What are the Legal Issues Associated with Registering Trademarks in Thailand?

As mentioned in the FAQ “What are the Benefits Associated with Registering Trademarks in Thailand?”, in order for a trademark owner to have the full protection of Thai law the mark must first be registered with the Department of Intellectual Property (DIP).

In order for a mark to be registerable under Thai law it must:

  1. be distinctive
  2. not be the same as or similar to a trademark already registered by another person and
  3. not be otherwise prohibited by law.

Below is an explanation of some of the most common legal issues associated with registering marks in Thailand.

Distinctiveness

Determining whether a given mark is distinctive is a fairly subjective undertaking relying heavily on the discretion of the Registrar at the DIP. Thai trademark law does, however, provide guidance in this area.

A distinctive mark allows the consuming public to distinguish the goods and/or services with which the mark is used from other goods. Put simply, the mark helps the public to differentiate one particular product from other products.

The law, also, provides that marks possessing one or more of the following characteristics shall be deemed distinctive.

  1. a combination of colors represented in a special manner, stylized letter(s), numeral(s) or invented word(s);
  2. a word or words that has no direct reference to the character or quality of the goods and is not a geographical name designated by the Ministerial Notifications;
  3. a personal name, a surname not being such according to its ordinary signification, a name of a juristic person or a tradename represented in a special manner;
  4. the signature of the applicant for registration or some predecessor in his business or the signature of another person with his or her permission;
  5. 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;
  6. an invented device.

Much of the above criteria is straight forward. Below are three of the most common issues which arise concerning whether a mark is distinctive.

1. Stylized Letter(s), and Invented Word(s)

The rule as stated in item 1 above is that in order for letters (which do not form a word) to be distinctive under this criteria they must be stylized.

2. No Direct Reference to the Character or Quality of the Goods

According to item 2 above, if a word or words in a mark have no direct reference to the character or quality of the goods, the mark will be distinctive. By implication then, marks containing words that do directly reference the character or quality of the goods would not be distinctive under this criteria.

This principle also applies to slogans.

3. Exception: Proof of Use

There is, an exception to the above rules concerning distinctiveness. A trademark that has been extensively used in Thailand prior to submitting the trademark application can be deemed distinctive even if it does not comply with the above listed rules.

The standard commonly used to evaluate use is that the use must be sufficient to cause customers to easily associate the mark with the goods or services of the applicant. Many times this standard is quite difficult to meet.

Evidence of use which may be considered by the DIP in these situations includes copies of advertisements containing the mark, sales receipts and other evidence of use. In order to qualify for this exception, the applicant must be able to demonstrate proof of use in Thailand. Proof of use in other countries will not be considered.

Not the Same or Similar to a Trademark Registered by Another Party

If a mark is the same or similar to a mark previously registered by another party it will not be registerable. In determining whether a given mark is the same or similar only marks previously registered in Thailand are relevant. Marks registered in other countries will not be considered unless the mark is considered a generally famous mark (see below section).

Prior to submitting the trademark application, the applicant should conduct a database search at the DIP to determine whether anyone has previously registered a same or similar mark in Thailand. If so, the applicant will know (before submitting the application) that the application may be rejected on this basis.

Not Prohibited by Law

The law specifically states that marks having the following characteristics are not registerable:

  1. a mark, registered or not, which is identical with a well-known mark, as prescribed by the Ministerial Notifications, or so similar that the public might be confused as to the owner or origin of the goods;
  2. state arms or crests, royal seals, official seals, Chakkri emblems, emblems and insignia of the royal orders and decorations, seals of office, and seals of ministries, bureaus, departments or provinces;
  3. national flags of Thailand, royal standard flags or official flags;
  4. royal names, royal monograms, or abbreviations of royal names or royal monograms;
  5. representations of the King, Queen or Heir to the Throne;
  6. names, words, terms or emblems signifying the King, Queen or Heir to the Throne or members of the royal family;
  7. national emblems and flags of foreign states, emblems and flags of international organizations, emblems of heads of foreign states, official emblems, quality control symbols and certification symbols of foreign states or international organizations, and names and monograms of foreign states or international organizations, unless permission is given by the competent officer of the foreign state or international organization;
  8. official emblems and emblems of the Red Cross or appellations “Red Cross” or “Geneva Cross”;
  9. a mark identical with or similar to a medal, diploma or certificate or any other mark awarded at a trade exhibition or competition held by the Thai government or a Thai government agency for public enterprise or any other government organ of Thailand, foreign government or international organization, unless such medal, diploma, certificate or mark has been actually awarded to the applicant for goods and is used in combination with the trademark;
  10. any mark which is contrary to public order, morality or public policy;
  11. trademarks similar to those under 2, 3, 4, 6, 7 or 8;
  12. geographical indications protected under the law on geographical indications;
  13. other trademarks prescribed by the Ministerial Notifications.

1. Generally Famous Marks

As discussed in the previous section, in its determination of whether a given mark is the same or similar to another mark, the Registrar is generally just concerned with other marks registered in Thailand. Marks registered in other countries (but not in Thailand) are not taken into account. There is an exception to this rule, however, with regard to generally famous marks.

The concept here is that there are some marks that are so widely known in the world that they should be afforded protection even if they have not been registered in Thailand.

The DIP keeps a list on file which it refers to when determining whether a given mark is generally famous.

Other Considerations

The following are other things to keep in mind when registering a mark in Thailand.

1. Class System

The DIP operates under the principle that a given mark may receive protection only with regard to the specific kinds of products and/or services that the applicant designates in the application.

Note that the specific item (s) for which protection is sought must fall under the headings presented.

2. Disclaimers

Many marks contain a combination of words, numbers, letters and/or symbols. As explained above, some of these words, numbers letters, and/or symbols will be registerable and some will not.

Normally, if an applicant applies to register a mark and a portion of the mark is not registerable the Registrar will withhold approval of the application unless the applicant disclaims the portion that is unregisterable.

By disclaiming, the applicant is requesting protection of the mark as a whole, but not for the portion which is not registerable.

3. Registration Procedure

All applications to register trademarks in Thailand must be submitted to the DIP.

The application process consists of a review of the application by the Registrar and publication of the mark in the Royal Thai Gazette, as well as other procedural steps.

Normally, if no challenges or other complications arise, the DIP registrar will grant registration of the mark within eight to ten months of the initial filing date of the application.

4. Official Fees

The official fees payable to the DIP upon filing the registration are calculated based upon the number of items that the applicant requests protection for. The official charge is 500 baht per item.

If the application is later approved, the applicant will be required to pay another official fee based upon the number of items stated in the application which were approved by the registrar. The rate is 300 baht per approved item.

5. Renewals

Every ten years each registered trademark must be renewed or it will lapse.

This documentation must be submitted to the DIP together with a government renewal fee of 1,000 baht for each item the applicant requests protection for.