1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The main legislation relating to trademark protection is the Trademark Act (BE 2534), as amended by the Trademark Act (No 2) (BE 2543) and the Trademark Act (No 3) (BE 2559).
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights arise through registration in Thailand.
1.3 What is the statutory or other source of the trademark registration scheme?
The Trademark Act is supplemented by regulations and by the Penal Code and the Civil and Commercial Code, in particular regarding trademark enforcement and penalties.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
According to the Trademark Act, a ‘mark' is a photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colours, figurative element, sound or combination thereof.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
A mark must be used or proposed to be used on or in connection with goods or services to distinguish the goods or services of the trademark owner from those of others.
In order to be registrable, a trademark must further:
- be distinctive;
- not be prohibited under the Trademark Act; and
- not be the same as or similar to a trademark that has already been registered by another person.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
Some non-conventional trademarks, such as scent marks, are not yet registrable in Thailand.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Department of Intellectual Property, under the authority of the Ministry of Commerce.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The Thai trademark office charges official fees at the filing stage and at the registration stage.
These official fees are paid per number of product(s) or service(s) specified if the total number of products or services does not exceed five per class. Where there are more than five products or services per class, the Thai trademark office charges a flat fee.
The official fees at the filing stage are of THB 1,000 per item (approximately $30) for each product or service up to a total of five. If there are more than five products or services, a flat fee of THB 9,000 (approximately $270) applies.
Upon acceptance of a trademark for registration, the official fees are THB 600 (approximately $18) for each product or service up to a total of five. If there are more than five products or services, a flat fee of THB 5,400 (approximately $162) applies.
3.3 Does the trademark office use the Nice Classification scheme?
The Thai Department of Intellectual Property follows the Nice Classification, although general class headings are not allowed. A Thai classification supplements the Nice Classification which is more detailed and includes Thai-specific products or services.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Class-wide or class heading applications are not allowed in Thailand. Moreover, broad product or services are not registrable, even if these are listed in the Nice Classification. For example, items such as ‘cosmetics' or ‘clothing' are too broad in Thailand and must be further specified (eg, ‘mascara', ‘lipstick', ‘shirts' or ‘pants').
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
Yes, applicants must have a bona fide intention to use the trademark.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
Yes, the Department of Intellectual Property performs trademark searches for prior filed and registered trademark applications to check that the mark applied for is not identical or similar to a trademark that has already been registered by a third party.
3.7 What types of examinations does the trademark office perform other than relative examination?
The Department of Intellectual Property will perform a substantive examination and further check whether the mark is distinctive or suggestive, or whether it contains common words that would need to be disclaimed. Compared to other countries, Thailand is very strict in this examination.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Yes, according to the Trademark Act, a mark must not be prohibited under the Trademark Act and regulations, and must not be contrary to public order.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No, use is not required to obtain registration in Thailand. However, a registered trademark may be challenged for non-use if it has not been used for three consecutive years.
3.12 How much time does it typically take from filing an application to the first office action?
Twelve to 16 months.
3.13 How much time does it typically take from filing an application to publication?
Twelve to 16 months.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Yes, trademark applicants can appeal to the Trademark Board for administrative review of the registrar's decisions.
4.2 What is the procedure for appealing a trademark office refusal?
An appeal must be filed within 60 days of receipt of an office action. The examination of an appeal usually takes around two to three years.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
Yes, a decision of the Trademark Appeal Board may be appealed to the Intellectual Property and International Trade Court within 90 days of receipt of the decision.
5.1 Can a third party oppose a trademark application?
Yes, if a trademark application has been examined and the registrar allows the application, it will be published for 60 days in the Trademark Gazette for opposition purposes.
5.2 Who has standing to oppose a trademark application?
Any party that believes it has stronger title to trademark than the applicant, that the trademark is not registrable, or that the application does not comply with the provisions of the Trademark Act may file an opposition against a trademark published in the Trademark Gazette.
5.3 What is the timeframe for opposing a trademark application?
An opposition must be filed within 60 days of publication of the trademark in the Trademark Gazette.
5.4 Which body hears oppositions?
The registrar of the Department of Intellectual Property will consider the opposition and the counterstatement filed by the applicant.
5.5 What is the process by which an opposition proceeds?
Once an opposition has been filed, the applicant must file a counterstatement to the objection within 60 days of receipt of a copy of the opposition.
The registrar will then send written notification of his or her decision to the applicant and the opposing party. The timeframe for examination of the opposition and counterstatement is 16 months.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
The applicant or opposing party may appeal the decision of the registrar to the Trademark Appeal Board within 60 days of receipt of the notification. The decision of the Trademark Appeal Board may further be appealed to the Intellectual Property and International Trade Court within 90 days of receipt.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
According to Section 46 of the Trademark Act, no one can bring legal proceedings to prevent or recover damages from the infringement of an unregistered trademark.
The second paragraph of Section 46 provides limited protection for unregistered trademarks in case of passing off only.
6.2 What legal rights are conferred by a trademark registration?
The owner of a registered trademark enjoys the exclusive right to use the mark for the goods or services for which it is registered, and to act against trademark infringers. The owner of a registered trademark may also record its mark with Customs for border enforcement.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
There is no separate register. A trademark that is descriptive of goods or services may be deemed distinctive and registrable only if it is used on goods or services which have been widely sold or advertised in accordance with the rules prescribed in a notification by the minister, and if it is proven that such rules have been duly met.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
Both civil and criminal remedies are available in case of trademark infringement.
