Thailand offers a comprehensive system for trademark protection, allowing businesses to safeguard their intellectual property in this important Southeast Asian market. This article outlines the key requirements and procedures for trademark application in Thailand.
What is a trademark in Thailand?
According to the Thailand IP Law, a trademark is defined as any word, phrase, logo, or sign a manufacturer uses to distinguish and identify its products from its competitors. There exist several different types of marks that are currently recognized under Thai law, ie. trademarks, service marks, certification marks, and collective marks.
First-to-File Principle of Thailand Trademark
Thailand has adopted the first-to-file system. If multiple applications are filed for the same mark, the registration is granted to the valid application with the earliest priority or filing date. If multiple applications have the same priority or filing date and meet all conditions, registration is granted to one application agreed upon by all applicants. Without such an agreement, all applications will be refused.
Filing Requirements of Thailand Trademark
To initiate the trademark registration process in Thailand, applicants must provide these information and documents:
- An electronic sample of the mark (max 5cm x 5cm, in black and white or color)
- Full name, address, country, and occupation of the applicant
- Description of the designated goods and services
Notably, Thailand allows multiple-class applications, enabling applicants to seek protection across various categories in a single filing.
Foreign applicants must appoint a registered Thai trademark attorney to represent them. An original Power of Attorney (POA) is required and should be submitted either:
- Simultaneously with the trademark application, or
- Within 90 days of filing, subject to a surcharge
For applicants claiming priority based on earlier filings in other jurisdictions, the following must be provided:
- A certified copy of the priority application/registration
- An English translation of the priority document
- A letter confirming the priority application/registration has not been abandoned or canceled
While these documents should be provided at the filing date, late submission is permitted within 60 days at no additional cost.
International Trademark Registration designating Thailand
Foreign applicants can register a trademark in Thailand by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) under the Madrid Agreement the Madrid Protocol, or both. The Department of Intellectual Property (DIP), if accepting the international application, issues a decision on acceptance for trademark protection in Thailand and publishes it in the Industrial Property Official Gazette.
The procedure of trademark application in Thailand involves several key steps and considerations. Below’s a detailed breakdown of the procedure:
1. Pre-Application Stage
Before filing, it’s advisable to conduct a thorough trademark search using the available databases (Thai Trademarks and ASEAN TMview) to ensure your mark doesn’t conflict with existing registrations.
For the preparation of a trademark application, applicants must gather all necessary documents, including:
- Applicant details (name, address, country of residence)
- Clear representation of the trademark
- List of goods/services categorized by class
- Power of Attorney (for foreign applicants)
- Priority documents (if claiming priority)
2. Filing the Application
File the application to the Department of Intellectual Property. Multiple-class applications are permitted, allowing protection across various categories in a single filing.
Contact ASL for Filing Trademark in Thailand:
Email: [email protected]
WhatsApp/WeChat: (+65) 8749 6692
3. Examination Process
The examination process for trademark applications in Thailand consists of two main stages. First, the Department of Intellectual Property (DIP) conducts a formal examination to ensure that all required documents and information are properly submitted and meet the necessary criteria. Following this, a substantive examination takes place, where an examiner carefully assesses the distinctiveness of the proposed mark and its compliance with Thai trademark law. This comprehensive examination process typically takes 12 to 18 months.
In cases where the examiner identifies issues or raises objections, the applicant is given a 60-day window to respond and address these concerns. It’s important to note that for international registrations designating Thailand, the response period is slightly longer at 90 days from the date of the provisional refusal. However, applicants should be aware that no extensions are permitted for this deadline.
4. Publication
If the application passes the examination, it is published in the official gazette for a 60-day opposition period. Third parties can file opposition during this period. If an opposition is filed, the applicant has 60 days to submit a counterstatement.
5. Registration
If no oppositions are filed or all oppositions are overcome, the trademark proceeds to registration. The applicant then must pay the official registration fee within 60 days of receiving the notification from the DIP. Upon payment of the fee, the DIP issues the certificate of registration.
6. Post-Registration
The initial registration grants the trademark owner exclusive rights for 10 years, starting from the original filing date of the application. To maintain these rights, trademark owners must be proactive about renewal. The renewal process can be initiated within a window that opens 90 days before the expiration date and extends up to 6 months after the expiration date. However, it’s important to note that renewals filed after the expiration date incur a 20% surcharge.
Besides registration and renewal, trademark owners must also be mindful of the use requirement in Thailand. To maintain the validity of the registration and prevent potential cancellation actions by third parties, the trademark must be actively used in commerce within Thailand. Failure to use the mark for a continuous period of three years can make the registration vulnerable to cancellation requests from third parties.
Additional Considerations:
- A power of attorney must be submitted with the application or within 90 days (with a surcharge).
- Priority Claims supporting documents must be submitted with the application or within 60 days.
- Foreign Applicants must appoint a local trademark attorney for representation.
By following this procedure carefully and meeting all requirements, applicants can successfully navigate the trademark registration process in Thailand. It’s important to stay attentive to deadlines and seek professional assistance when necessary, especially for foreign applicants who are required to work with local representatives.
Contact ASL for Filing Trademark in Thailand:
Email: [email protected]
WhatsApp/WeChat: (+65) 8749 6692
*** After more than 10 years of operation, ASL has been ranked as the top-tier IP Firm for years by Legal500, AsiaLaw, and WTR. We have been well known for OneTouch of IP protection in more than 27 countries with Budget savings from 15-35%. The more clients file trademark, patent, and industrial designs through ASL, the more savings our clients receive.
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