Under the 2015 blueprint for the ASEAN Economic Community, member states, including Thailand, agreed collectively to join the Madrid Protocol for trade marks. The Madrid Protocol allows trade mark owners to obtain protection for their marks in multiple countries through a single application, with one set of fees and in one language.
At the time the government of Thailand agreed to accede to the Madrid Protocol, a number of elements of the country’s trade mark regime did not meet the required level of harmonisation with other Madrid protocol countries. In April this year, The Royal Gazette of Thailand published amendments to the Trade Mark Act which are designed to meet these requirements.
The amendments came into effect on 28 July 2016, and as a package they are set to benefit trade mark owners by broadening the range of marks that can be protected, reducing the amount of time taken to register a mark, strengthening enforcement and licensing arrangements, and reducing extra administrative complexities.
New Protection Options
The amendments allow for new types of marks to be registered, in particular Sound marks, which were previously not allowed, providing the sound is not descriptive of the goods. In addition the criteria used to determine distinctiveness have been clarified in order to make it easier to register three-dimensional marks.
Finally, multiple class applications will now be allowed meaning that a single application will be able to result in the registration of protection for a trade mark for use with multiple different types of stated goods and services.
One important change relates to the issue of the distinctiveness of a mark. The amendments extend the range of marks covered by the provision which allows marks to be accepted, which would otherwise not be considered to be distinctive, because they have ‘acquired distinctiveness’. This acquired distinctiveness, conferred by proving that the goods or services have been substantially sold, distributed or advertised in Thailand under the mark, was previously only available for certain types of marks. The option to attempt to prove this kind of distinctiveness is now available for all marks registrable in Thailand.
Time to grant and administration
A number of amendments reduce the deadlines and allowed times for aspects of the application process, allowing a faster time to registration. The opposition period has been reduced from 90 days to 60 days, while the deadline to respond to an office action or appeal has been likewise reduced to 60 days.
Though reducing the time available to applicants to complete aspects of the application process, the post-amendment deadlines are generally ample and the overall effect of changes will be to speed up the time to registration of trade marks.
Finally in terms of reducing complexity, previously in Thailand trade marks which were of a similar character had to be registered as ‘associated marks’. This requirement has been removed in the amended regime.
Strengthening owners’ rights – Enforcement and licensing
In the area of enforcement, a new offense of ‘refilling’ has been created. The change means that anyone who reuses or refills packaging bearing a registered trade mark in order to mislead consumers into believing that the packaged goods are those produced or distributed by the trade mark owner will be liable to a large fine and a prison sentence of up to four years.
Two changes provide more options and security for licensing arrangements in Thailand. Under the amendments, partial assignment of rights under a licensing arrangement will be allowed for some or all of the registered goods and services. Secondly, licence agreements will no longer terminate automatically at the transfer or inheritance of the rights to a mark unless this has been previously specified in the licence agreement.
Finally, a grace period of six months has been introduced after the expiry date of a trade mark during which the mark can still be renewed (with a small additional charge) ensuring further flexibility and security for mark owners.
It is not yet clear when Thailand will formally join the Madrid Protocol, as this will require not only a separate Royal Decree from the government, but also a formal application to WIPO.
However, while it may be some time before applicants are able to obtain trade mark protection in Thailand through the Madrid Protocol, in the meantime the recent changes to Thai law will make the trade mark regime in that country more familiar to international applicants, and should provide more flexible, streamlined and robust protection.