Register and trademark your goods in Thailand
In general, when sellers vender their products, they would like customers to recognise such products, and purchase their products once again. Hence, the sellers should create their brands to distinguish their goods from another person's goods which results in their goods being easily recognised. Sellers should make their trademarks and register them legally. Not all trademarks could be registered easily due to the compicated laws. We can help you to register your trademark.
The Trademark Act, B.E.2534 (1991) was published in the Government Gazette on 15 November 1991 and became effective on 13 February 1992. The Trademark Act of 1991 repealed the Trademark Act, B.E. 2474 (1931) as amended by the Trademark Act,B.E.2504 (1961). The Trademark Act of 1991 governs registration of and provides protection for trademarks,service marks,certification marks, and collective marks. It also protects trademark owners and imposes criminal liabilities on infringers of a trademark owner's rights.
The trademark Act defines the term "trademark" as a mark used or proposed to be used for or in connection with goods to indicate that the goods bearing the trademark that is owned by a person is distinguishable from those goods bearing the trademarks owned by others.
A "mark" includes a photograph, painting, device,brand, seal, name, word,letter, numeral, signature or any combination thereof but does not include product design which is defined by the law relating to patents.
In order to registrar a trademark, the mark must satisfy the following conditions:
1. It must be distinctive;
2. It must not be prohibited by the Trademark Act of 1991;and
3. It must not be similar or resemble to a mark already registered by other persons.
Our services include Mark Searches, Registration and Prosecution of Marks in Thailand, Recordal of Changes, Oppositions, Cancellations, Renewals, and Registration of Trademark/Service Mark License Agreements.
The Trademark Act of 1991 adopts the International Classification of Goods for the purpose of trademark registration. A trademark may be registered under one or more classes but the goods in each class must be specified. However, if a trademark is intended to be used for the goods of different classes, separate applications are required for each class of the goods. When a trademark to be registered has a non-distinguishable character and a proof of use is required to establish its "distinctiveness", the applicant may be required to limit the use of the trademark only to the type of goods for which the proof of used has been established.
In the event where a trademark has been filed for a registration in a foreign country and is filed for a registration in Thailand with six months thereafter, the filing date of the application in the foreign country can be claimed as the filing date of the application in Thailand, provided that such foreign country gives a similar treatment to the Thai applicants who have head offices in Thailand. To establish an applicant's entitlement to claim the priority, proof of a reciprocal treatment by the foreign country is required. So far, no country has ever issued any written confirmation of the reciprocal treatment to a Thai applicant.
For the purpose of the preceding paragraph, the country in which the applicant first filed the applicant for the registration of the trademark must be the country of the applicant's head office or, domicile, or nationality.
The validity period of a trademark registration is ten years from the application date or the date deemed as application date. The trademark owner or his agent must file an application to renew their trademark registration within ninety days prior to the expiration date. A renewed trademark shall be valid for another 10 - year period. No provision requires the Trademark Office to notify the owner or his agent of the expiration date of the existing trademark registrations. If at the registration's expiration, no application for renewal is made or the owner or his agent fails to comply with the conditions specified by the Ministerial Regulations for renewal of application, the Registrar may scratch such trademark from the Registrar.
The trademark owner may license other persons to use a trademark in Thailand. However, if the trademark has been registered in Thailand, the trademark license agreement must be made in writing and registered with the Trademark registrar. An application for a registration of a trademark license agreement must describe, the following information:
1. The agreed terms and conditions between the registered trademark owner and the applicant who is the licensee which allow the registered trademark owner a control over the quality of the goods to be produced by the applicant; and
2. The goods on which the trademark is licensed to be used
The requirement that a trademark license agreement must be made in writing and registered with the Trademark Registrar may be regarded as a form of contract requiring a strict adherence. Failure to comply with the requirement will nullify the trademark license agreement.
"Service Mark" means a mark used or to be used on or in connection with a service to indicate that the service used by a proprietor is distinctive from the services of others that bear the mark.
All provisions of the law concerning the trademarks also apply to the service marks.
"Certification Mark" means a mark used or to be used by its owner as an indication of or in connection with the goods or services or other persons to certify the source of origin, component, production, process, quality, or any other descriptions of the goods or to certify the nature, quality, type, or other descriptions of the services.
Permission for others to use Certification Mark on goods or services
The owner of a certification mark can permit other persons to use his certification mark on their goods or services, provided that the permission must be made in writing and signed by the owner. The written permission must be registered with the Intellectual Property Department.
If the owner of a registered mark wishes to assign the mark to other persons, he will be required to comply with the following conditions:
1. The owner must have obtained a permission from the Registrar upon the assignee's proof to the Registrar's satisfaction that he is sufficiently capable of certifying the description of goods or services as specified in the written rules applicable to the use of the certification mark.
2. The assignment is made in writing.
3. The assignment is registered with the Registrar.
If the Registrar refuses to approve the registration of the assignment, the applicants may file an appeal against the order with the Board of Trademark Committee within 90 days from the date on which the refusal to register the assignment is received. If the Board of Trademark Committee upholds the Registrar's decision, the Registrar's decision shall be final. However, if the Board of Trademark Committee overrules the Registrar's decision, the Registrar shall be required to accept the assignment for registration. If the applicants fail to file the appeal within the 90 day period, their application shall be deemed abandoned.
"Collective mark" means a trademark or service mark used or to be used by companies or enterprises in the same group or by the members of an association, co-operative, union, confederation, group of persons, or any other governmental or private sectors.
In case anyone invents something, he/she should apply for Patent. Patentee has a right to monopolize the working of the patented invention while the patent is valid.
While the patent is valid, the patentee can use the patented invention (manufacture and sell products to which the patented invention is applied) by himself, give exclusive or non-exclusive license to the third parties, or assign the patent right to the other entities. Through these activities, the patentee can receive the economical benefits which sometimes become great amount of money.
Most importantly, every application has to be made and applied by the registered patent agent.
Invention eligible for protection
To be eligible for protection, must satisfy the following requirements:
1. It must have a "novelty" meaning that it must not have been widely known or used in the Kingdom, or described in a printed publication or publicly disclosed either inside or outside the Kingdom prior to the date of application in Thailand. Novelty will be deemed lost where a pending patent/utility model has been filed in a foreign country in excess of eighteen months before the date of filing of the application in Thailand or where the pending patent/ utility model filed inside or outside the Kingdom has been published before the filing of the application in Thailand.
2. It must have an inventive step. (This requirement does not apply to an invention for utility model) and,
3. It must have industrial applicability.
The inventions excluded from protection are: microorganisms and compositions thereof which exist naturally ; animal, plants and animal or plant extracts; scientific and mathematical rules and theories; computer data programs; diagnosis, therapy and treatment methods for human and animal diseases and those contrary to public policy or morality, or public health or welfare.
Person who is entitled to apply for patents, utility models or designs in Thailand must have any one of the following qualifications:
i) Having Thai nationality or a principal office in Thailand (for a legal entity):
ii) Having a nationality of a country which is a member of the international convention or agreement for a patent protection to which Thailand belongs;
iii) Having a nationality of a country which allows Thai nationals or a legal entity having the principal office in Thailand to enjoy patent rights in such a country; and
iv) Having a domicile or effective industrial or commercial enterprise in Thailand or in the country of the international convention or agreement for patent protection to which Thailand belongs.
Though Thailand is not a member of the Paris convention or any other international arrangement for the recriprocal protection, the patent law, however, provides the right to an applicant who is entitled to file an application to claim a priority right within twelve months for patent/utility model and within six months for designs from the date on which the corresponding application was first filed in foreign countries.