By: Franck Fougere & Hathaichanok Limpattanakul, ANANDA INTELLECTUAL PROPERTY, Thailand
Trademark registration in Thailand can safeguard a company’s reputation, prevent infringement, and enhance its competitiveness in the market. With a population of over 70 million people and a thriving economy, Thailand is an attractive market for both local and international businesses. In this article, we will explore the process of registering a trademark in Thailand, including the requirements, procedures, and timelines.
1. What can be registered as a trademark in Thailand?
The definition of what constitutes a mark under the Thai Trademark Act is a bit narrow. A mark is defined in Thailand as “any photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colors, figurative element, sound or combination thereof”.
In Thailand, a wide range of marks can be registered as trademarks, including:
- Words or word combinations
- Letters or numerals
- Figures, trademark symbols, or logos
- Three-dimensional shapes
- Sounds or melodies
- Colors or color combinations
The trademark must be distinctive and not similar to an existing registered trademark or a well-known mark. So it’s recommended that you conduct a trademark search before applying. Additionally, the trademark should not contain any offensive or illegal elements.
Thailand follows the general framework of the International Trademark Classification (Nice Classification) regarding the list of goods and services. However, there are some important specific conditions in Thailand:
- Broad product or service descriptions are not allowed in Thailand. For example, “clothing” or “cosmetics” are not accepted descriptions and shall be detailed such as “trousers”, “shirts”, “t-shirts” as per the Thai Classification of Products and Services. Objections from the Registrar regarding product and service descriptions are common in Thailand. It is best to avoid such objections by examining and addressing possible bases of objections prior to
filing. Objections may complicate the prosecution of a trademark application.
- Specific local products (such as exotic food products) have been added to the Thai classification.
2. Why can you be refused to register a trademark in Thailand?
There are 3 requirements for a mark to be accepted for registration in Thailand. The mark must be distinctive, not prohibited by law, and be available (i.e., not similar or identical to an already registered mark). If the mark does not satisfy any of these requirements, it will be refused. So, consider conveying a trademark check in various databases before applying. Also read an article about trademark registration in Indonesia.
A mark possessing one or more of the following characteristics is deemed distinctive in Thailand:
- a combination of colors represented in a special manner, stylized letters, stylized numerals or invented word(s)
- a personal name, a surname, a name of a legal person or trade name represented in a special manner
- a word or words having no direct reference to the character or quality of the goods and not being a geographical name prescribed by the law
- the signature of the applicant for registration or some predecessor in their business or the signature of another person with his or her permission
- a representation of the applicant or of another person with his or her permission or of a dead person with the permission of his or her ascendants, descendants and spouse, if any
- an invented device.
*Brands reproduced below are the exclusive property of their owners and are only provided as samples for educational purposes.
NOTE 1: A mark that has been extensively used in Thailand for a long period of time may be deemed distinctive even if it does not comply with the above requirements. For a trademark to be recognized as distinctive by virtue of usage, the applicant must provide evidence of use of the trademark, such as copies of advertisements, invoices, catalogs, etc.
NOTE 2: Disclaimers can be filed in case the mark contains non-distinctive parts. For example, a trademark containing the word “company” or a geographical name “Paris”.
Not prohibited by law
Some marks are explicitly prohibited by law under the Trademark Act and Ministerial Regulations, including:
- any mark which is contrary to public order, morality or public policy;
- marks identical with well-known marks as prescribed by the Ministerial Notifications, or so similar thereto that the public might be confused as to the owner or origin of the goods;
- geographical indications protected under the law;
- state arms or crests, royal seals, official seals, Chakri emblems, emblems and insignia of the royal orders and decorations, seals of office, seals of ministries, bureaus, departments or provinces;
- national flags of Thailand, royal standard flags or official flags, national emblems and flags of foreign states or international organizations;
- royal names, royal monograms, abbreviations of royal names or royal monograms, representations of the King, Queen or Heir to the Throne, names, words, terms or emblems signifying the King, Queen or Heir to the Throne or members of the royal family;
- a trademark that looks like or is similar to a medal, diploma, or certificate given out by the Thai government, a foreign government, or an international organization, unless you actually received the award and are using it with your trademark. This also applies to any other marks given out at trade exhibitions or competitions organized by these entities.
Not identical or similar to a registered trademark
We highly recommend checking the availability of a mark prior to filing a trademark application. Identical searches, similar searches (including phonetic transcription of marks in the Thai language) or device (logo) searches can be performed prior to filing a trademark application.
In determining the availability of a trademark in Thailand it is important to check classes of products/services that are associated with the classes of products/services for which protection is sought. For example, a trademark for food and beverages products shall not be similar or identical to a service mark for catering services.
We also recommend checking translations and transliterations of a mark to avoid the risk of confusion or similarity.
3. The process of trademark registration in Thailand
The average time frame for completing the registration process of a Thai trademark application is nine months. There are four main procedural stages for registration of a trademark application in Thailand: filing, examination, publication and registration.
