Following previous amendments in 2000, the Trademark Act BE 2534 (1991) is expected to be further amended in 2012, in order to, among other things:
- expand the scope of trademark protection;
- facilitate and speed up the trademark registration process; and
- adjust the official fees.
The draft amendment was in preparation for several years before it was approved by the Cabinet, reviewed by the Council of State and read by the House of Representatives on February 1 2012. It is currently under review by a reviewing committee of the House and is expected to be finally approved by the House in its second and third readings, and then by the Senate in May or June 2012. Once approved, it will be submitted for the royal endorsement and published in the Government Gazette. It is expected to become effective in the final quarter of 2012.
Major changes under the draft amendment following the first reading by the House of Representatives are as follows.
Scent marks and sound marks have been added to the definition of a 'trademark' and are now protected under the act. To be registrable, a scent mark must not directly describe the character or nature of the goods for which it is applied, or be the natural scent of the goods. A sound must not directly:
- describe the character or nature of the goods for which it is applied;
- be the natural sound of the goods; or
- be the sound produced by the function of the goods.
In order to speed up the registration process, the deadline for filing an appeal, opposition, counterstatement or disclaimer will be reduced from 90 days to 60 days from the date on which the relevant order was received from the Trademarks Office. This deadline cannot be extended.
Multiple-class applications will now be allowed, while single-class applications (as allowed under the current law) will also remain permissible.
A grace period for paying the official fee for renewal of a trademark registration will be introduced, for up to 210 days following the expiry date. However, a request for late payment of the renewal fee must be filed before the expiry date and a surcharge of 20% of the normal renewal fee will be added when the renewal fee is paid.
The official fees for filing applications, oppositions and appeals renewals will be increased, in most cases to twice the rates that have been in place since 1991.
At this time, the amendment will not include provisions to accommodate the international trademark registration under the Madrid Protocol and the Madrid Agreement. It will also not include landlord liability. Two other draft amendments are being prepared separately to cover these topics, which are expected to be submitted to the legislature in the next few years.
For further information on this topic please contact Kowit Somwaiya or Weerachai Uthaiphetra at LawPlus Ltd by telephone (+66 2 636 0662), fax (+66 2 636 0663) or email ([email protected] or [email protected]).