it is published in the
official Trademark Journal. If there is no objection within 90
days of publication, registration is granted in due course, dated
as of the day of application. Barring any problems, it takes approximately
10 months for an application to be registered.
Along
with instructions to apply for a trademark/service mark registration,
the following documents are required:
- A
recently executed Power of Attorney complete with notarial acknowledgment.
- A
specimen of the mark. If the mark is in color, the specimen
must be in color. Thirty-five originals of the specimen for
each class of goods in which the mark is to be registered should
be supplied. Alternatively, the required number of specimens
can be printed in Bangkok at a nominal cost. The size of the
specimen should not be over 5 centimeters (2 inches) in height
or length; otherwise, there will be an additional government
charge.
- A
detailed list of the goods/services to be covered by the application
is necessary, as the full class heading of the International
Classification of goods is not allowed.
- An
English translation of any non-English words in the mark, notarized
Power of Attorney and other documents which are not in English.
- Evidence
of prior use, if any, should also be submitted to the Registrar
within 30 days from the filing date of application.
Priority
can be claimed on applicant's first application filed abroad
if the Thai application is filed within 6 months of the first
filing date, provided that the applicant meets one of the
following criteria:
(a) the
applicant is a national of a member country of an international
convention or treaty for the protection of trademarks of which
Thailand is also a member;
(b) the applicant is a national of a country which grants
the same right to Thai nationals or juristic persons whose
principal offices are located in Thailand.
The
following documents are required when claiming priority:
- A
copy of the law stating that priority is granted to Thai nationals
and persons whose head office of business is in Thailand in
case the applicant's country is not a member country of an international
convention or treaty for the protection of trademarks of which
Thailand is also a member.
- A
copy of the trademark application first filed abroad for the
same trademark and goods as in the application filed in Thailand.
The copy must be certified by a person with the authority to
approve trademark registrations in the country of first application.
- A
statement certifying that the application has either been rejected
(by the Registrar) or withdrawn or abandoned by the applicant.
Application for Certification
Marks:
This application is for the protection of
marks used for certifying the origin, components, manufacturing
method, quality or other characteristics of goods, or for certifying
the nature, quality and type or other characteristics of services.
The filing procedure and required documents are similar to those
for trademark and service mark applications. A copy of the regulations
concerning the use of the certification mark and a document showing
that the applicant is well-qualified to certify the merit of the
goods or services in the regulations are also required.
Application for Collective
Marks:
This application is for the protection of
trademarks/service marks used or proposed to be used by companies,
societies, associations, cooperatives, unions or federations,
a group of persons or any private or government sector. The filing
procedure and required documents are similar to those for trademark
and service mark applications. A document showing the relationship
of the joint authorized users of the collective mark is also required.
Abandonment:
It is provided that an application shall,
after due notice from the Registrar, be deemed abandoned if no
action is taken in accordance with the Registrar's instructions.
No extension of time can be obtained.
Amendments, Disclaimers,
Endorsements:
Amendments and disclaimers are initially
required by the Registrar regarding deletion of portion(s) of
marks, amendment of specification of goods, disclaimers of generic
terms, numerals and conflicting portions appearing on marks to
avoid conflict of marks. Endorsement is required when an amendment
is made on the registration.
Renewal:
Application for renewal can only be made within 90 days prior
to the expiration date. The following documents are required:
- A
duly notarized Power of Attorney issued by the applicant.
- In
case of renewal of trademark registration for whole goods or
whole class under the old trademark law, a new itemized listing
of the specific goods which will be reclassified under the International
Classification of Goods or Services is necessary. The wording
"whole goods" or "whole class"
can no longer be used. The government fee is calculated from
the list of goods. If reclassification results in specific goods
falling under different classes, new additional mark applications
may be required.
- The
original of the latest trademark registration certificate is
required for endorsement.
Assignment and
Merger:
A notarized Power of Attorney from the assignee
and a certified Deed of Assignment are required. Signatures of
both the assignor and assignee must be acknowledged before a Notary
Public. In addition, the original of the latest trademark registration
certificate is required for endorsement.