To ensure mark protection, it is recommended that you file an application with the Department of Intellectual Property (DIP). Once you submit the application form to the DIP with all required documents, the trademark application will be given an application number and will be examined by the Registrar.
If a required document (such as the Power of Attorney or the company certificate) or information is missing, you can request a later filing of the missing documents. However, you cannot file an application without a sample mark or specification of the product/service category(ies) for which protection is sought.
After a complete application (with all required documents and fees) is submitted, the trademark Registrar will carry out an examination to verify that the application complies with the requirements of the Trademark Act (distinctiveness, availability, not prohibited by law). The examination process is usually completed within 9 months from the filing date.
If the Registrar does not make objections or request amendments, the application proceeds to the publication phase.
Publication of a trademark application in the Trademark Gazette starts the clock of a 60-day period during which third parties may oppose the trademark application by filing necessary documents with the Registrar. If no opposition to the application is filed within the 60-day period, the Registrar proceeds with registration of the trademark.
If an opposition is filed, the trademark applicant must file a counterstatement, within 60 days of receipt of a copy of the opposition, with the Registrar to avoid cancellation of the trademark application.
After a counterstatement is filed, the Registrar will make a decision on whether the opposition is receivable and will inform the parties accordingly. Either party may appeal the Registrar’s decision to the Trademark Board and, subsequently, the Intellectual Property Court.
After the 60-day publication period has lapsed, or the applicant has won an opposition, a request to pay official fees for registration is issued by the Registrar. The applicant must settle official fees for registration within 30 days. A registered mark is protected in Thailand for 10 years from date of filing (or date of filing of priority application) and may be renewed for successive periods of 10 years.
A registered trademark must be renewed within 3 months before the expiration of the 10-year period. If you don’t renew the registration, this will cause the trademark to lapse. Substantial official fees for each product/service apply and must be settled when submitting the renewal application.
4. Documents required for registering a trademark in Thailand
Requirements for filing a trademark application in Thailand are similar to filing requirements in other countries. There are, however, some specific conditions regarding products and services classification, and the calculation of official fees payable to the Department of Intellectual Property.
The documents and information required for filing a trademark application in Thailand are as follows:
- Full name, address, country and activity/occupation of the applicant;
- Electronic sample of the mark (recommended size 5×5 cm);
- List of goods and services to be protected;
- Notarized Power of Attorney (for foreign companies);
- Notarized Power of Attorney and copy of passport or other government-issued identification cards (for foreign individuals);
- Thai Power of Attorney and copy of Thai corporate certificate or ID card (for Thai applicants only);
- Translation of priority documents (if priority is claimed).
5. Trademark opposition process in Thailand
The opposition procedure is available against pending trademark applications (i.e., trademark applications which have been published but not yet registered).
Once your trademark application is published in the Trademark Gazette, someone else can file an objection if they believe they have a stronger claim to the trademark or if they think your trademark does not follow the rules of the Trademark Act. They must file their objection with the Registrar within 60 days of the publication date and explain their reasons for the objection.
If an opposition is filed, the Registrar must inform the applicant immediately. The applicant must file a counterstatement to the objection within 60 days of the date of receipt of a copy of the opposition.
The Registrar shall send a copy of the counterstatement to the opposing party immediately. The Registrar may order the opposing party or the applicant to give additional statements, written explanations or evidence.
The Registrar then gives written notification of his decision to the applicant and opposing party. The applicant or opposing party may appeal the decision of the Registrar to the Trademark Board within 60 days from the date of receipt of the notification. An appeal of the Trademark Board’s decision may be filed with the Intellectual Property Court within 90 days of the Trademark Board’s decision.
6. Costs of trademark registration in Thailand
The list of products or services for which protection is sought determines the amount of official fees to be paid to the Department of Intellectual Property.
- For 1-5 items, the official fees will be 1,000 THB per item at filing stage and 600 THB per item at registration stage; OR
- For more than 5 items, the official fees will be 9,000 THB per class at filing stage and 5,400 THB per class at registration stage
There is no official fee for filing a priority claim.
FIRST APPLICATION (ONE CLASS):
|1-5 items||27.77 USD (1,000 THB) per item|
|more than 5 items||250 USD (9,000 THB) per class|
Once the application is accepted for registration, our fees for reporting publication, attending payment of registration fees and sending certificate of registration are:
|1-5 items||16.66 USD (600 THB) per item|
|more than 5 items||150 USD (5,400 THB) per class|
Grand total for one trademark in one class
|1-5 items||44.44 USD (1,600 THB) per item|
|more than 5 items||400 USD (14,400 THB) per class|
The trademark registration cost in Thailand via the iPNOTE platform starts from as low as $650, which includes all government fees. Find the best trademark agent in Thailand on iPNOTE.
7. Final thoughts
Both unregistered trademarks and registered trademarks can be enforced in Thailand. However, it is recommended to seek trademark registration in Thailand as the registration accelerates the enforcement process and significantly reduces the costs for enforcement. Registration also improves the possibility of stopping infringement action.
Need help with trademark registration in Thailand? Contact ANANDA INTELLECTUAL PROPERTY now via IPNOTE to learn more and get started.
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