Thailand recognizes three broad categories of property
rights:
1. Patents
2. Copyrights
3. Trademarks
1. Patents
Thailand promulgated its first patent law, the Patent
Act, in 1979, with significant amendments added in
1992. The Act protects both inventions and product
designs and pharmaceuticals. In 1997, a new intellectual
property and international trade court began operations,
which has significantly improved enforcement. Appeals
procedures at the trademark and patent offices have
also been streamlined.
In January 2008, the National Legislative Assembly
approved Thailand's plan to join the Paris Convention
and the Patent Cooperation Treaty. Thailand successfully
became a party to the Paris Convention on August 2,
2008 and is in the process of carrying out the necessary
legal procedures for accession to obtain membership
in the PCT. It is generally expected that adhesion
to the PCT will occur in the near future.
Since Thailand is a member of the Paris Convention,
the World Trade Organization (WTO) and thus the Agreement
on Trade-Related Aspects of Intellectual Property Rights
(TRIPs), nationals of the Paris Convention and WTO
member countries will receive the same protection accorded
to Thai nationals.
1.1 Invention
Patents
For an invention to be patentable, it must
– Have
novelty
– Involve
an inventive step
– Be
capable of being made or used for some kind of production activity
Therefore, the following would not qualify for patents:
– An
invention widely known or used by others in Thailand before the filing of
the patent application
– An
invention, the subject matter of which was described in a document or printed
publication, displayed or otherwise disclosed to the public in Thailand
or a foreign country prior to the date of the application for the patent.
– An
invention that has been granted a patent inside or outside Thailand prior to
the date of the patent application
– An
invention that is the subject of an abandoned application in Thailand; this
provision does not affect the rights of co-inventors and others who did not
apply for such patent shall not be affected
– An
invention for which an application for a patent was filed in a foreign country
more than 18 months prior to the date of the patent application, the foreign
patent not having been issued
The revised Patents Act provides that the following
are not patentable:
– Microbes
and any components thereof which exist naturally; animal, plant and
extracted substances from animals or plants
– Scientific
or mathematical rules or theories
– Computer
programs
– Methods
of diagnoses, treatment and care of human and animal diseases
– Inventions
that are contrary to public order or morality, public health or welfare
1.2 Patentable
Product Designs
A product design must be novel in order to be patented:
i.e., it must not fall under any of the following conditions:
– A
design widely known or used in Thailand before the filing of the patent application
– A
design picture, the subject matter or details of which have been displayed
or disclosed in a document or printed publication inside or outside of Thailand
before the filing of the application
– A
design that has been published in the patent journal under Section 65 and 28
before the filing of the patent application
– A
design that so nearly resembles any of the product designs indicated in the
points described above that it is apparently an imitation
1.3 Product
Designs Which Are Not Patentable
– Product
designs which are contrary to public order and good
morals
– Product
designs prescribed by Royal Decree
1.4. Eligibility
An inventor or product designer has the right to apply
for a patent, as does a successor or assignee of the
right. An assignment must be made in writing, signed
by both the assignor and the assignee.
If, during the course of employment, an employee or
contractor creates an invention or product design,
the right to apply for a patent belongs to the employer
unless otherwise provided by agreement.
The Patent Act requires that an applicant for a patent
must be a Thai national or a national of a country
which allows persons of Thai nationality to apply for
patents in that country.
The patent holder or applicant is entitled to the
following rights:
– A
patent for an invention is valid for a period of 20 years from the date of filing
the application; a patent for a product design is valid for a period of 10 years
from the date of filing the application. The time during which court proceedings
regarding the issuance of the patent are in process may be excluded
– During
the period of the validity of the patent, the patent holder has the exclusive
right to produce, use, sell, have for sale, offer for sale and import the
patented invention or design. Any act performed before the patent is granted,
that would otherwise constitute an infringement of the patent, is not deemed
an infringement
– A
patent holder has an exclusive right to use the words “Thai Patent”,
or an abbreviation or translation
thereof
– A
patent holder may assign the patent to another holder
– A
patent holder may grant a license to another person, subject to restrictions:
- The
patentee shall not impose upon the licensee any condition or restriction or
any royalty covenant that is an unfair restraint of competition.
