1. Why register a trademark?
For both commercial and statutory protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Thailand. Registration is prima facie evidence of ownership and validity. Registration can also generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. After registration, the owner of a registered mark shall have the exclusive right to use such mark for the goods or services registered subject to the cancellation of such registration by a court action on the ground of a third party抯 better right over such mark. Furthermore, compared to the burden of proof and related expenses needed to enforce rights in an unregistered trademark, enforcement of a registered trademark may be less expensive.
3. What is registrable?
Any mark distinctive of the goods or services, including a photograph, drawing, device, brand, name, word, text, letter, numeral signature, group of colors, shape or configuration of an object or combination of any one or more of these items is registrable. In order to obtain maximum protection, a trademark should be registered in both English and Thai.
4. Can a trademark be registered for retail and like services?
Yes, a mark can be registered for retail and like services. However, in such cases the types of goods related to such services will have to be clearly and individually specified.
5. How are domain names protected?
Protection against another party抯 use of a name, which rightfully belongs to another, is provided for under the Thai Civil and Commercial Code. Protection from another party抯 use of a prior registered or well known mark can be sought under existing Thai intellectual property law. As a domain name may be used as a name, tradename or mark, protection may be sought under the aforesaid laws. Furthermore, disputes relating to the generic top-level domains (gTLDS) .com, .net, and .org may be settled by filing a complaint with the WIPO Arbitration and Mediation Center. Thai trademark owners have already successfully used this procedure to resolve disputes with cybersquatters. Regarding the country code top-level domain (ccTLD) .th, THNICS (the .th Registrar) has not yet officially adopted the Center as a dispute resolution service provider. A Thai trademark attorney should be consulted. There are recommendations to adopt and develop dispute resolution policy and rules based upon ICANN, Uniform Domain Name Dispute Resolution Policy and ICANN, Rules for Uniform Domain Name Dispute Resolution POlicy in the Report of the Result of the Study on Policy for Registration of Domain Name for Thailand published in March 2004 by National Electronics and Computer Technology Center, National Science and Technology Development Agency, Ministry of Science and Technology.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes several months. If the applicant makes no prefiling search, and no prior identical or similar mark registration or application is found in the official search, the cost of the prefiling search is saved. However, if a prior identical or similar mark registration or application is found in the prefiling search, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a Thai trademark attorney. For a nonresident applicant, a local agent or trademark attorney must be appointed.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, and a power of attorney appointing a local Thai individual or firm.
9. Is local registration the only option, or are there international alternatives?
A Thai application only has effect in Thailand. There are discussions about plans to accede to the ASEAN Regional Filing Center as well as the Madrid Agreement.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Yes. A separate application must be filed for each class of goods or services.
11. Is it possible to take advantage of a home application or registration?
Yes. A person who has filed a trademark application in a foreign country, and who files an application for the registration of the trademark in Thailand within six months of the first foreign application, may claim the filing date of that first foreign application as the filing date in Thailand, provided that he is a national or is domiciled or operates an industrial or commercial enterprise in a country that is a member of an international convention or treaty for the protection of trademarks of which Thailand is also a member, or that he is a national of a country that grants the same right to Thai nationals or juristic persons whose principal offices are located in Thailand.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
There is no set level of minimum use that is required for the maintenance of a trademark registration. However, if the mark is not used for a continuous period of three years, the registration may be cancelled officially or at the request of a third party, unless the proprietor of the mark can prove that nonuse was due to 搒pecial circumstances?in the trade. Use by a licensee is considered use by the proprietor, if the license agreement is registered and the licensee is recorded as a registered user. Late use after the three-year term may restore registration, provided that in the interim no third party has filed a petition for cancellation of the mark registration.
13. Is using a variation of the trademark allowable?
Variation of the characters of a word mark is not advisable unless the owner seriously uses or intends to use and register or intends to register such variation as another mark. If a mark utilizes a distinctive style or design, then any variations to such style or design would have to be minor and insignificant; otherwise, a separate trademark registration for such variation should be filed.
