3.          Trademarks™

The Trademark Act of Thailand of 1991, as amended by Trademark Act (No. 2) of 2000, 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 under the Act.

3.1        Registration Procedure

A trademark (service mark, certification mark, collective mark) application must be:

·           Completed on an official form in the Thai language, with specimens of the mark attached.

·           Filed by the proprietor or his/her agent under a power of attorney, who must have a fixed place of business in Thailand or a contact address which the Trademark Registrar can contact.

·           Filed with the Department of Intellectual Property.

According to the Trademark Act, for purposes of instituting legal proceedings relating to trademarks, service marks, certification marks, and collective marks, if the applicant or proprietor of a mark is not domiciled in Thailand, the business office or premises of such person or his/her agent, as stated in the application or recorded on the register, shall be considered as the domicile of such person.

If the Trademark Office deems that the trademark can be registered, 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 from the filing date of the application. The validity term does not include the period of time involved in legal proceedings. Owners of trademarks must file an application for renewal within 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.

Registration of a geographical name as a trademark is quite restrictive, with only two exceptions: the name must not be a well-known geographical name, especially to the Thai public; the mark has gained recognition among the public through extensive use, proving that the product has been widely distributed and/or advertised under the mark for a long time, to the extent that Thai consumers are familiar with the product and can distinguish it from others.

Registration of a mark that is confusingly similar to a well-known mark, regardless of whether it has been registered in Thailand or not, is proscribed.

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 the 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 not exceeding one year or a fine of not exceeding 20,000 baht, or both. Presenting false evidence to register a trademark is punishable by a term of imprisonment of not exceeding six months or a fine of 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 of not exceeding four years or a fine of 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 of not exceeding two years or a fine of not exceeding 200,000 baht, or both.

Whoever repeats these offenses within a five-year period from the date of passing the punishment for another offense is liable to double punishment.

3.4        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 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 act as certifier by authorizing the use of 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 of 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 marks.

3.5        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 trademarks, service marks or certification marks;

·           To give advice to the Minister in the issuance of the Ministerial Regulations or Notifications;

·           To consider other matters assigned by the Minister.