Protecting IP Rights by Registering Trademarks in Thailand

Trademarks play a vital role in distinguishing goods and services and building brand recognition. Registering trademarks in Thailand is an important step in protecting a business’s IP rights, preventing infringement, and securing a competitive advantage. This article provides an overview of the benefits of trademark registration in Thailand, the registration process, enforcement mechanisms, key considerations for businesses, and recent developments in Thai trademark law.

I. The Importance of Trademark Registration in Thailand

Trademark registration in Thailand provides a range of exclusive rights and benefits to the trademark owner, providing a foundation for brand protection as follows:

• Exclusive Right to Use: Registration grants the trademark owner the exclusive right to use the mark in connection with the designated goods and/or services throughout Thailand. This exclusivity prevents competitors from using identical or confusingly similar marks, which could dilute the brand’s identity and mislead the public.
• Protection From Infringement: A registered trademark provides a solid legal basis for taking action against infringers. The trademark owner can initiate legal proceedings in the Intellectual Property and International Trade Court (IPITC) or the investigation official (in specific cases) to seek injunctive relief (stopping the infringing activity) and monetary damages to compensate for losses suffered due to the infringement.
• Asset Value and Commercialization Opportunities: Registered trademarks are valuable assets that can be licensed, assigned, or used as collateral for financing. They contribute to the overall valuation of a company and its brand portfolio. Licensing agreements can generate revenue streams, while transferring allows for the transfer of trademark ownership.
• Defense Against Counterfeiting and Passing Off: Trademark registration is essential for effectively handling the counterfeiting and passing off (presenting inferior goods as genuine). Registered trademarks can be recorded with the Thai Customs Department, allowing customs officials to seize counterfeit goods at the border and importation port.
• Facilitation of International Expansion: A trademark registered in Thailand can serve as a basis for seeking trademark protection in other countries through the Madrid System for the International Registration of Marks. The trademark applicant can register their trademark in countries who are members of the Madrid Agreement through with Thai Department of Intellectual Property (DIP).

II. The Trademark Registration Process in Thailand

The trademark registration process in Thailand is governed by the Trademark Act B.E. 2534 (1991), and its amendments. The process typically involves the following steps:

1. Preliminary Trademark Search: Before filing a trademark application, it is crucial to conduct a thorough search of the Thai Trademark Database with the Department of Intellectual Property (DIP) to identify any existing marks that are identical or similar to the proposed mark. This search should cover not only registered trademarks but also pending applications and well-known trademarks.
2. Preparation and Filing of the Application: The trademark application must be filed with the DIP. The application must include the following information and documents:
   • Applicant Details: The applicant’s full name, address, nationality, and contact information. If the applicant is a legal entity (e.g., a corporation), the application must include the juristic person affidavit.
   • Representation of the Trademark: A clear and accurate representation of the trademark. This can be a word mark, a logo, a design, or a combination thereof. For color marks, the colors must be specified.
   • List of Goods or Services: A precise and comprehensive list of the goods or services for which the mark will be used. The goods and services must be classified according to the Nice Classification system, an international classification system for goods and services used for trademark registration purposes.
   • Power of Attorney (if applicable): If the applicant is represented by a trademark attorney, a power of attorney authorizing the attorney to act on the applicant’s behalf must be submitted. In case the power of attorney is made overseas, it must be notarized by the notary public.
3. Application Review: The DIP examiner will review the application to see whether it complies with the requirements and to assess whether the mark can be registered. The examination process involves two stages:
   • Preliminary Examination: The examiner checks that the application is complete, that all required documents have been submitted, and that the applicant meets the eligibility criteria.
   • Substantive Examination: The examiner assesses whether the mark is distinctive, not descriptive, not generic, and not confusingly similar to existing registered trademarks or pending applications. The examiner may also consider whether the mark is contrary to public order or morality.
4. Publication in the Trademark Gazette: If the examiner finds the mark registrable, the mark will be published in the Trademark Gazette. Within 60 days from the publication date, the concerned party may protest the registration.
5. Opposition Proceedings: Any party who believes that the registration of the mark would be detrimental to their interests can file an opposition within the 60-day publication period. Common grounds for opposition include:
   • The mark is confusingly similar to an existing registered trademark.
   • The mark is descriptive or generic.
   • The applicant is not the legitimate owner of the mark.
   • The mark is contrary to public order or morality.

The DIP will then review the case to determine whether the mark can be registered. This process typically involves the submission of supporting evidence and arguments by both the applicant and the opponent.

