Registrable Trademark in Thailand

In the era of competitive commerce, it can be denied that a trademark is important to the business to indicate the branding, quality and origin of the goods and services. It is not enough it can create the values and goodwill of a trademark. Therefore, most enterprises have tried to protect their trademark by registering them in worldwide range.

According to Trademark Act of B.E. 2534(1991) of Thailand, it has prescribed the criteria for registrable trademark. It would be explained as the following :

1. A trademark must have a distinctive function.

It must not describe the goods and services trading under that trademark, and it does not conclude with generic terms such as common words, geographical indications, domain names, etc.

2. A trademark must not identical or similar to another trademarks

It is not identical or similar to registered trademarks or prior trademark applications.

3. A trademark is not prohibited by the laws.

It is not contrast to the morality, public order or it refers to religions or beliefs.

If the mark is satisfied the mentioned criteria, then it can be assumed that that mark is optimistic to be registered in Thailand.

Thailand is a “first to file” country, in other words, if you intend to gain the trademark protection, you need to file the trademark application to the Department of Intellectual Property of Thailand (DIP). According to the Trademark Act of B.E. 2534(1991) of Thailand, it has described the requirements of eligible marks in Thailand. However, the applicant needs to complete the form in Thai language before submitting. Still, the trademark applicant must have the fixed place of business in Thailand. In case of non-resident, they need to appoint the local attorney who is Thai resident.

Before submitting the trademark application to the DIP, the applicant must have to prepared as the following :

1. Applicant details; full name, address, country and activity/occupation of the applicant

2. A clear sample of the logo

3. List of goods and service to be protected

4. Notarized Power of Attorney, an original of company registration certificate and signed passport copy for the authorized director(s) (For non-resident applicant)

5. Signed Thai Power of Attorney and copy of Thai corporate certificate or ID card (For Thai applicant)

In general, the average timeframe for completing the trademark registration in Thailand is about 9-18 months (smooth case only). There are insist within 4 main procedures explaining in the below:

After submitting the form to DIP along with the required documents, the applicant will receive the application number. Please be informed that the Register will not examine the mark until the application is completed and all the required documents are provided. Still, the official fees must be paid on the filing date.

After filing the application, a mark examination will be carried out by the Register to assess the eligibility of trademark that prescribed in the Trademark Act of B.E. 2534(1991) and similarity of the trademarks. Generally, it will take around 9 months of the filing date to complete this process.

If the Register requires the amendment or additional information, they will issue the Official Action. In the case of rejection, the Register will issue a formal rejection letter with a refusal statement.

If there are no rejection or official action, the trademark application will be published in the Trademark Gazette within 60-day period. During this stage, the third parties that might has an interest in this mark, they can file the opposition within the 60-day period. The trademark applicant can file the counterstatement to the Register within 60 days after the receiving a opposition notice date. However, the Register will examine based on the solid evidence before giving the final discretion. If the counterstatement is a failure, the trademark application will be cancelled within a 60-day period after receipt of the result.

After a 60-day publication period, if there is no opposition or the application can overcome the opposition, then the Register will issue the request of registration fee payment. The applicant must pay with 60-days. Since the DIP received the official fees, the Register will issue the Trademark Certificate. A registered mark will be protected 10 years from the filing date (or the date of filing of the claim priority application) and it needs to be renewed in every 10-year period.