Trademark Registration Procedure
Although Thailand has adopted the tenth Edition of the WIPO International Classification of Goods and Services, the Trademark Office applies a strict-direction that goods and services must be individually specified and will reject descriptions of goods or services that are considered too broad or vague even if such descriptions can be found in the WIPO Classification. Descriptions of goods that include terms such as “etcetera” or “all goods in class” will thus be rejected.
Before any Trademark or Service Mark Registration, Anurak and Associates can conduct searches and generate an evaluation and then advise on the chances of success and the boundary of the Protection before the filing of the Application. Moreover, during the application period, the firm also offers assistance with the on-going application process; for example, reporting on any Registrar notifications. Furthermore, should any disputes arise after the Registration; the firm’s Litigation Department is available to assist on any legal matters.
Trademark Registration Procedure
Under the New Trademark Act implemented on July 28, 2016, a multi-class application is available. A trademark application normally takes approximately 12 to 18 months to proceed to registration if no objection from the Registrar or opposition from an interested party is encountered. There are three steps to registering a trademark in Thailand:
(1) The application will be examined by the Registrar, who may require amendments to the application and or object to registration of the application. If necessary, an appeal against the Registrar’s required amendments and or objections may be filed with the Trademark Board.
(2) Once the mark is accepted for publication, the mark will be advertised in the Thai Trademark Gazette. An opposition may be filed with the Registrar by any interested party during the 60-day period starting from the date of publication. The decision of the Registrar on the opposition may be appealed to the Trademark Committee by either party and the decision of the Trademark Committee may in turn be appealed to the Central Intellectual Property and International Trade Court.
(3) Finally, the Registrar will request payment of the registration fees. Upon payment of the registration fees, the Certificate of Registration will be issued.
Priority
An applicant who has filed an application in a foreign country may claim the first foreign filing date as the filing date in Thailand if the first foreign application was filed not more than six months prior to application in Thailand and the applicant is a Thai national or is based in Thailand, or is a national of or is based in a country which accords reciprocal rights to Thai nationals.
Term of Protection and Maintenance
The duration of a trademark registration is 10 years from the date of application. A renewal application must be filed during the 90-day period immediately preceding its expiry date. A grace period of 6 months after the expiry date is available under the New Act. The surcharge during the grace period is 20% in addition to the regular official fee.
Though filing a declaration or evidence of use to maintain registration is not compulsory, failure to use the mark without good reason for any consecutive three-year period will render registration of the mark vulnerable to cancellation. To satisfy the use requirements, use of the mark must be by the registered owner or registered licensee. In the case of non-use, any interested party may file a cancellation petition with the Trademark Committee.
Assignment and Licensing
Trademark assignment and license agreements must be in writing and registered with the Trademark Office. Such agreements must clearly identify the trademarks by description, application, registration and class. In the case of license, the goods or services to be licensed must also be clearly identified and the agreement must contain conditions to insure effective control by the registered owner of the goods over the quality of the goods or services.
Contact: Dr. Arthit Boribun | Email: ip@anuraklaw.com | Telephone: (66) 2879-6389