In the near future all interested parties will have the possibility to register a trademark in the territory of Thailand both under the national procedure through the Department of Intellectual Property, Ministry of Commerce of the Kingdom of Thailand, (http://www.ipthailand.go.th/en/), and by filing an international application under the Madrid system.
It became possible due to the fact that on August 7, 2017, the Government of Thailand deposited its instrument of accession to the Madrid Protocol, making Thailand the 99-th member of the Madrid System. The Protocol will enter into force for Thailand on November 7, 2017. It means that trademark holders will have the possibility to designate Thailand in their new international applications, when the holders of already-existing international applications will be able to select Thailand during subsequent designation.
The accession of Thailand is a demonstration of development of Madrid system
The accession of Thailand is a demonstration of development of Madrid system as a key element of trademarks protection at the international level by offering convenient and cost-efficient solution for brands owners throughout the world. For several past years Thailand has been aiming significant efforts at its accession to Madrid system with the purpose of amending legal framework of the country related to trademarks protection – from in-depth public discussions up to the adoption of a new Trademark Act (No. 3) B.E. 2559 in July 2017, http://www.ipthailand.go.th/th/dip-law-2/item/trademark-act-b-e-2534-amended-by-trademark-act-no-2-b-e-2543-and-trademark-act-no-3-b-e-2559.html.
At the same time, it should be noted that accession of Thailand to the Madrid system foresees the following conditions:
- extension of a period for refusal of registration up to 18 months and more (for oppositions);
- application of individual fees at the stage of examination (418 Swiss francs for each class of goods or services for international applications or declarations on subsequent designation of international registration where Thailand was designated; 522 Swiss francs for each class of goods or services for renewal of international registrations where Thailand was designated;
- lack of effect in Thailand of registrations of licenses made in the International register.
In order to be ready for registration and the use of a trademark in Thailand, it is worth drawing attention to the peculiarities of the national legislation:
- According to the legislation of Thailand, a trademark shall be deemed distinctive if it has, among others, the following characteristics:
- a sound having no direct reference to the character or quality of the goods or a sound which is not the natural sound of the goods or a sound which does not result from the functioning of the goods;
- the signature of the applicant or the predecessor in his or her business or the signature of another person with his or her permission;
- the representation of the applicant or of another person with his or her permission or of a deceased person with the permission of his or her ascendants, descendants and spouse, if any;
- an invented device.
- The application for registration of a trademark that is already in use should contain a declaration on the period of use and on the person using a trademark with regard to goods and services indicated in the application. The Registrar may summon the applicant to make an affidavit confirming his connection with evidences of trademark use.
- Among other things, it is worth mentioning several unusual grounds for refusal of registration:
- marks consist of or comprise royal names, royal monograms, abbreviations of royal names or royal monograms, or representations of the King, Queen or Heir to the Throne;
- a mark is identical with or similar to a medal, diploma or certificate, or any other mark awarded at a trade exhibition or competition held by the Thai government or a Thai government agency unless such medal, diploma, certificate or mark has been actually awarded to the applicant for goods and is used in combination with the trademark.
- Within sixty days from the date of publication of a trademark application, any person seeing that he or she has better title to a trademark than the applicant, or that the trademark is not registrable as the mark is not in conformity with the provisions of the national legislation, may file a written opposition to trademark registration under the established procedure.
- A trademark registration shall be valid for ten years from the registration date. If registration is not renewed in time, the interested owner shall have 6 months more for payment of fees for trademark extension at the rate of 120% from regular fees’ rate.
- Any interested person or the Registrar (the qualified person) may address the Trademark Board with a petition 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
- during the three years prior to the petition for cancellation of trademark registration 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.
- Where the trademark registered in Thailand is the same as the trademark of the international registration covering the Kingdom of Thailand and both belong to the same owner, the trademark owner may request the Registrar to record the international registration to replace the national registration for all goods or certain items which are the same.
- Inheriting of trademark right, assignment agreements as well as licensing agreements shall be subject to compulsory registration.
- Any person, who makes a false statement to the Registrar or the Trademark Board with regard to trademark registration or agreements, shall be liable to imprisonment not exceeding six months or a fine, or both.
- Any person, who counterfeits a trademark, certification mark or collective mark registered in Thailand by another person, shall be liable to imprisonment not exceeding four years or a fine, or both.
Author: Olga Kreschenko
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