The penalty for trademark infringement as per Section 108 of the Trademark Act is up to four years' imprisonment and/or a fine not exceeding THB 400,000.
The penalty for imitation of a registered trademark is up to two years' imprisonment and/or a fine not exceeding THB 200,000.
Monetary relief is decided by specialised judges of the Intellectual Property and International Trade Court.
Injunctive relief is available in Thailand, although it is hard to obtain in practice. There must be clear and convincing evidence that:
- the party against which injunctive relief is sought has engaged in the infringing activities; and
- there will be irreparable harm if relief is not granted promptly.
7.2 What remedies are available against trademark dilution?
There are no specific remedies.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Section 46 of the Trademark Act recognises the offence of passing-off.
7.4 What is the procedure for pursuing claims for trademark infringement?
In practice, sending a cease and desist letter or submitting a takedown notice (for online infringement) is the most efficient and cost-effective way of stopping trademark infringement in Thailand.
If the dispute cannot be resolved, the trademark owner can file a complaint with the enforcement authorities (eg, the economic police) or before the Intellectual Property and International Trade Court (IP/IT Court).
7.5 What typical defences are available to a defendant in trademark litigation?
The only defence in the Trademark Act is the fair use defence set out in Section 47, which states as follows: "No registration under this Act shall interfere with any bona fide use by a person of his own personal name or surname or the name of his place of business or that of any of his predecessors in business or the use by any person of any bona fide description of the character or quality of his goods."
In practice, infringers will usually try to claim that their mark is not identical or similar to the registered mark, or that the products or services associated with the mark are different.
7.6 What is the procedure for appealing a decision in trademark litigation?
Decisions of the IP/IT Court may be appealed to the Specialised Appeal Court and ultimately to the Supreme Court.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The registration lasts for 10 years from the filing date and may be renewed indefinitely.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
The original or a duplicate of the earlier trademark registration certificate.
8.3 What are the grounds for cancelling a trademark registration?
A trademark registration may be cancelled in the following circumstances:
- The requirements for registration were not met at time of filing – namely, it appears that, at the time of registration, the trademark:
- was not distinctive;
- contained or consisted of a prohibited characteristic;
- was identical to a trademark registered by another person for goods in the same class or in a different class with the same character;
- was so similar to the registered trademark of a third party that the public might be confused or misled as to the owner or origin of goods in the same class or goods in different classes with the same character; or
- was contrary to public order, good morality or public policy.
- The registered trademark has not been used and it can be proved that:
- at the time of registration, the owner of the trademark had no bona fide intention to use the trademark on the goods for which it was registered;
- there has been no bona fide use whatsoever of the trademark for such goods after registration; or
- in 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.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
According to Sections 61, 63 and 66 of the Trademark Act, besides any interested person, the registrar may petition the Trademark Appeal Board to order the cancellation of a trademark if it appears that, at the time of registration, the trademark:
- was not distinctive;
- contained or consisted of a prohibited characteristic;
- was identical to the trademark of a third party registered for use on goods in the same class or in a different class with the same character; or
- was so similar to the registered trademark of a third party that it may confuse or mislead the public as to the ownership or origin of goods in the same class or in different classes with the same character.
The registrar may further 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 for the goods for which it was registered and there has been no bona fide use whatsoever of the trademark for such goods; or
- in 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.
The registrar may further petition the Intellectual Property and International Trade Court (IP/IT Court) to cancel a registered trademark if it is proved that, at the time the legal action is filed, the trademark has become a common term in the trade for certain kinds or classes of goods to the extent that, to the trade or in the public eye, it has lost its meaning as a trademark.
In practice, the registrar rarely seeks to cancel a registration on its own initiative.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Any interested party may file a petition for cancellation of a registered mark with the Trademark Appeal Board. Once the petition is filed, the trademark owner will receive an office action inviting it to file a response to the petition within 60 days of receipt.
The trademark owner is not required to file a response and there is no default judgment. If the trademark owner does not file a response, the Trademark Appeal Board will unilaterally consider the petition and the supporting evidence and issue a decision based on the petitioner's evidence.
The timeframe for this process is approximately two to three years.
8.6 What is the procedure for appealing a decision cancelling a registration?
A decision of the Trademark Appeal Board may be appealed to the IP/IT Court within 90 days of receipt.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
A trademark licence must be recorded with the Department of Intellectual Property (DIP) and must include the following particulars:
- the conditions or terms between the trademark owner and licensee to ensure effective control by the trademark owner of the quality of goods of the licensee; and
- the goods for which the trademark is to be used under the licence.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
Yes, the original trademark licence agreement must be recorded with the DIP; otherwise, it may not be enforceable or may be declared void.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
Trademark rights in Thailand arise only through registration and, for unregistered marks, in case of passing-off only.
Well-known marks as prescribed by ministerial notifications, or which are so similar thereto that the public might be confused as to the owner or origin of the relevant goods or services, may also qualify for some protection in Thailand, as long as they are well known in Thailand.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
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.