DRKLAW TALKS: Trademark Registration in Thailand Trademarks are one of the hottest issues in the business world and are a key component of success for a multitude of businesses. This is evident in the many profitable Japanese companies, which own valuable trademarks. The success of these businesses depends increasingly on whether the owners can claim legal rights over their goods/services using trademarks; prevent other competitors from using the same or similar marks on their goods/services; and protect against unauthorized reproductions of their goods/services. As the world continues to change and more sophisticated methods are developed for abusing the trademark system, businesses need to be aware of the scope and entitlements of the trademark benefits. Trademarks can generally be classified into two types; registered trademarks and unregistered trademarks. In Thailand, the Trademark Act B.E. 2534 provides protection for both trademark types. Whether or not a particular mark qualifies for protection, the scope of such protection, and its advantages or disadvantages depends on which method of trademarking is employed. In Thailand, the only way is to ensure a trademark’s protection is to register the mark. Akin to many other countries, Thailand employs a first-to-file system. This means that the first to file a trademark is the first to own the rights to the trademark, regardless of the period of time that such trademark may have previously been used. If the trademark’s application has already been filed in the foreign country and shall be filed in Thailand within six month from the first foreign filing date, the applicant may claim the first foreign filing date as the filing date in Thailand. For example, if the trademark’s application was filed in Japan on January 1, 2007 and was filed again in Thailand on June 1, 2007, the applicant may claim the filling date as January 1. The applicant shall benefit from such action since the earlier the trademark application is filed in Thailand, the sooner the trademark’s protection will be effective. Failure to register a trademark may result in the trademark’s owner missing out on a majority of the profits that should have been due to him/her and also risks losing his/her business. Not all marks are eligible to be registered. Under the Act, "a mark" means a brand, name, word, letter, photograph, drawing, device, manual, signature, combinations of colors, shape or configuration of an object or any one or combination thereof. Although in some countries a mark is interpreted as a very broad, open and general concept including sounds and tastes, the Thai definition is more limited and does not include sounds and tastes. In Thailand, a mark may be registered as a trademark only when it is: (1) Distinctive; (2) Not prohibited by the Act;
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(3) Not identical or confusingly similar to another registered trademark. Owners of registered trademarks may claim exclusive rights on the product/service; gain from the trademark (including licensing benefits); and prevent others from unauthorized use of such mark. Competitors will be barred from exploiting significantly identical or similar trademarks in relation to the goods and services for which the trademark is registered. Many companies have taken advantage of their trademarks by licensing others to use their trademarked goods/services and in return they gain brand loyalty among other benefits. The licensing agreements are, however, not enforceable unless they are in writing and registered with the Trademark Office. While owners of registered trademarks may benefit greatly from the Act, owners of unregistered trademarks will find that their advantages are significantly less. This is because unregistered trademarks are only protected if the requirements of passing off are satisfied. Furthermore, the process of passing off is costly and time-consuming. In order to register trademarks in Thailand, an application must be made for specific goods or services in a particular class, specified by and to the Trademark Office. A separate application must be submitted per each class of goods/services regardless of the number of goods/services that applicant intends to apply for. There are 45 classes for Thai trademark registration, of which 1-34 are classified as goods and 35-45 are for services. When a trademark application is filed with the Trademark Office, the Registrar will examine the mark to determine whether it satisfies the criteria for a registered trademark. An example of such criteria includes the stipulation that marks descriptive of the product/service being registered are not permitted unless the trademark’s owner can prove the acquired distinctiveness of such mark. If no objections are raised by the Trademark Office, the application should proceed to advertisement in approximately 1-2 months. If it is published and no opposition is filed within the advertisement period of ninety days, the examiner will issue a notice requesting the applicant to pay the registration fee. The registration certificate will be issued within 4-6 weeks after such payment is received. Once the trademark is registered, it will be protected for 10 years from the date of registration, and the owners of the trademarks may apply for renewal every 10 years. Therefore, as long as they renew their trademarks, their exclusive rights will be protected. Author’s note The registered trademark is a valuable marketing and advertising tool and can protect businesses against imitation and “free-riding” on their reputation and goodwill. If the mark is not registered, the owner of the mark should be aware of the potential negative impacts to their businesses. Although unregistered trademarks are acceptable and protected by the Act, it is does not sufficiently grant the owner comprehensive benefits that would otherwise be due to him/her.
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*by Mr. Monchai Vachirayonstien, Director of Dherakupt International Law Office Ltd. (“DRK”)
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