Change of Name:
A certified copy of the Certificate of Change
of Name and Power of Attorney from the corporation/company in
its new name are required. The Power of Attorney must be notarized.
The original of the latest trademark registration certificate
is required for endorsement.
License/User Agreement
Registration:
Owners of trademarks/service marks registered
in Thailand who license other parties to use their trademarks
or service marks for any or all of the goods or services for which
the marks are registered are legally required to register the
license agreements with the Trademark Office. License agreements
which are registered are recognized under the trademark law. The
benefit from such registration is that the use of the trademark
or service mark by the licensee will be deemed as use of the mark
by the licensor (the owner of the mark) which can be raised as
a defense in the event of a cancellation action for non-use.
License
agreement must be in writing and registered with the Trademark
Office. To be registrable, the license agreement must contain
the following particulars.
- The
terms and conditions of the agreement between the owner of the
registered mark and the authorized licensee, which conditions
must actually enable the former to control the quality of goods
manufactured or services rendered by the latter;
- The
goods or services for which the licensed trademark is used.
- Whether
the authorized licensee has the exclusive right to use the mark
or whether the owner of the mark can license other parties to
use the mark.
- Other
particulars, if any.
Trademark
or service mark license agreements are governed by the provisions
of the Trademark Act 1991 (Sections 68-79), the Ministerial Regulations,
and the general laws of contract under the Civil and Commercial
Code. Generally, the contracting parties can adopt any terms and
conditions they deem to be appropriate and agreeable, as long
as these terms and conditions are not contrary to public order,
morality or government policy.
The
documents required to file an application for registration of
a license agreement are as follows:
- Powers
of Attorney from the licensor and licensee with notarial acknowledgment.
If the licensee is a Thai company, a specific Power of Attorney
form is required. The Powers of Attorney must be signed by the
same authorized directors of the licensor and licensee who executed
the license agreement.
- The
original license agreement executed by the authorized directors
of the licensor and licensee or a certified copy of the license
agreement notarized by a Notary Public, along with a Thai translation.
- A
copy of the latest certificate of trademark or service mark
registration or renewal in Thai.
Power of Attorney:
A single notarized Power of Attorney is
good for all applications having the same owner, but it is valid
only for the calendar year of signature.
Opposition and Cancellation:
Opposition can be lodged against trademark
applications published in the Trademark Journal within 90 days
from the date of publication. A time extension cannot be obtained.
In
case of mark piracy, a cancellation petition can be initiated
and submitted to the Trademark Board against a mark registration
on the grounds of conflict with a well-known mark. Alternatively,
a cancellation action may be filed directly with the court, claiming
a better right over a mark and seeking cancellation of a mark
registration within five years from the date the Trademark Registrar
issued an order for such registration.
A
cancellation petition against a mark registration on the grounds
of non-use can be filed with the Trademark Board by requesting
the Board to cancel such registration if it can be proven that
the mark has not been used for three consecutive years following
its registration and before such petition.
Appeal:
An appeal may be filed with the Trademark
Board if the applicant is not satisfied with the Registrar's ruling.
The appeal must be filed within 90 days from the date of receipt
of the official notice. A time extension cannot be obtained.
Submission of Proof
of Use:
If a trademark is not distinctive, the applicant
is strongly urged to submit evidence of use, if any exists, together
with the application or within 30 days of filing it. Proof of
use may come in the form of leaflets, pamphlets, brochures, advertising
and promotional materials, invoices, etc.
- Services
-
- Registration
- Priority Claim
- Searches
- License/Registered
User Registration
- Submission of
Proof of Use/Supporting Evidence
- Amendments, Disclaimers,
Endorsements
- Change of Name
- Assignments and
Mergers
- Renewals
- Oppositions and
Cancellations
- Appeals
- Translation
- Printing Specimen
- Marketing Survey
& Report
Other Miscellaneous
Services
For more information, please
contact Ms. Vipa Chuenjaipanich,
Co-Managing
Partner and Managing Director, Intellectual Property Department,
Tilleke & Gibbins (e-mail vipa.c@tillekeandgibbins.com).
(Updated
April 1, 2001)
ŠTilleke
& Gibbins, Bangkok, Thailand
