Protecting your Brand in Thailand
Legal Matters: June 2011
Many foreign investors doing business in Thailand do not consider, or may not seek or are not advised on the benefits of registering a Trademark in Thailand with regards to protecting their brand. This is notwithstanding the ever increasing emphasis in the modern world on the importance and value of brands, and the fact that each day a business should be through its actions be improving its brand value. The publication in which this article appears is also dominated by brands.
Protection for a Trademark is provided under the Trademark Act. In Thailand Trademark law protects all the commonly protected marks, symbols and labels used for a product or a service and in addition covers three dimensional objects, groups of colors and combinations of these images.
It should be noted that in Thailand the categories under the trademark law are different to other jurisdictions, providing protection for 4 categories of Trademarks as follows:
- Trademark is a mark that is used in conjunction with goods to present that such goods are different from other goods;
- Service Mark is a mark that is used in conjunction with a service to present that such service is different from other services;
- Certification Mark is a mark that the owner of a product or service uses in conjunction with the product or the service to ensure quality of the product or the service; and
- Collective Mark is a trademark or service mark used by a company or other associates ventures or members of an association or other organizations of public and private entities.
The procedure of registering Trademark applications is divided into 4 periods as follows;
1. Investigation and examination of the similarity and availability of trademark;
2. Submission of trademark application for the consideration of the registrar;
3. Notification of status and result of the application; and
4. Registration of the trademark.
If you understand this simple process, then you will understand the process your appointed attorneys or advisers will need to undertake to assist you with protecting your brand. It is not sufficient to ask your advisers to go ahead and register protection, but in addition you should consult with them about the marks you intend to register to ensure they are unique and will not be declined by the Registrar as unsuitable.
1. Investigation of Trademark
It is recommended that the applicant filing for the registration of trademark, conduct an investigation and examination of the similarity and availability of trademark he is applying for the registration. The investigation and examination service must be conducted by the applicant himself at the competent office of the Department of Intellectual Property or online as ‘Copyright Search’ at www.ipthailand.go.th.
2. Submission of trademark application
The applicant should provide the following documents:
(a) One original registration application form (“Gor. 01”) with the signature of the authorized person and a photo of the trademark. The original application shall be submitted together with 5 copies of it.
(b) If the applicant is a juristic person, a certified affidavit of the juristic person obtained from the authority no longer than six months must be submitted. Note that if the applicant resides outside of Thailand, a notary public procedure is required to certify the documents.
(c) If the applicant is a natural person, a certified copy of identification card is required to be submitted. Note that if the applicant resides outside of Thailand, a notary public procedure is required to certify the documents.
(d) If a proxy and/or agent is appointed to file the application, a copy of the power of attorney (Gor. 19), as well as a copy of the proxy’s and/or agent’s certified copy of identification card must be submitted.
3. Notification of status and result of the application
After the application is submitted, the registrar and the officer shall conduct an investigation related to the qualifications of trademark applying for the registration. At this stage, if there is any issue or opposition from any third parties, the registrar will send the applicant with an official notice informing details of such issue or opposition and provide the applicant with a time period to appeal and/or submit further documentations.
If the application is completed and no opposition is filed against the application to the registrar, the registrar shall approve the registration of the trademark and issue the certificate for the applicant.
4. Registration of the trademark
The applicant or his proxy must bring together with his presence at the Department of Intellectual Property, the written notice received from the registrar in order to proceed with the registration of trademark.
Understanding the protection under law
A nuance of the law relating to infringement of these marks is that from the date of application the marks are deemed protected under law and you can enforce against third parties for infringement. The ‘catch’ is that the enforcement is only possible post-registration which makes the protection ‘retrospective’ in effect. Therefore, if third parties infringe your marks during registration, you can warn such parties off from infringement, but the real enforcement is delayed until the marks are properly registered. There are laws of course which also protect unregistered marks, and the laws relating to ‘passing off’ can also be relevant.
In the last twenty years, and as of 2011, the matter of brands has become an integral part of everybody’s lives, as the new generations make their commercial choices typically around branded products. Businesspeople creating new business or working in existing businesses should not overlook the importance of legally addressing protection of brands through trademark protection as described above.
Any person or company intending to use the procedures above should seek formal retained advice prior to proceeding.
The Authors of this article are Sebastian Künz, Senior Associate at Limcharoen Hughes & Glanville (Phuket) email@example.com and Khun Pongsak, Associate at Limcharoen Hughes & Glanville (Phuket) firstname.lastname@example.org
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