Conditions, restrictions or covenants that unfairly restrain
competition shall be prescribed by a Ministerial Regulation
- A
patent holder may not require a licensee to pay a royalty or royalties
after the validity of the patent has expired
- Conditions,
restrictions, or royalties which are contrary to the above two
points are null and void
- Any assignment or license must be in writing and
officially registered
* Disclosure of the essentials or specifications
due to or in consequence of an unlawful act, or disclosure
of essentials or specifications by the inventor,
including display of the inventor’s work at
an international exhibition or an official public
exhibition provided such disclosure occurred within
the period of 12 months prior to the date of filing
the patent application shall not be deemed to be
disclosure under subsection 2.
1.5 Compulsory
Licenses
To discourage monopolies and the acquisition of patents
simply to prevent other persons from manufacturing
or producing the patented inventions or product designs,
Section 46 of the Patent Act provides that:
– At
any time after the expiration of three years from the grant of a patent or
four years from the date of filing an application for a patent, any person
may apply
to the Director-General for a compulsory license if, at the time of the application,
it appears that:
- For
no legitimate reason, there is no production of the patented product
nor application of the patented process in the country
- For
no legitimate reason, there is no sale of the product produced under
the patented process or there are sales of the same at unreasonably
high prices or in quantity insufficient to domestic public
demand
1.6 Cancellation
of Patents
A patent may be canceled under the following conditions:
– Although
a patent has been granted, any person who has an interest in the patent
or the public prosecutor may challenge its validity by petitioning the Court
for cancellation
– The
Director-General may ask the Board of Patents to cancel a patent in the following
cases:
- If
it appears that two years after the issue of a license under Section 50,
the licensing has been unable to prevent or alleviate the condition for
which a license was issued under Section 46 or 46 bis; or
- The
patentee has licensed another person to exercise the patent rights in
violation of Section 41
Before requesting the Board to cancel a patent, the
Director-General shall order an inquiry and notify
the patentee and licensees to submit their briefs within
60 days from the date of receipt of notification. The
Director-General may summon any person to make statement
or deliver any additional documents or items.
1.7 Foreign
Patents
A foreign patent that has not been granted a separate
patent in Thailand receives no protection under the
Patent Act. However, foreign patent holders or owners
of rights to inventions or designs in foreign countries
may enter into business transactions with parties in
Thailand and seek equivalent protection through contractual
obligations in the form of a licensing agreement.
Since foreign patents, inventions and designs receive
no protection under the Patent Act, no civil or criminal
action can be taken against a third party who produces
or sells a patented product in Thailand without paying
fees to the holder of the foreign patent or who applies
in Thailand for a patent on an invention or design
already patented in other countries. Nevertheless,
legal solutions to such conflicts may be available
under separate legislation.
2: Copyrights ©
The Copyright Act of 1994 protects literary, artistic
works and performance rights by making it unlawful
to reproduce or publish such works without the owner's
permission.
2.1 Works
Subject to Copyright
The Copyright Act protects works in the categories
of literary work, including computer programs; dramatic,
artistic and musical work; audiovisual material, cinematic
film, recorded material; disseminated pictures or disseminated
sound; or any other works in the fields of literature,
science or fine arts.
The Copyright Act protects computer software against
reproduction or adaptation, publicity and rental of
such software. Algorithms are not protected, however.
The “copyright” as defined by the Act
means “the exclusive right to take any action
concerning the work created or made by the creator”.
The Act also defines the word “creator” as
meaning the person who does the work or creates the
work, as defined by the Copyright Act.
A copyright belongs to the creator of a work, subject
to the following conditions:
– In
the case of unpublished work, the creator must be of Thai nationality or reside
in Thailand or be a national of or reside in a country which is a member
of the Convention on the Protection of Copyright, of which Thailand is
a member, provided that the residence at all times or most of the time is
spent on the creation of the work
– In
the case of published work, the first publication must be made in Thailand
or in a country that is a member of the Convention on the Protection of Copyright.
In the case where the first publication was made outside Thailand or
in a country which is not a member of the Convention, the work created must
have been published in Thailand or in a country which is a member ofthe
Convention within 30 days from the first publication, or the creator must have
the qualification as prescribed above at the time of the first publication.
In cases where the creator is required to be a person
of Thai nationality, and the creator is a juristic
person, such juristic person must be established under
the Civil and Commercial Code of Thailand.