1. Registration and Issuance of Certificate: If no opposition is filed, or if the protest is unsuccessful, the DIP will register the trademark and issue a trademark registration certificate to the applicant. The certificate serves as proof of ownership and allow the trademark owner the exclusive rights to use and exploit.
2. Renewal of Registration: A trademark registration in Thailand is valid for ten years from the date of filing the application. The trademark registration can be renewed for subsequent ten years period by filing a renewal application with the DIP. The renewal application must be filed within three months prior to the expiration date or six months after the expiration date.

III. Enforcing Trademark Rights in Thailand: Strategies and Remedies

Once a trademark is registered, the owner should monitor the market for potential infringements and take appropriate action to protect their trademark. Trademark infringement occurs when a party uses a mark that is identical or similar to a registered trademark for goods or services that are the same as or similar to those for which the registered mark is used (same class of product/service duly registered), and such use may cause confusion to the public.

Effective enforcement strategies and remedies available in Thailand include:

• Cease and Desist Letter: The preliminary step to enforce the trademark rights is to send a formal cease and desist letter to the infringer. The letter demands that the infringer to stop using the infringing mark immediately and may also seek compensation for damages.
• Civil Litigation: If the infringer refuses to comply with the cease and desist letter, the trademark owner may file a lawsuit to the Intellectual Property and International Trade Court (IPITC) who has exclusive jurisdiction over intellectual property disputes in Thailand. Remedies available in civil litigation include:
  • Injunction: A court order prohibiting the infringer from continuing to use the infringing mark.
  • Damages: Financial compensation to compensate the trademark owner for losses suffered due to the infringement. Damages can include lost profits, lost sales, and damage to reputation. The trademark owner has duties to provide clear methodology of damages calculation as Thai courts only grant award base on “actual damage basis”. You may see more details of the “actual damage basis” in our article here https://legalconcept.co.th/actual-damages-concept-in-thai-law/.
  • Destruction of Infringing Goods: The court may order the relevant authority to destroy the counterfeit goods or goods bearing the infringing mark. Normally, the destruction process will be performed in government facilities and general public can attend and witness the process.
• Criminal Prosecution: In cases of counterfeiting or trademark infringements, criminal charges can be filed against the infringer. The trademark owner may file the case directly to the IPITC or through the investigation officer.

IV. Key Considerations for Businesses Seeking Trademark Protection in Thailand

• Select a Strong and Distinctive Trademark: Choose a mark that is inherently distinctive and not descriptive of the goods or services it represents. Marks that have no logical connection to the goods or services are easier to register than descriptive marks. Avoid generic terms that are commonly used to describe the goods or services.
• Register Early: File the trademark registration application with the DIP before public use to prevent other parties from registering your mark first. You do not need to wait for application approval before using the mark, as protection is retroactive to the application filing date.
• Conduct a Trademark Search: Before deciding to register the mark, it is highly recommended to conduct a trademark search through the DIP’s system to ensure that it is not already in use or registered by someone else. This search should cover not only registered trademarks but also pending applications.
• File Early and Strategically: File a trademark application as soon as possible to establish priority. Thailand follows a “first-to-file” system, meaning that the first party to file an application for a particular mark has priority over later filers. Consider filing applications for all important variations of your trademark (e.g., word mark, logo, color mark, altogether and separately).
• Maintain Accurate Records and Renew Registrations: Keep accurate records of your trademark registrations and renewal deadlines. File renewal applications on time to maintain continuous protection of your trademark.
• Consider International Registration: If you plan to expand your business internationally, consider seeking trademark protection in other countries. As Thailand is a member of The Madrid System for the International Registration of Marks, the trademark owner can register the mark for protection in the country members through the DIP.

V. Recent Developments in Thai Trademark Law

Thai trademark law is constantly developing to address new challenges and to align with international standards and guidelines from the World Intellectual Property Organization. Some recent developments include:

• Accession to the Madrid Protocol: Thailand become a member to the Madrid Protocol in 2017, making it easier for businesses to obtain trademark protection in Thailand and in other member countries through a single international application.
• Amendments to the Trademark Act: The Trademark Act has been amended several times in recent years to address issues such as the protection of geographical indications and the enforcement of trademark rights online.
• Application process: Thai government authorities are starting to accept paperwork online to reduce carbon emission and provide better facilitation to the public. Recently, the DIP also began to accept applications online through DIP’s system. This makes the application process simpler and more convenient.

VI. Conclusion

Protecting the trademark rights through trademark registration in Thailand is an important step for businesses seeking to establish a brand, prevent infringement, and secure a competitive advantage. By understanding the trademark registration process, enforcement mechanisms, and key considerations, businesses can effectively protect the valuable brand assets in Thai market.