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Filing and registration
Filing procedure Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
A notarised power of attorney is required from foreign applicants that wish to apply for trademark protection in Thailand. One power of attorney is sufficient for several trademark applications and no notarisation of the power of attorney is required.
What information and documentation must be submitted in a trademark registration application?
The following information must be provided as part of a trademark application in Thailand:
- the applicant’s name, address and nationality;
- a sample of the mark; and
- a list of the products or services to be used in relation to the mark.
Thailand generally follows the Nice Classification for Goods and Services, but the Department of Intellectual Property does not accept general headings (eg, clothing or cosmetics). As a result, applicants must specify precise details of the types of product or service that they wish to protect (eg, t-shirts and face powder). While it is possible to amend the list of products and services at a later stage, it is recommended that likely objections be anticipated and prepared for by heeding the advice of local trademark attorneys who are familiar with Thai practice.
What rules govern the representation of the mark in the application?
The applied for mark must be provided in a specific format of five centimetres by five centimetres, although a sample exceeding these dimensions may be submitted. The applicant must choose whether it wishes to protect specific colours or submit the trademark application without any colour claims. If a colour claim is filed, the mark will be registered specifically for the colours claimed by the applicant and the applicant must indicate Pantone codes for such colours. The applicant must indicate the pronunciation and meaning (if any) of each of the mark’s component.
Are multi-class applications allowed?
Multi-class applications are allowed in Thailand. However, since filing a multi-class filing confers no advantage regarding costs or time, most applicants choose to use separate trademark applications for different class filings. The separate filings strategy increases the probability of receiving a swift registration since a multi-class application would not be granted if one or more classes is objected to.
Is electronic filing available?
Electronic filing is available in Thailand and standardised application forms have been made available to applicants since July 2017.
What are the application fees?
There are two types of official fee to be paid to the Department of Intellectual Property when applying for a trademark. The first official fee is due on filing of the application (filing fee) and depends on the number of products or services per class that the applicant would like to protect. An individual filing fee of Bt1,000 (approximately $30) per product or service specified must be paid for applications containing five or fewer products or services. For trademark applications containing more than five products or services, a filing fee of Bt9,000 ($265) is due. A second official fee of Bt600 (approximately $18) is due on acceptance of the mark for registration (registration fee) per product or service specified for applications containing five or fewer products or services. For trademark applications containing more than five products or services, a registration fee of Bt5,600 ($160) is due. If the trademark applicant chooses to designate Thailand through the Madrid System for the International Registration of Marks, official fees of Sfr418 must be paid to the World Intellectual Property Organisation.
Priority How are priority rights claimed?
As Thailand is a party to the Paris Convention for the Protection of Intellectual Property, priority rights can be claimed within six months of the first filing of the mark in any other country or region bound by the Paris Convention or other agreements recognising priority rights to which Thailand is a party. An applicant wishing to claim priority of its foreign application must indicate in its Thai application the details of the priority application and submit a signed declaration of priority that is usually prepared by a local agent. The declaration of priority is not required for foreign applicants designating Thailand through an international application (eg, the Madrid System for the International Registration of Marks).
Searches Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are highly recommended in Thailand, as it takes between 12 to 18 months on average for a trademark application to be approved. Trademark searches help to ascertain likely objections and are helpful for detecting trademark squatters. Several types of availability search can be conducted, including:
- identical searches;
- similar searches (including phonetic transcription of marks in the Thai language); and
- device (logo) searches.
When determining the availability of a trademark in Thailand, it is important to check the class of products or services that are associated with the classes of products or services for which protection is sought. For example, a trademark application for food and beverage products should not be similar or identical to a service mark for catering services. It is also recommended to check translations and transliterations of a mark to avoid the risk of confusion or similarity as possible grounds for objection. The Thai trademark database is accessible, free of charge and available online. Local trademark agents usually include such search services in their filing fees.
Examination What factors does the authority consider in its examination of the application?
Once a trademark application has been filed, the Thai trademark registrar will initiate a formal examination of the application to ensure that all of the required information and documentation (eg, power of attorney) has been submitted by the applicant. The Thai trademark registrar will then perform a substantive examination to check that the mark is available, distinctive, not prohibited by law and not contrary to public order. In general, an examination takes several months due to the limited number of trademark registrars and frequent objections.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes, trademark registrars carry out extensive searches, sometimes including online searches if it is suspected that an applicant may be attempting to apply for a well-known mark. Thai trademark registrars will frequently raise objections due to the suggestive or descriptive nature of a mark (ie, a lack of distinctive character). In such case, an office action is sent to the applicant or its representative to amend the application or appeal a decision of refusal of grant.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
A trademark applicant must respond within 60 days from the date of receipt of an office action sent by the trademark examiner. Every office action letter from the trademark registrar can be appealed within 60 days from the date of receipt by the Trademark Board. Two situations usually occur when a trademark application is objected.
