News from the IPR SME Help Desk Trade marks in Thailand Along with the regular styles of trade mark mentioned in the previous section, it is also possible to register three-dimensional signs as trade marks in Thailand. However, this is a relatively new development and very few applications have actually been accepted for registration at time of writing. Thailand is a party to the Paris Convention for the Protection of Industrial Property and, as such, applicants who have filed for trade marks in other party states may claim a right of priority if applying in Thailand within six months of this original application. Where the applicant cannot claim priority, it is important to apply before market entry as Thailand operates a strict ‘first-to-file’ system and there are still widespread issues of ‘bad faith’ registrations and ‘trade mark squatting’.
or the priority date where this has been claimed. Trade marks can be extended indefinitely for consecutive 10 year periods, subject to the timely application for renewals. Registering a trade mark in Thailand Any individual or corporation can file a trade mark registration in Thailand, either through a local qualified trade mark agency or by themselves where their domicile/head office is in Thailand, or they have real business operations/dealings in Thailand. All application forms and required documents must be submitted in Thai, or accompanied by a Thai translation. At present, official fees are calculated per product/service designated, and
not by ‘class’ (i.e. the product categories or industry sectors in which applicants choose to register). Currently these fees amount to approximately EUR 12 per product/service at time of filing, with a further EUR 7 payable at time of registration. The fee structure is under review so SMEs are advised to visit the Department of Intellectual Property’s (DIP) website for more information on fees. Applications can be submitted either to the DIP at the Ministry of Commerce, or through the online registration system found on the DIP website. The documents and information required are as follows: • One electronic sample of the mark in black and white or in colour (max 5cmx5cm)
There are amendments in progress which will alter the Trademark Act to allow for recognition of sound and scent marks. This new draft also suggests changes to streamline the examination procedure, and a revision of the current fee structure. Other amendments in this draft include: • Thailand’s compliance with the Madrid Protocol by 2015 • Allowance for multiple-class applications • Introduction of a six-month expiry grace period for trade mark renewals • Shortening the maximum number of days for oppositions and responses to official actions from 90 days to 60 days • Increased government fees • Ensuring that trade marks provide protection against ‘refilling’ practices The registration process for trade marks in Thailand typically takes between 12 and 18 months. Once registered, trade mark protection lasts for 10 years from the filing date,
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Issue 2/2016
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