14. Is there any advantage to using a trademark before filing an application?
Yes. While first use of the mark overrides first to file, the prior user has the burden of proving better rights in the mark by providing substantial evidence, which implies a higher cost than that of a registration. The first person to use a mark has the ultimate right to such mark, even if another subsequently registers it. Prior use of the mark is, however, not a requirement for filing. Where prior use is extensive, it is even possible to sue for infringement of an unregistered mark by bringing an action for passing off.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using or having an intention to use the mark, directly or through a licensee, may apply for registration. However, it is required that the proprietor or a representative of the proprietor have an office or place of contact for receiving official notices in Thailand.
16. What information is first published about an application/ registration and when is it published?
The following details are published: a sample of the mark, classification and list of goods for which protection is being sought, application number, filing date, restrictions such as disclaimers to exclusive rights to certain words and associations requirements, applicant抯 name, applicant抯 nationality, applicant抯 occupation, applicant抯 address, agent抯 details and address of services. Publication will occur after the examiner has examined and is satisfied that the mark is registrable. If no amendments are required or objections raised, it will normally take six to nine months before publication. The publication period is 90 days.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to distinctiveness, if the mark possesses or consists of any particulars forbidden by the trademark law and if the mark is identical or similar to other mark registration. A search is also conducted for prior conflicting marks, which can be cited against the application.
18. What response to official objections is required?
If the application is officially found to be inadequate in any respect, the applicant will be notified and must rectify the inadequacy within 90 days after receipt of the notice. If the application is refused by the Registrar, the applicant is entitled to appeal within 90 days of receipt of the notice of refusal. If only minor amendments are required, the applicant must respond within 30 days of the date of receipt of such notice. If the required response involves a condition of registration or an objection to acceptance, the period for response is 90 days. Deadlines for responses are not extendible.
19. How long is the registration process?
Provided no official objection is raised or no opposition is filed by third parties, the registration process takes approximately 12 to 18 months.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
Registration entitles the registrant to file infringement suits against unauthorized third-party users, to oppose subsequent applications, and to cancel other subsequent registrations. It also enables the registrant to obtain an injunction to prevent unauthorized use and to seize the counterfeit goods. There are criminal penalties for counterfeiting registered trademarks.
22. Can an application be opposed or cancelled by third parties?
Yes. Any person claiming better rights to the mark, or that the trademark is not sufficiently distinctive to qualify for registration, or that registration is prohibited under any statutory provisions, may submit their opposition to the application with the Trademark Office within 90 days of publication. A person claiming better rights to the mark may also petition the court to cancel the mark registration within five years of registration of the mark.
23. Can an application or registration be assigned?
Yes. An assignment document that has been executed by the assignor and the assignee must be filed. A pending trademark application may also be assigned.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Yes. It is a statutory requirement that an assignment be registered before it is recognized.
26. Can an application or registration be licensed?
Yes. The use of trademarks, whether registered or the subject of a pending application, may be licensed. However, the license may be registered only if the mark is registered, whereby the licensor must retain power to supervise the licensed use of the registered mark to ensure adequate quality control. Consult a Thai trademark attorney.
27. Does a license have to be recorded?
Registration of a license is compulsory. Use by the licensee of the trademark will be considered use by the licensor.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Thailand.
29. How long does a registration last?
The term of registration is ten years from the date of application, and is renewable for periods of ten years each.
30. What is required to renew a registration?
The proprietor or local trademark attorney must file an application for renewal. If the application is to be filed by a trademark attorney, a duly executed and notarized power of attorney form is also necessary. Any marks registered prior to the enforcement of the present Trademark Act 1991 will be reclassified on renewal, using the WIPO International Classification System.
31. Is it necessary to indicate a trademark registration on goods or services?
No. It is not necessary to show whether or not a mark is registered or pending. Marking is optional and merely announces that the mark is either registered or registration is pending.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
The Department of Intellectual Property抯 website is www.ipthailand.org. |
