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Rights and protection
Ownership Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
In Thailand, trademark ownership is determined on a first-to-file basis. It is therefore prudent for businesses that conduct (or envision that they will conduct) business in Thailand to file a trademark application, as it is difficult to challenge a prior identical or similar mark and the coexistence of identical or similar marks is prohibited in Thailand. Section 67 of the Trademark Act offers the possibility for any interested party to petition the IP Court to cancel a prior registered trademark within five years of registration by proving that it has better rights to the trademark. However, under existing case law, only marks widely known and used in Thailand can benefit from such protection.
Unregistered trademarks What legal protections are available to unregistered trademarks?
Unregistered trademarks are not well protected in Thailand. Pursuant to Section 46 of the Trademark Act, the law explicitly states that “no person shall be entitled to bring legal proceedings to prevent or to recover damages for the infringement of an unregistered trademark”.
Nominal protection is available under Section 272 of the Penal Code (Offences relating to Trade) against acts of passing off, which provides that:
“Whoever uses a name, figure, artificial mark or any wording used in the trade of others, or causes the same to appear on goods, packages, coverings, advertisements, price lists, business letters or the like with the intention of misleading the public about the proprietor of such goods or trade shall be liable to imprisonment for a period not exceeding one year or a fine not exceeding 2,000 Thai Baht (approximately 60 USD), or both.”
Owners of unregistered trademarks may also rely on Section 420 of the Civil and Commercial Code, which states that “a person who, wilfully or negligently, unlawfully injures the life, body, health, liberty, property or any right of another person, is said to commit a wrongful act and is bound to make compensation therefore”.
How are rights in unregistered marks established?
Rights in unregistered marks are established only in cases of clear infringement on a trademark owner’s demonstration that the infringer acted in bad faith.
Are any special rights and protections afforded to owners of well-known and famous marks?
As a signatory to the Paris Convention for the Protection of Intellectual Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, Thailand offers some protection to well-known marks. They are protected under Section 8(10) of the Trademark Act and the Ministerial Notification regarding Rules on the Determination of Well-Known Marks dated September 21 2004 under some restrictive conditions. To determine whether a mark is well known the applicant must show that it has been:
- used on goods or services or has been been used, advertised or used by other means in the usual manner and in good faith continuously;
- widely used, whether in Thailand or abroad, in the usual manner and in good faith to the extent that it is well known among the general public or those in the relevant industry in Thailand; and
- used to the extent that its reputation for quality is generally accepted among consumers.
Such use must be conducted by the applicant or the applicant’s authorised representative or licensee locally or abroad.
A system of recordation of well-known marks used to exist in Thailand, but was revoked in 2015. At present, trademarks may be officially recognised as well-known marks by:
- the trademark registrar’s discretion;
- the trademark board in appeal cases; and
- the IP or Supreme Court.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations are not formally recognised in Thailand. However, it is usually recommended that trademark registration in foreign jurisdictions be presented as part of the evidence in trademark litigation or appeal cases. Doing so can help to overcome objections or serve as evidence that a graphic representation is well known, provided that the mark is also well known in Thailand.
Registered trademarks What legal rights and protections are accorded to registered trademarks?
A registered trademark provides its owner with exclusive rights to use and exploit the mark. Further, a registered mark provides additional benefits, such as:
- preventing trademark squatting;
- providing evidence of ownership;
- facilitating licensing and assignment;
- enhancing share value; and
- offering significantly better enforcement options.
Who may register trademarks?
Any legal or natural persons, regardless of nationality, may apply for trademark protection in Thailand. Foreign applicants that have filed a trademark application in another country and later file a registration application for the same trademark in Thailand within six months of the first foreign application may generally claim the first foreign filing date as the filing date in Thailand (ie, a priority right).
What marks are registrable (including any non-traditional marks)?
Thailand accepts traditional marks (ie, word, semi-figurative and figurative marks) and non-traditional marks (eg, three dimensional marks and sound marks as of September 1 2017).
However, the definition of what constitutes a mark under the Trademark Act is narrow. A ‘mark’ is defined as “any photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colours, figurative element, sound or combination thereof”. To be registrable, a trademark must:
- be distinctive;
- not be prohibited under the Trademark Act; and
- be available (and not identical or confusingly similar to a prior registered trademark).
The Department of Intellectual Property is known to be strict regarding distinctiveness. Marks composed of numerals or letters that do not form a word (eg, DMC) are usually rejected or challenged. It is possible in certain situations to file disclaimers on descriptive or non-distinctive parts of a mark. However, such disclaimers also mean that the mark cannot be fully protected.
Can a mark acquire distinctiveness through use?
In Thailand, marks are deemed to be distinctive based on either their character or through use. At present, a trademark is considered distinctive through use only when such use is widespread and well known. An example is the restaurant chain and green tea brand OISHI. Because the term ‘Oishi’ means delicious in Japanese, the term, as a brand, would normally not receive IP protection for food products and services. However, years of intensive use in the local market have made the brand distinctive enough to receive IP protection. For Thai authorities to recognise a mark as distinctive by virtue of use, the applicant must provide significant evidence of the trademark’s use, such as copies of ads, invoices and catalogues.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
In addition to trademarks being refused for lack of distinctive character or availability, certain types of mark are explicitly prohibited by law. Prohibited trademarks include marks that are:
- contrary to public order, morality or public policy;
- inclusive of royal or official arms, crests or flags;
- representations of members of the Thai royal family; and
- identical or confusingly similar to a well-known mark.
Are collective and certification marks registrable? If so, under what conditions?
Collective and certification marks are registrable in Thailand, provided that they follow the same general requirements of other marks. Certification marks certify:
- the origin, composition, method of production, quality or other characteristics of certain goods; or
- the nature, quality, type or other characteristics of certain services of their owner.
Collective marks are marks that are used or proposed to be used by companies or enterprises of the same group or members of an association, cooperative, union, confederation, group of persons or any other state or private organisation. Applications for the registration of collective marks are usually submitted by a community or association.
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