Thailand Trademark Reform: The Key Points You Need To Know

Vidon & Partners (Thailand) Co., Ltd. | View firm profile

The revised Thai Trademark Act is in force since 28 July 2016. We have listed
below the key changes legal practitioners and brand owners alike need to know
about. pdf thailand_trademark_reform

 

THE LEGAL
CHANGES

THE
PRACTICAL IMPLICATIONS

Multi-class applications are
allowed.
One application can now cover several
classes of products and/or services. It is possible to file either a
single-class or a multi-class application.

At first, multi-class applications
might be appealing for brand owners in terms of portfolio management, especially
those who have a large number of trademarks in Thailand, since there
would be only one Certificate with one registration number and one filing/registration
date covering several classes.

 

However, multi-class application does
not bring any financial incentive since official fees remain the same
for each class. There is no difference for official fees between a
single-class application and a multi-class application. In
addition, the drawback of a multi-class application is that in case an
objection is raised by the Examiner or an opposition is filed in respect of
some classes, this will affect all the designated classes. The application
shall be accepted only if the refusal or opposition for the objected
class(es) is overcome.

 

There are pros
and cons to both approaches. Careful thought must therefore be given when
opting for a multi-class application or a single-class application.

Registration of associated marks is
abolished.
Similar/identical marks belonging to the same Applicant and applied for
registration with similar products/services in the same and related classes
no longer need to be registered as associated marks.

Assignment of certain
identical/similar marks belonging to the same Applicant is now allowable.
However, recordal of such partial assignment will be accepted only on the
condition that the Assignor provides a Letter of Consent to the Assignee to
be the new owner of such similar/identical mark.

Sound marks (e.g. musical jingle such as Tarzan yell) can now be registered in
Thailand
.

It remains to be seen how
applications for this new type of mark will be examined. The legal
requirements are the same as those applicable to the traditional marks,
namely a
mark must be possible (not forbidden under Thai law), valid (neither generic
nor descriptive) and available (not be confusingly similar to and/or
identical with prior rights).

Refilling is deemed as trademark
infringement
. Refilling genuine packaging
and containers bearing registered marks with unauthorized products (often for
alcohol, shampoos, perfumes etc.) in order to mislead consumers into
believing that such goods are those of the registered trademark owners is
publishable under the new Thai Trademark Act. The penalties are
increased to an imprisonment of up to 4 years and/or a fine of up to THB
400,000 (approximately EUR 10,000).

This is a welcome development compared with the previous penalties that had little deterrent
effect [under Section 272(1) of the Thai Penal Code, violators faced up to 1
year imprisonment maximum and/or a fine of up to THB 2,000 maximum (approximately
EUR 50)] but will ultimately depend on its implementation and enforcement.

New deadlines to respond to Office
Actions:
60 days (instead of 90 days) for
filing amendments, disclaimers, oppositions and appeals whereas trademark
holders are given more time to pay registration fees (60 days instead of 30
days).

These new deadlines would streamline
the registration process which is expected to be completed within 16 months
(instead of the usual 18-24 months).  

Late renewal is now allowed within 6 months from the expiry date (subject to
a 20% surcharge of official fees).

This grace period gives leeway
to brand owners who missed the deadline for renewal and still wish to
maintain protection of their marks.

New official fees for filing,
registration and renewal.

 

Filing:

1st
-5th items per class: THB 1,000 per item

More than
5 items per class: THB 9,000 per class (lump sum)

Instead of THB 500 per item.

 

Registration:

1st
-5th items per class: THB 600 per item

More than
5 items per class: THB 5,400 per class (lump sum)

Instead of THB 300 per item.

 

Renewal:

1st
-5th items per class: THB 2,000 per item

More than
5 items per class: THB 18,000 per class (lump sum)

Instead of THB 1,000 per item.

This new fee structure is
preferential to brand owners seeking to protect a long list of products
and/or services (at least 18 products/services per class when comparing
with the previous official fees).

It is thus even
more crucial to develop a strong filing strategy so as to optimize costs and
brand protection.

Vidon has extensive
experience in designing efficient specifications and managing both local and
global IP portfolios. Please contact Ms. Chalinee Sriprasart at csriprasart@vidon.com or Ms. Noemie
Sancelme at nsancelme@vidon.com for
strategic advice.

 

 

 

 

There will be another chapter as this new Trademark
Act introduces the accession of Thailand to the Madrid Protocol (the International Trademark Registration system).

The country is currently awaiting the implementing regulations (expected by end
of 2016) for this system to be effective.

This accession should make it easier
for local and foreign businesses alike to expand internationally (by filing the
basic application in Thailand which will serve as the basis of the
international application) or in Thailand (by designating Thailand in the
international application).

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