2.2 Copyright
Infringement ©
The Copyright Act includes a comprehensive list of
the types of infringement covered by law:
Infringement by reproduction. The Act defines the
word “reproduction” as follows: “Reproduction
includes copying by whatever means, imitating, duplicating,
making printing blocks for, recording the sound of,
taking pictures of, or recording the sound and taking
pictures in substantial parts of the originals, from
copies or from the publication, regardless of whether
made in whole or in part.”
Infringement by adaptation. Adaptation, as defined
by the Act, means reproduction by conversion. This
involves substantial modification or emulation of the
original work without creating a new character.
– With
regard to a literary work, it shall include a translation,
a transformation or a collection by means of selection
and arrangement
– With regard to
a computer program, it shall include a reproduction by means of transformation,
modification of the program for the substantial part without the appearance
of creating a new work
– With regard to
dramatic work it shall include the transformation of a non-dramatic work into
a dramatic work or dramatic work to a non-dramatic work, whether in the original
language or in another language
– With regard to
artistic work, it shall include the transformation of a two-dimensional work
or a three-dimensional work into a three-dimensional work or a two-dimensional
work respectively, or the making of a model from the original work
– With regard to
musical work, it shall include an arrangement of tunes or an alteration of
lyrics and rhythm
Infringement by publicizing without permission. It
is an infringement of copyright to publicize a work
without the consent of the copyright owner. “Publicize” means “present
to the public by showing, lecturing, praying, playing,
presenting with by sound and/or picture, constructing,
distributing, selling, or by other means, the works
done or created.” The word “public” refers
to the person or persons who are present, and not to
the place where the performance occurs. A performance
will not be regarded as being carried on in public
if it is restricted to family and friends of the performer
or of whoever is responsible for the performance
Infringement by producing audiovisual material, cinematic
film, recorded material or dissemination of sound or
picture or by rebroadcasting of sounds and visual images,
wholly or in part, or arranging for dissemination of
sound or picture in public with commercial purposes
2.3 Exceptions
Under the Act, any act that might ordinarily be deemed
copyright infringement may not be so deemed if done
for the following purposes:
– Research
or education, without any commercial purposes
– For
one’s own benefit or for the benefit of a member of one’s own family,
or close relatives
– Comment,
criticism or recommendation of the work, with recognition of thecopyright
ownership of such work
– Presenting
news or otherwise reporting through the mass media, with recognition
of the copyright ownership of the work
– Reproduction,
adaptation, performance or presentation for a court hearing or consideration
by competent and authorized officers or for reporting on the outcome
of such hearing or consideration
– Copying,
duplicating or adapting parts of the work, or making extracts or summaries,
by teachers or by educational institutions for the purpose of distributing
or selling to students in school classes or in educational institutions,
provided that such activities are not for commercial purposes
– Using
the work as parts of questions and answers in examinations
In addition, citing, copying or imitating certain
parts of the copyrighted works under the Act, with
recognition of the copyright ownership of the work,
shall not be deemed to be copyright infringement.
The Act also entitles librarians to reproduce works
copyrighted under the Act, provided that complete reproduction
is not done for commercial purposes.
2.4 Works
Not Subject to Copyright under the Copyright Act.
The Act specifically provides that the following are
not deemed eligible for copyright protection:
– Daily
news and facts that are, by nature, merely news items
– The
Constitution and laws
– Announcements,
orders and regulations of ministries, bureaus, departments or
any other agency of the state or local jurisdiction
– Court
judgments, orders, rulings and official reports
– Translations
and collections of those items specified as above which are prepared
by government agencies or local administrations
2.5 International
Copyrights ©
The Copyright Act of 1994 protects copyright works
of a creator and the rights of a performer of a country
party to conventions on copyright protection or conventions
on performance rights protection to which Thailand
is a party, or for works copyrighted under international
organizations of which Thailand is a member.
2.6 Licensing
and Assignment of Copyrights
The 1994 Act provides that a copyright owner is entitled
to grant licenses to another person to use or exercise
rights with respect to his copyrighted work. The Act
requires that an assignment of copyright by means other
than inheritance must be made in writing and signed
by the copyright owner and the assignee. In the event
the assignment is made without specifying the assignment
period, the assignment shall be valid for 10 years.
In the event of an assignment of a copyright, the
creator of the copyrighted work retains the right to
forbid the assignee to distort, delete from, adapt,
or act otherwise in any manner against the work if
such act would cause damage or injury to the reputation
or prestige of the creator.
