Thailand has established a comprehensive framework for safeguarding intellectual property (IP), covering six core categories: trademark, patent, copyright, trade secret, geographical indications and integrated circuit layout designs. Several international treaties have been ratified by Thailand, bringing its intellectual property laws in conformity with global standards. The Department of Intellectual Property (“DIP”) under the Ministry of Commerce is the regulatory authority for overseeing intellectual property in Thailand.
This chapter explores distinctions between three major categories of intellectual property in Thailand: (i) trademark; (ii) patent; and (iii) copyright focusing on legal concepts, registration procedures, rights of the owner and implications upon infringement.
1. Trademark
The Trademark Act B.E. 2534 (1991), as amended, (“Trademark Act”) provides legal protection for four types of marks, namely trademarks, service marks, certification marks and collective marks that are registered with the DIP. The marks eligible for registration under the Trademark Act should be distinctive, not confusingly similar to or identical with any registered trademarks and should not contain any prohibitive elements stipulated by the Trademark Act and relevant subordinate laws.
Both Thai and foreign applicants are eligible to file a trademark application with the DIP. The trademark registration process involves submitting an application to the DIP, upon which the DIP shall assess the eligibility of the applied marks. If deemed eligible, the trademark application is published in the Government Gazette for a 60-day public opposition period. If no oppositions arises during the publication, the trademark registration is approved. The owner of a registered trademark has exclusive rights over the trademark for 10 years from the date of filing, which can be renewed every 10 years.
Any production of counterfeit marks registered under the Trademark Act, including importation, distribution, possession or distribution of trademark-infringing products or services may result in imprisonment for a period of not exceeding four years or a fine of not exceeding THB 400,000. Imitating registered marks is punishable by imprisonment for a period of two years or a fine of not exceeding THB 200,000. Directors, managers or any persons with authority to represent the juristic person, who connive at the commission of such offences or fail to take reasonable action in preventing such offences, may be subject to the same penalties.
Trademark Registration under Madrid Protocol
The Madrid Protocol is an international treaty that offers trademark protection for trademark holders in multiple signatory countries, subject to applicable domestic laws. With Thailand’s accession in 2018, Thai trademark holders can apply for trademark protections through the Madrid Protocol in accordance with the DIP’s procedure, with the minimum requirement being that the applicant has successfully completed the trademark registration process with the DIP and is a Thai national or a juristic person with a headquarters, domicile, or principal place of business operation in Thailand.
2. Patent
The Patent Act B.E. 2522 (1979), as amended, (“Patent Act”) provides statutory protections for two major categories of patent, namely innovation patents and design patents.
An innovation patent may be granted for an invention that is considered innovative, involves an inventive step and is industrially applicable. A design patent, on the other hand, is issued when the design is novel to the industry. The patentable articles shall not possess qualifications that undermine the novelty requirement, such as being an invention or design that was widely known or used in Thailand, or to which a patent was granted in Thailand or aboard prior to the filing date. Some inventions, including naturally occurring microorganisms, scientific or mathematical rules or theories, computer programs, diagnostic methods and inventions harmful to public order, morals, health or welfare, are not eligible for patent protection under the Patent Act.
The petty patent, also known as a utility model, is a separate registration system for innovations that provides similar exclusive rights to patent holders as those of the innovation patent. The petty patent system, however, requires simpler qualifications by excluding the inventive-step threshold.
Qualification for patent registration is available to the inventor, an employer (in case of inventions or designs invented in the course of employment) or an assignor. In case of foreign applicants, it is required that they have a nationality of a country that is a signatory to a convention to which Thailand is also a signatory.
The patent registration procedure entails submitting an application to the DIP, followed by examination and publication for 90-day public opposition period. The protection period for innovation patent and design patent is 20 years and 10 years, respectively, from the date of filing in Thailand. The protection period for petty patent is 6 years from the filing date, and it can be renewed twice for a term of 2 years each.
Any infringement of the exclusive rights of the patentee without their consent may result in imprisonment of not exceeding 2 years, or a fine of not exceeding THB 400,000, or both. Directors, managers or any persons with authority to represent the juristic person, who connive at the commission of such offences or fail to take reasonable action in preventing such offences, may be subject to the same penalties.
Patent Registration under Patent Cooperation Treaty
Under the Patent Cooperation Treaty, an international convention of which Thailand has become a signatory in 2009, patentees can seek protection for their patented invention in all selected designated states, subject to applicable domestic laws, by filing a patent application.
3. Copyright
The Copyright Act B.E. 2537 (1994), as amended, (“Copyright Act”) provides copyright protections to a wide range of creative works of authorship, including literary, dramatic, artistic, musical, audiovisual, cinematographic, sound recording, sound and video broadcasting work, regardless of mode or form of expression. However, copyright protection does not extend to any idea, procedure, process, systems, method of use or operation, concept, principle, scientific or mathematical theory. Additionally, certain creative works, such as daily news, constitutions, legislations, court decisions and translation or compilation thereof, are not copyrightable.
By creating any work protected by copyright, the person is deemed an author of the creative work and automatically acquires copyright over such work without any registration requirement. Depending on the context in which the copyright work was created, copyright owners may be employees (in case of works created in the course of employment), contractors (in case of commissioned works) or an assignor. Upon acquisition of copyright, the copyright owner is entitled to an exclusive right to duplicate, modify, publish, allow any lease of the original works, provide benefits from such work to others and permit others to use the copyright works, with or without stipulated conditions.
In general, copyright subsists for the life of the author, plus 50 years. If the author is a juristic person, or in case of an anonymous author, copyright protection extends for 50 years from the date of creation or first publication.
Any copyright infringement, including but not limited to the sale, possession for sale, publication, and distribution of copyright- protected works that may cause damages to the author, with knowledge or foreseeability of the infringing nature of such articles, is punishable by imprisonment for a period of not exceeding one year or a fine of not exceeding THB 10,000- THB 100,000. Directors, managers or any persons with authority to represent the juristic person, who connive or fail to take reasonable action to prevent such offences may be subject to the same penalties.
The Copyright Act exempts certain acts that are regarded as fair use of copyright work and do not constitute infringement. These acts include, but are not limited to, any acts against a copyright work which does not interfere with a normal exploitation of the copyright owner (including but not limited to non-profit research or study, personal use, criticism and educational use), reproduction of lawfully-acquired copyright work in the computer system and a reasonable recitation of work with an acknowledgement of copyright ownership.
