Thailand: Changes to the Trademark Act

Aiming at making the protection of intellectual property a more efficient process, Thailand has amended its Trademarks Act of B.E. 2534 (1991).

The amendments were published in the Royal Gazette on April 29, 2016 and become effective on July 28, 90 days after the publication date.

Significant changes were introduced which we may summarize as follows.

• Extension to the definition of trademark

Sound trademarks were included to the definition of trademark. The registration of such type of trademarks will depend on their ability to identify goods or services, distinguishing them from those of other companies.

• Distinctiveness of a trademark

Trademarks consisting of invented words, numbers, characters and devices which are not descriptive are, with the amendments, presumed to have inherent distinctiveness.
Additionally, trademarks that lack distinctiveness are now registrable if distinctiveness is acquired through its use in Thailand.

• Multi-Class applications available

The requirement of filing one application per class of goods/services has been abandoned. It will now be possible to file multi-class applications, which reduces bureaucracy and helps to simplify the management of trademark portfolios.

• Association of trademarks no longer required

The Act revokes the requirement to file authorizations for trademarks that were deemed similar to one another.

• Imitation is reviewed beyond the applied for classes

The Registrar will be examining the availability of one trademark with regard to all classes, in condition that goods/services are related, and not only with regard to the specific class(es) in which an application will be filed. The scope of trademark protection will be therefore extended.

• Reduction of deadline for Oppositions and Responses to Official Actions

The non-extendable time period for filing amendments, appeals, oppositions, counterstatements or disclaimers will be reduced from 90 days to 60 days from the date of receipt of the relevant order from the Trademark Office.

• Deadline extension to pay registration fees

The deadline to pay registration fees has been extended from 30 to 60 days after the Registration Notification date with a possibility to request for further time extension.

• Renewal grace period

The Act adds a grace period of 6 months after the registration expiration date, during which registrants will be allowed to renew their registrations against payment of a late renewal fee.

• License Agreements

In accordance with the new Act, the assignment or inheritance of trademark ownership does not extinguish valid licenses previously agreed upon, unless the contrary is specified.

• Increase of official fees

The official fees for new applications, registration and renewal have been increased by an average of 50%.

• Preparations to join the Madrid Protocol

The amendments introduced by this new Act establish the legal basis for Thailand’s accession to the Madrid Protocol. However, further Royal Decrees will need to be issued in order to complete the adherence.