2.7 Copyright
Protection Period
A copyright in literature, drama, artistry or music
is valid throughout the lifetime of the creator, and
for an additional 50 years thereafter. In the event
the creator is a juristic person, the copyright will
be valid for a period of 50 years following the creation
of the work. The copyright for applied artistic work
is valid for a period of 25 years following the creation
of the work.
2.8 Penal
Provisions
Persons who commit copyright infringement by means
of reproduction without permission from the copyright
owner may be fined 20,000 to 200,000 baht. If the copyright
infringement was committed for business purposes, the
offender may face punishment of imprisonment for a
term from six months to four years, or a fine from
100,000 to 400,000 baht, or both.
3. Trademarks ™
The Trademark Act of Thailand of 1991 governs registration
of and provides protection for trademarks. The Act
defines a trademark as a symbol used in connection
with goods for indicating that they are the goods of
the owner of the trademark. The trademark must be “distinctive” and
not identical or similar to those registered by others,
and must not be prohibited by section 8 of the Trademark
Act of 1991.
3.1 Registration
Procedure
A trademark application must be completed by the proprietor
or his agent, in Thai, and filed with the Trademark
Office on official forms. The proprietor or his agent
must have a place of business or address in Thailand
at which he can be contacted by the Trademark Office.
If the Trademark Office deems the trademark registrable,
and if no opposition to the trademark arises within
90 days of its publication in the official journal,
the Trademark Registrar will grant a trademark registration.
3.2 Trademark
Registration Period
Trademark registration is effective for a period of
10 years. Owners of trademarks must file an application
for renewal at least 90 days prior to the expiration
of their current trademark registration. A renewed
trademark will be effective for an additional 10 years.
A trademark may be registered even if it is not being
actively used. However, failure to utilize the trademark
entitles third parties to challenge the rights of the
trademark owner.
3.3. Penal Provisions
for Trademark Infringement
The owner of a registered trademark has the exclusive
right to use the trademark, and may initiate legal
action against violators. It is a criminal offense
to represent a trademark as registered when it has
not been legally registered, or to sell, possess for
sale, or bring into the Kingdom objects under such
a pretense. This offense is punishable by imprisonment
of up to one year or a fine of up to 20,000 baht, or
both. Presenting false evidence while registering a
trademark is punishable by a term of imprisonment not
exceeding six months or a fine not exceeding 10,000
baht, or both.
Anyone who forges another person’s trademark,
registered in the Kingdom, or who sells, possesses
for sale, or brings into the Kingdom objects with a
forged trademark, shall be punishable by imprisonment
not exceeding four years or a fine not exceeding 400,000
baht, or both.
Anyone who imitates another person’s registered
trademark in order to mislead the public into believing
the imitation mark is that of the registered owner,
or who sells, possesses for sale, or brings into the
Kingdom objects with an imitated trademark, will be
punishable by imprisonment not exceeding two years
or a fine not exceeding 200,000 baht, or both. Whoever
repeats these offenses within a five-year period is
liable to double punishment.
3.4 The
Board of Trademark Committee
In 1991, the Board of Trademarks was established to
have the power and duties specified hereunder:
– To
decide an appeal, order, or decisions of the Registrar under Trademark Act
– To
order a withdrawal of the registration of a Trademark, service mark or certification
mark
– To
give advice to the Minister in the issuance of the Ministerial Regulations
on Notifications
– To
consider other matters assigned by the Minister
3.5 Service
Marks, Certification Marks and Collective Marks
As of February 1992, these variations on trademarks
are covered under all the provisions of the Act and,
and hence receive the same protection as trademarks
under the law. In the case of service marks, all the
words “goods” mentioned in the Act’s
provisions shall mean “services”.
Certification Marks
Applicants for certification marks must forward a
copy of the regulations concerning the use of the certification
mark together with the application for registration
and demonstrate that they are well qualified to certify
the merits of the goods or services.
The owner of a registered certification mark shall
not use it for his own goods or services and shall
not license any third person to grant certifications
to use the mark, although they may license a third
person to use the certification mark themselves. If
they violate this rule, they are subject to a fine
not exceeding 20,000 baht.
The regulations concerning the use of the certification
marks must:
– Specify
the origin, composition, manufacturing process, quality and other characteristics
of the goods and services to be certified
– Include
the rules, procedures and conditions in the granting of a license to use the
certification mark
Updated 30 October 2009
Source: The Thai Board of Investment
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