A trademark is a distinctive sign, which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the years these marks evolved into today's system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.
Trademark means a mark used or proposed to be used on or in connection with goods or services to distinguish the goods or services provider from goods or service of another provider. It includes photographs, drawing, device, logo, name, word, phrases, letter, numeral, signature, color combinations and shape or configuration of goods or any combination thereof.
The concept of trademarks is only to distinguish one product or service of some quality from another similar product or service of different quality.
The Trademarks Law is governed by the Trademarks Act (No.2) of B.E. 2543 (2000) with effect from 30th June, 2000.
International (Nice) Classification of Goods and Services has been adopted by Thailand in December 2000 for the Purposes of the Registration of Marks. The Act classifies goods and services into 42 groups and provides for legal protection and registration of the following:
- Service Marks.
- Certification Marks.
- Service Marks: A service mark distinguishes the services of one proprietor who is using the mark for rendering certain service from another service provider engaged in similar business.
- Certification marks: A certification mark certifies the origin, composition, method of production, quality or other characteristics of goods or to certify the nature, quality, type or other characteristics of services.
Collective marks: This so named as it is used by companies or enterprises of the same group or by members of an association, cooperative, union, confederation, group of persons or any other state-owned or private organizations.
PROTECTION OF TRADEMARKS THROUGH REGISTRATION
A Trademark can be protected through registration. The trademarks can be registered only if it is:
- not prohibited by this Act;
not identical or confusingly similar to another registered trademark.
DISTINCTIVENESS OF TRADEMARK
A distinctive trademark is one, which allows the public to distinguish between those trademarked goods or services and other goods or services
- The characteristics essential to a distinctive trademark are:
- a personal name, a surname which is not according to its ordinary signification, a name of juristic 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 is not a geographical name prescribed by the Minister in the Ministerial Notifications;
- a specially designed combination of colors, stylized letters, numerals or invented word;
- the signature of the applicant or another person who has given 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 heirs;
an invented device.
Trademarks which are not registrable:-
- state arms or crests, royal seals, official seals, Chakkri 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;
- royal names, royal monograms, abbreviations of royal names or royal monograms, or
- 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;
- national emblems and flags of foreign states, emblems and flags of international organizations, emblems of head of foreign states, official emblems and quality control and certification of foreign states or international organizations, names and monograms of foreign states or international organizations, unless permission is given by the competent officer of the foreign state or international organization;
- official emblems and emblems of the Red Cross or appellations "Red Cross" or "Geneva Cross";
- 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, a 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;
- any mark which is contrary to public order, morality or public policy;
- a mark registered or not, which is identical with a well-known mark 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 on geographical indications;
Procedure for registration
- An application for registration of a trademark may be made for specific goods in one class or in different classes to the Registrar of trademarks.
- On receipt of the application the registrar conduct a search to know whether there
If such application is for goods of the same class or for goods of a different class found by the Registrar to be of the same character, he shall not register such trademark.
- is identical with a trademark already registered by another person; or
- is so similar to a registered trademark of another person that the public might be confused or misled as to the owner or origin of the goods or services,
- If, the Registrar is of the opinion that the entire trademark or any essential part thereof is not registrable the Registrar shall refuse registration and shall, without delay, in writing notify the applicant of the order giving the grounds therefor.
- If, in the opinion of the Registrar, a trademark considered as a whole is registrable but contains one or more parts which are common to the trade for some types or classes of goods such that no applicant should have exclusive right thereto or which are not distinctive, the Registrar shall make either of the following:
order the applicant, within ninety days from receipt of the order, to disclaim exclusive right to use of such part of the trademark;
order the applicant, within ninety days from receipt of the order, to make such other disclaimer as the Registrar may consider necessary for the purpose of defining the rights of the owner under such registrations.
- If an application for registration of a trademark is considered acceptable, the Registrar shall be order the application to be published.
