Why and how to register a trademark in Thailand

In Thailand, it is mandatory to register a trademark in order to obtain protection and proprietary rights for it, as Thailand is a “first-to-file” jurisdiction. However, in exceptional cases, well-known trademarks can be protected even if they have not been filed yet.

Trademark applications in Thailand are filed with the Department of Intellectual Property (DIP).

Trademarks do not need to be in use in Thailand in order to be filed or registered. However, extensive prior use of the mark may prove acquired distinctiveness, and as such help overcome objections raised on grounds of lack of distinctiveness.

Please note that in order to confer a trademark owner the right to use the trademark in any color combination the accompanied logo (device) for the application in Thailand should be in black and white. If the accompanied logo (device) is presented in color, the owner will only be conferred the right to use the trademark in the colors of the accompanied logo (device).

If you register a combined trademark (which includes both word elements and figurative elements) in Thailand, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.

Once a trademark has passed the examination by the trademarks office, it will be published in the Royal Gazette. Interested third parties will then have a period of 90 days during which they can file opposition actions against it, if they so wish. Opposition actions may be filed based on prior rights or absolute grounds.

Although use is not necessary for the trademark to register, after registration the trademark will have to be used. Cancellation actions for non-use may be presented against a trademark that has not been used during the three years preceding the filing of such an action. However, the amount of use required to prevent such vulnerability is minimal.

In Thailand, registered are valid for a period of ten (10) years starting from the application date, and can then be renewed indefinitely for further periods of ten years. The application for trademark renewal must be filed within the 90 days preceding the expiration date or during the grace period of six (6) months following it, upon payment of a late renewal additional fee. In order to renew a trademark, a new Power of Attorney will need to be provided even if the agent or attorney is the same as the one who filed the initial application. A copy of the trademark certificate must also be provided.

If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Thailand (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.

 

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