Trademark Protection Group - Thailand or Somphob Tax and Law Office Limited

Why register a trademark? Is registration of a mark mandatory? What is registerable?
As the global economy continues to expand, so too does the importance of researching, registering and maintaining trademarks. For those involved in the sale of almost any type of goods or services, a trademark enhances customer loyalty. It also builds brand identity, and earns recognition for your company. * In Thailand there is no official requirement for registration, but registration significantly accelerates the enforcement process, and gives the trademark owner the best protection against infringement and counterfeiting. Also, if you trade in Thailand on a mark that is unregistered you may be infringing on another's registered rights. * It must be distinctive and may not be so similar to another mark as to be confusing or misleading to the public. A non-distinctive mark may be registered if it has acquired distinctiveness, for which proof of use must be submitted with an application.

Should a trademark be searched before filing? How do I file? What information must be provided before filing?
Yes, a search is recommended as it highlights other marks which are similar to yours, allowing for amendments to be made before filing, normally preventing the Registrar from requiring changes to be made. This saves considerable time and money later on. Please enquire with your specific requirements. We normally fax the search results within 48 hours of receipt of instruction & payment. * If in Thailand you may file an application yourself or you may authorise an agent to handle the matter for you. All overseas owners must register through an agent. * In order to apply for registration of a trademark application in Thailand the following is required: the full address of the applicant's main place of business; what type of juristic entity the owner is; the applicants nationality and place of incorporation; copies of the mark (in colour if required); a specific list of goods and services; a power of attorney dully notarised, a signed declaration verifying ownership. We provide all documents for your signature once instructed to act on your behalf.

Is local registration the only option, or are there international alternatives? Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
While a mark registered overseas does theoretically provide nominal protection in Thailand it would be extremely unwise to consider such a route, particularly as Thailand is not party to any international agreements on intellectual property. There is also no way of registering a Thai trademark overseas; it must be filed at the Department of Intellectual Property in Bangkok, Thailand. * Yes, a separate application for each class of goods and/or services is required. * Please enquire with your specific requirements. We normally file your application within 48 hours of receipt of correctly completed documents & payment.

Is it possible to take advantage of a home application or registration? Must a trademark be used after registration, and what happens if a trademark is not used? Is using a variation of the trademark allowable?
Yes, the details thereof should be provided to us with your application and we will file this information with the Trademark Board, increasing the likelihood of a swift and unobstructed registration. Priority of a foreign application is recognised in Thailand if the first foreign application was filed within six months prior to the Thai application, and if the foreign country provides reciprocal rights to Thai nationals. * No, however it becomes susceptible to cancellation by another after three years. * Yes, there are no judicial precedents that say otherwise; in fact evidence of use of a mark in one configuration may be used to support the application of the same mark in another configuration.

Is there any advantage to using a trademark before filing an application? For an application to be valid are there any particular requirements that must be met? What kind of examination will a new application undergo?
No, because it may put you in the position of unwittingly infringing on another's registered rights. * As long as the applicant supplies the necessary documentation, correctly completed and the mark is distinctive and may not be so similar to another mark as to be confusing or misleading to the public then there is no reason for concern. However there is only one area that may still impact on an application and that is when a company registers its own name without stylising the text. The registrar considers this as non-distinctive. Some companies have gone so far as to form another company of a different name through which to register the mark in Thailand. Also, if the trademark is registerable but contains descriptive or prohibited elements, the Registrar will order such elements be disclaimed or removed. The application will still be allowed without the rights to the disclaimed or removed elements. If an application by the same owner covers more than one class for the same or similar goods, the marks must be associated. * The application will be examined upon presentation on the day of filing, and will then go to the Registrar who, due to a massive backlog of applications, is now taking up to one year to process the application and publish it in the Trademark Journal (in Thai). If within 90 days of publication it meets with no opposition, technical difficulties or complications it will be another 90 days before a certificate is prepared. It is currently taking 18 months for completion of an application from date of filing. It is to be noted that protection rights start on the date of filing.

What response to official objections is required? How long is the registration process? What rights does an application confer?
Usually, official objections require a response within 90 days from date of receipt. They are written in Thai and are frequently unspecific requiring clarification at the trademark office. If a response is not provided within 90 days the Registrar will terminate the application. It is therefore vital that you choice an agent who will completely represent your interests in Thailand. In most cases we do not charge any fees for handling straightforward official objections. * In total approximately 18 months. * The exclusive right of use of the mark in Thailand. Those rights may be sold, transferred, licensed or merged.

What is the legal effect of a registration? Can an application be opposed or cancelled by third parties? Can an application or registration be assigned?
Registration significantly accelerates the enforcement process, and gives the trademark owner the best protection against infringement and counterfeiting. * Yes, an application may be opposed during the 90-day publication period prior to certification on the grounds of better title, non-registerablity, or non-compliance with the law. A petition for cancellation may be filed at any time thereafter for reasons of non-use after three years, loss of distinctiveness, better title, or non-compliance with restrictions imposed at registration. * Yes, however it requires notarised Assignment Agreements executed by the parties involved, a Power of Attorney, and the original registration certificate of the mark. Associated marks must be assigned together. An assignment license must provide provision for control of quality over the standard of goods produced under the agreement.

Must an assignment include goodwill? Does an assignment have to be recorded? Can an application or registration be licensed?
No, this is very much a business decision. * Yes, otherwise it is not legal or valid. * Yes, however it requires a notarised License Agreement executed by the parties involved, a Power of Attorney, and the original registration certificate of the mark.

Does a license have to be recorded? What is the territorial limit of a registration? How long does a registration last?
Yes, otherwise it is not considered legal or valid. * The Kingdom of Thailand. * Ten years from date of filing, and is renewable for a subsequent ten years, and so on.

What is required to renew a registration? Is it necessary to indicate a trademark registration on goods or services? Does the International Classification system apply?
The original certificates of Registration, list of goods/services, power of attorney. * No, but it significantly reduces the chances of infringement by others, as it indicates that you regard your mark as proprietary property. It also helps considerably in evidence if you have to file charges against another for infringement. * Yes, mostly. The Trademark Board follows the classification system closely but considers certain items as being too broad for registration, requiring specific itemised lists of goods and services, which sometimes are not defined clearly by the WIPO International Classification system.

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