- The publication of applications shall be in accordance with the procedures prescribed in the Ministerial Regulations.
- After the publication of a trademark application if any person thinks that he has better right in the trademark than the applicant or that the trademark is not registrable under the provisions of this Act may, within ninety days from the date of publication file a notice of opposition with the Registrar stating the grounds of the opposition.
- If an opposition is filed under the Registrar shall send a copy thereof to the applicant without delay.
- The applicant shall, within ninety days from the date of receipt of the copy of the opposition, file a counter-statement, in the form prescribed by the Director-General, stating the grounds on which he relies in support of his application.
- The Registrar shall send a copy of the counter-statement to the person opposing without delay.
If the applicant fails to submit the counter statement it shall be deemed to have abandoned his application.
Upon registration of a trademark, the Registrar shall issue to the applicant a certificate of registration. A person who is registered as the owner of a trademark shall have the exclusive right to use it for the item for which it is registered.
The applicant may appeal against the Registrar to the Trademark Board within ninety days from receipt thereof. Decisions of the Trademark Board shall be final.
If the Board has decided that an order of the Registrar is correct, the Registrar shall proceed to process such application.
If the Board has decided that an order of the Registrar under is correct, the applicant shall comply with the order of the Registrar within ninety days from receipt of the decision of the Board.
If the applicant does not appeal to the Trademarks Board and does not comply with an order of the Registrar as the case may be, or if the applicant files an appeal, but does not comply the order of the Board, the application shall be deemed abandoned.
If the Registrar is of the opinion that there has been honest concurrent users to special circumstances which make it proper to do so, the Registrar may allow the registration by more than one owner of a trademark which is identical with or similar to a registered trademark subject to conditions.
APPLICATION FILED IN FOREIGN COUNTRIES
A person who has filed a trademark application in a foreign country and files an application for the registration of the trademark in Thailand within six months from the first foreign application, he may claim the first foreign filing date as the filing date in Thailand if he possesses one of the following qualifications:
- being a Thai national or a juristic person having its headquaters located in Thailand;
- being a national of a country party to a convention or international agreement on trademark protection to which Thailand is also a party;
- being a national of a country which accords the same rights to Thai nationals or juristic persons having their headquaters located in Thailand;
being domiciled or having a real and effective industrial or commercial establishment in Thailand or a country party to a convention or international agreement on trademark protection to which Thailand is also a party.
In the case where the first foreign application has been refused, or withdrawn or abandoned by the applicant, he may not claim above mentioned right.
TERMS OF TRADEMARKS IN THAILAND
The registration of a trademark shall have a term of ten years from the date of registration. The owner of a trademark who wants to renew the term of his trademark registration shall apply to the Registrar within ninety days before the expiration of the term. The Act reduces the time period, which must expire before cancellation of a registration for non-use for three years.
Within five years from the date of the Registrar's order to register a trademark any interested person may petition the the Intellectual Property and International Trade Court, to cancel a trademark registration by showing that he has better rights in the trademark than the person registered as its owner.
The owner of a registered trademark may give license through an agreement to another person to use the trademark for all or some of the goods for which the trademark is registered.
The use of the trademark on goods by the licensee in his business shall be deemed as the use by the trademark owner.
INFRINGEMENT AND PENALTIES FOR INFRINGEMENT
Whoever uses the trademark without license of the owner of the trademark is said to infringe the trademark. In the event of infringement Royal Thai Police can be informed to inspect, search and seize the infringed articles.
Any person who counterfeits a trademark, service mark, certification mark or collective mark registered in Thailand by another person shall be liable to imprisonment not exceeding four years or a fine of not exceeding four hundred thousand Baht or both.
Any person who imitates a trademark, service mark, certification mark or collective mark registered in the Kingdom by another person in order to mislead the public into believing that it is the trademark, service mark, certification mark or collective mark of such other person shall be liable to imprisonment not exceeding two years or a fine of not exceeding two hundred thousand Baht or both.