How to file trademark in Thailand: a comprehensive guide to protecting your trademark

An important step for businesses to safeguard their intellectual property in Thailand is filing for a trademark in this dynamic Southeast Asian market. This article outlines how to file trademark in Thailand, to provide essential information for both local and international applicants.

Who Can File Trademarks in Thailand?

Any legal or natural persons, regardless of nationality, may apply for trademark protection in Thailand. However, if the applicant does not reside or have a permanent business establishment in Thailand, a representative or an agent must be appointed to file the application. Foreign applicants that have filed a trademark application in another country and later file a registration application for the same trademark in Thailand within six months of the first foreign application may generally claim the first foreign filing date as the filing date in Thailand.

Definition of a Trademark in Thailand

In Thailand, a “Mark” is defined as a brand, name, word, letter, photograph, drawing, device, manual, signature, combination of colors, shape, or configuration of an object or any one or combination thereof; and a “Trademark” is defined as a mark used or proposed to be used on or in connection with goods to distinguish those trademarked goods from other trademarked goods.

Registration Authority and Residency Requirements

Trademarks in Thailand are registered with the Department of Intellectual Property (DIP). However, it’s important to note that non-residents must appoint a Thai resident as their representative and grant them power of attorney to file the application.

Prohibited Marks

Before filing, applicants should be aware that certain marks are prohibited under the Thailand Trademark Act, including:

1. Marks contrary to public morality, order, or policy
2. Marks identical to those prescribed by Ministerial notifications
3. National flags or emblems of Thailand, royal standard flags, or foreign national flags
4. Royal names or monograms
5. Marks similar to medals, diplomas, or certificates issued by the Thai government or its agencies

The first-to-file principle of trademark in Thailand

In Thailand, trademark ownership is determined on a first-to-file basis. It is therefore prudent for businesses that conduct (or envision that they will conduct) business in Thailand to file a trademark application, as it is difficult to challenge a prior identical or similar mark and the coexistence of identical or similar marks is prohibited in Thailand.

Required Documents for trademark filing in Thailand

To file a trademark in Thailand, the following documents and information are necessary:

1. An electronic sample of the mark (max 5cm x 5cm, in black and white or color)
2. Full name, address, country, and occupation of the applicant
3. Description of the designated goods and services
4. Notarized power of attorney (for applications through an agent)
5. Priority information (if claiming the right of priority)
6. Certified copy of the priority application with Thai translation (if applicable)
7. Date of first use of the trademark (if any)

Thailand uses a system of 34 different classifications for goods and services. Applicants must specify the appropriate class(es) for their trademark.

Application Process

1. Filing: file the trademark application in Thailand with all required documents to the DIP.
2. Examination: The registrar examines the application, typically taking 12 to 18 months to notify the applicant of the result.
3. Publication: If accepted, the mark is published for a 90-day opposition period.
4. Opposition Period: Third parties can file oppositions during this time. If an opposition is filed, the applicant has 60 days to file a counterstatement.
5. Registration: If no oppositions are filed (or are successfully overcome), the mark proceeds to registration.
6. Fee Payment: The applicant must pay the official fees within 30 days of the request from the registrar.
7. Certificate Issuance: Upon payment, the certificate of trademark registration in Thailand is issued.

Fast-Track Trademark Renewal

Thailand offers a fast-track system for trademark renewals, which can be completed in just 45 minutes without additional fees. To qualify, applicants must meet the following conditions:

1. The goods or services must not exceed 30 items
2. The application must be submitted by the owner or an appointed attorney
3. No changes to the registration details
4. Request for fast-track examination must be made at submission

Trademark Registration Through the Madrid System

The Madrid System allows for international registration of trademarks, enabling trademark holders to extend their protection globally. This system is particularly beneficial for businesses looking to operate in multiple countries.

WIPO plays a critical role in the Madrid System, handling the international aspect of trademark registration:

1. Receiving Applications: WIPO receives applications for international registration that are initially filed through the office in the applicant’s country of origin.
2. Classification and Processing: WIPO classifies the goods and services associated with the trademark, processes the application, and ensures it meets all requirements.
3. Registration and Notification: Once the application is processed, WIPO registers the trademark in its database, notifies the office of origin, and publishes the registered marks in a periodical gazette.

In conclusion, while the procedure to file a trademark in Thailand involves several steps and considerations, it provides effective protection for intellectual property rights. By carefully following these procedures and requirements, businesses can successfully secure their trademarks in the Thai market, safeguarding their brand identity and commercial interests.

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