Trademark Registration in Thailand

* Introduction

The Thailand Trademark Act B.E. 2534 (1991) provides protection for trademarks, service marks, collective marks and certificate marks. According to Section 6, there are three requirements for registering a trademark in Thailand.

A trademark must:

(1)  be distinctive;
(2)  not be prohibited under this Act.
Trademarks having or consisting of any of the following characteristics shall not be registrable:
  • state arms or crests, royal flag, official seals, royal decoration
  • national flags of Thailand, royal standards or official flags
  • royal names or name of royal families, royal monograms, royal initials
  • representation of the King, Queen or royal descendants
  • names, word, words or sign which are representative of the King, Queen, royal descendants or royal families
  • official sign, emblems of the “Red Cross” or “Geneva Cross”
  • a trademark which is contrary to public order, morality or public policy
  • a trademark which is the same as a generally well-know trademark in accordance with the rules designated by the Ministry by notification or so similar thereto that the public may be confused as to the proprietor or origin of goods, regardless of whether the trademark is registered.
(3)  not be identical or similar to a trademark registered by another person.
The Act also requires that goods and services for protection must be specifically itemized. A broad term of goods or services will not be accepted.

* Registration

The trademark applications for registration must be filed with The Thai Department of Intellectual Property (DIP). Trademark applications are required to contain:

(1)  a power of attorney executed by an authorized person and notarized by either a notary public or Royal Thai Embassy in the Jurisdiction where the person resides;
(2)  complete applicant information indicating applicant’s name, address, nationality, and the resident and other contact information;
(3)  detailed specification of goods or services including information on international classes under which protection is sought;
(4)  20 specimens of the mark (should not larger than 5×5 centimeters in size).

* Priority Claims

In some cases, the applicant may claim the priority date of the filing date from the first application which was previously filed outside the Kingdom to be deemed the date of application in the Kingdom. In order to complete a priority claim in Thailand, the following document must be submitted together with the priority application or it shall be submitted within ninety days as from the filing date in Thailand (in case the request for late submission of the documents is applied):

(1)  A certified true copy of the first application issued by the foreign trademark office;

Note that the priority application shall be filed together with the trademark application within six months as from the filing date of prior application. Otherwise, the prior claim will not be applicable.

* Trademark Search

As mentioned above, the trademark must not be identical to or similar to the prior registered trademark of another proprietor. The proprietors of the trademark should conduct an intensive availability search to ensure their trademark has not been previously registered. The search may be conducted in various forms, including by official publication, computerized datum (for text and graphics) and microfiche.

* Proof of Use

Sometimes unexpected difficulties associated with in similar or identical trademark, such as lacking of distinctiveness, objections raised by the Registrar or challenges to ownership filed by the third parties and counter-measures may occur during the registration stage. To reduce the likelihood of the unexpected difficulties, the client should submit supporting documents which demonstrate the trademark’s existing reputation in Thailand. The supporting document should consist of copies of the Certificate of Trademark Registration or pending applications in other jurisdictions, evidence of advertising materials and/or invoices (showing the proprietor has formerly sold products containing the trademark).

* Time Frame

Normally, if no complications associated with the trademark application emerge, the Registrar will grant registration of the mark within 10 to 12 months.

* Recordal of the Assignment Agreement of Trademark

Either a trademark with an application pending or a trademark already granted registration can be assigned to any individual or juristic person. The required documents for recordal of the assignment of the mark are:

  • an assignment Agreement executed by assignor and assignee with notarization;
  • original Certificate of Trademark Registration;
  • a notarized Power of Attorney executed by assignee;
  • a notarized Power of Attorney executed by assignor;
  • the assignor and assignee’s identification documentation.

* Recordal of the Licensing Agreement of Trademark

The proprietor of the trademark may grant a license of the mark to any third party. After the license is executed the licensee’s use of the trademark shall be considered as use by the proprietor. The Trademark Licensing Agreement must be a written contract and registered with the Registrar at the DIP. The required documents for recordal of the Licensing Agreement of the Mark are:

(1)  License Agreement of the Trademark executed by Licensor and Licensee which contains
  • provision on the control of the quality of goods bearing the licensed mark;
  • indication of exclusive or non-exclusive right of licensee;
  • period of licensing (definite or indefinite period)
(2)  original Certificate of Trademark Registration;
(3)  a notarized Power of Attorney executed by licensee;
(4)  licensee’s identification documentation.