Request for amendments or notice of provisional refusal The trademark registrar will notify the applicant if the trademark application may be accepted for registration provided that the applicant complies with the registrar’s request(s). For example, the applicant may be asked to:
- specify further the types of product or services that it wishes to protect; or
- agree to a disclaimer on non-distinctive parts of its trademark application so that it can qualify for registration.
In such cases, the trademark registrar will consider the arguments and responses filed by the applicant and may:
- be satisfied with the response filed and accept the trademark application and order its publication in the Trademark Gazette;
- issue a second office action requesting further changes; or
- issue a notice of refusal.
Notice of final refusal If the trademark registrar considers that the trademark application cannot be accepted it will issue a notice of final refusal. Examples include where a mark conflicts with an earlier identical or similar trademark or is contrary to public order. In such situations, the applicant must file an appeal with the Trademark Board within 60 days of receipt of such notice if it wants the trademark application to remain active.
Can rejected applications be appealed? If so, what procedures apply?
Rejected applications must be appealed to the Trademark Board, the appellate body of the trademark office. The Trademark Board is composed of:
- the director general of the Department of Intellectual Property (as chair);
- the secretary general of the Juridical Council or his or her representative;
- the attorney general or his or her representative; and
- between eight and 12 qualified persons in the fields of law or commerce, who have IP or trademark experience and have been appointed as members by the Council of Ministers.
At least one-third of qualified members must be appointed from the private sector.
The Trademark Board has the power to:
- decide appeals against the trademark registrar’s orders or decisions; and
- consider and order petitions for cancellations of trademarks or trademark licence agreements.
The average timeframe for obtaining a decision from the Trademark Board is between 18 and 24 months. Trademark Board decisions can be appealed within 90 of notification.
Registration When does a trademark registration formally come into effect?
There are two important final stages following the examination of a trademark application: the publication stage and the registration stage.
Publication stage Once the trademark registrar agrees to grant trademark protection, it orders the trademark’s publication in the Trademark Gazette. Third parties may oppose a trademark registration by filing oppositions with the registrar.
If no opposition to the application is filed within the 60 days of publication, the registrar proceeds with the trademark’s registration. If an opposition is filed, the trademark applicant must file a counterstatement with the registrar within 60 days of receipt of a copy of the opposition to avoid a default cancellation of the trademark application.
After a counterstatement is filed, the registrar will make a decision on whether the opposition is receivable and inform the parties accordingly. Either party may appeal the registrar's decision to the Trademark Board and, subsequently, the IP Court.
Registration stage After the 60-day publication period has lapsed or the applicant has overcome an opposition, a request to pay official registration fees is issued by the registrar. The applicant must settle official registration fees within 60 days of receipt of the notice to pay. After registration, a trademark is deemed registered as of the date of the application’s submission.
What is the term of protection and how can a registration be renewed?
A registered mark is protected in Thailand for 10 years from its filing date (or the priority application’s filing date) and may be renewed for successive 10-year periods. A registered trademark must be renewed three months before the expiration of the 10-year period or during a six-month grace period after the expiry date (with a 20% surcharge of official renewal fees). Failure to renew the registration results in loss of the trademark protection.
What registration fees apply?
Registration fees depend on the number of products or services specified in an application. An individual registration fee of Bt600 (approximately $18) per product or service specified must be paid for applications containing five or fewer products or services. For trademark applications containing five or more products or services, a registration fee of Bt5,600 ($160) is due.
What is the usual timeframe from filing to registration?
The usual timeframe from filing to registration is 12 to 18 months.
Opposition Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Third parties can oppose an application within the 60-day opposition period following publication of the trademark application in the Trademark Gazette. Valid bases for opposition include a lack of distinctiveness or arguments that the mark is prohibited or identical or similar to a trademark registered by another party. The applicant has 60 days after the receipt of opposition from the registrar to file a counterstatement. In considering and deciding the opposition, the registrar may order the applicant and the opposing party to provide statements, explanations or other additional evidence. If the applicant or opposing party fails to comply with the registrar’s order within 60 days from the date of receipt of the order, the registrar will proceed to consider and decide the opposition on the basis of the evidence available. The decision regarding the opposition to registration is made by the registrar and notified to the parties.
What is the usual timeframe for opposition proceedings?
The usual timeframe for initial trademark registration opposition proceedings, excluding any appeals, is less than six months.
Are opposition decisions subject to appeal? If so, what procedures apply?
The trademark registration applicant and the opposing party have the right to appeal the registrar’s decision regarding the opposition. Appeals must be submitted to the Trademark Board within 60 days of the date of receipt of the registrar’s notification.
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