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INTELLECTUAL PROPERTY

IP PROTECTION IN THAILAND:

TRADEMARK SEARCH

Before filing a trademark application in Thailand, it is highly recommended to conduct a trademark search to ensure that there isn’t any trademark application in Thailand identical or similar to the intended mark, and also to ensure that the mark in question is registrable and not prohibited under Thai law.

Smart Legal Solutions provides clear search reports conducted at the Thai Department of Intellectual Property (DIP) about the real possibilities of registering successfully a trademark in Thailand.

Our search reports include a legal explanation about the fulfilment or not of the legal requirements regarding the registrability of a mark in accordance with the Thai law, and a list of similar marks that could be a hindrance the registration, along with our expert opinion about how they may affect to the registration process of the intended mark.

TRADEMARK APPLICATION

The primary governing law for trademarks in Thailand is the Thai Trademark Act. A trademark is a distinctive sign that can be represented graphically and distinguishes the goods or services of one company from those of another.

Trademarks are one of the most valuable assets for a company since are the main tool to differentiate their products in the trade from those of its competitors.

The owner of a registered trademark has an exclusive right in respect of his mark. It gives him the right to use the mark and to prevent unauthorized third parties from using the mark.

Main types of marks:

Word marks: formed by one or more words.
Device (Graphic) marks: figures, drawings or logos.
Mixed marks: combination of words and drawings or logos.

Although Thailand has adopted the WIPO International Classification of Goods and Services, the Thai Trademark Office is very strict regarding the description of the goods applied, which must be specifically itemized due to a broad description of goods might not be accepted.

There are 3 legal requirements for a mark to be registrable in Thailand:

Be distinctive
Not be prohibited by the Thai Trademark Law
Not be identical or confusingly similar to a previous Thai trademark

The required documents for filing trademark application(s) without priority claim in Thailand are as follows:

Notarized Power of Attorney (for foreign applicants)
Thai Power of Attorney and copy of Thai corporate certificate or ID card (for Thai applicants only)
Clear specimen of trademark
List of goods/ services
Name of applicant and address

A smooth application (without facing any objection or opposition) may take approximately 12 months to complete the registration process in Thailand.

PATENT

APPLICATION

The primary governing law for patents in Thailand is the Thai Patent Act. A patent is an exclusive right granted for an invention with the purpose of protecting the innovation for a limited time. A patent application must include a description of the invention and one or more claims that define the invention.

At Smart Legal Solutions, we assist companies and independent inventors in researching, developing and protecting their inventions in Thailand through the filing and prosecution of their patents.

Since 2009 Thailand is a member of the international patent law treaty Patent Cooperation Treaty (PCT). The PCT facilitates patent protection for an invention simultaneously in a large number of countries by filing a single international patent application. However, the application process of national phase entry is necessary to obtain a granted patent in a selected country.

In accordance with the requirements specified on the Thai Patent Act B.E. 2522 (1979) a patent may be granted only if the invention fulfils the following conditions:

(1) new invention;

(2) it involves an inventive step; and

(3) it is capable of industrial application.

The different types of patents in Thailand are: Patent for Invention; Petty Patent and Design Patent.

The protecting period for Patents for invention is 20 years, however the protecting period for Petty Patent and Design Patent is 10 years. The average length of time for a patent application to be granted ranges from five to eight years from the Thai filing date.

LICENSE AGREEMENT

License agreements can be conducted for trademarks, patents and copyright and they can be registered at the Thai Department of Intellectual Property.

Trademarks:

In order to receive royalties, a trademark owner may license out its trademark rights to another party. A license agreement is a formal agreement whereby a trademark owner (Licensor) grants permission to another (Licensee) to use that trademark on mutually agreed terms and conditions.

According to the Thai Trademark Act, the owner of a registered trademark may license another person to use a trademark for the goods which the trademark is registered by a license agreement, according to the following conditions:

The license agreement must be in writing and registered with the Trademark Registrar
The license agreement must have terms and conditions that enable the licensor to ensure sufficient quality control for products manufactured under the agreement in order to be registered
The goods or services to be licensed must be clearly identified on the agreement

Patents:

License Agreement to use a patent is a contract whereby the patent/petty patent owners grants the specific right to the licensee. The permission shall not exceed the following protection period as prescribed by law:

The protection period of invention patent lasts 20 years.
The protection period of petty patent lasts 6 years, or upon the petty patent renewal application.

Conditions of application submission for patent license agreement:

1. To register a license agreement, the applicant shall submit the form as determined by the Director-General, together with a licensing contract to use the invention patent/petty patent.

2. Authorization. In case the applicant of the patent does not reside in the Kingdom of Thailand, he shall authorize the patent agent/patent attorney registered with the Director-General of the Department of Intellectual Property to act on his behalf. In this regard, the power of attorney shall be presented to the Director-General in accordance with the Thai regulations.

A copyright license agreement allows the licensor (the copyright owner) to give permission to a licensee (the receiver of the rights) to temporarily use, reproduce, or otherwise commercialize the copyrighted material.

COPYRIGHT

The primary governing law for copyright in Thailand is the Thai Copyright Act. A copyright is an intellectual property right that grants ownership rights to creators of original works of physical expressions of ideas (for example: literary works, audio-visual works, software, sculptures, pictures, works of architecture, works of applied art etc.).

Copyright grants authors, artists and other creators a moral right as well as the exclusive right to use, publish, and commercialize their work.

Copyright registration serves to establish a legally basis of ownership to a created work. Recorded copyrights provide protection against competing claims to a work's ownership and use.

Copyright registration process in Thailand involves filing the application, examination, acceptance of the application, electronic storage of the application, and the issuance of a certificate of registration. The process typically takes two to four months to complete.

The rights and protections granted in copyright depends on whether the copyright owner is an individual or a juristic entity and whether the work was previously published:

Unpublished works belonging to individuals are provided copyright protection for the duration of the owner's life and 50 years after the owner's death. If the work is jointly owned by several authors, copyright protection is granted for the lifetime and subsequent 50 year after the death of the last surviving joint author.

Published works belonging to individuals are granted copyright protection for 50 years from the work's first publication date.

Unpublished works belonging to juristic entities are granted copyright protection for 50 years from the date of the work's creation.

Published works belonging to juristic entities are granted copyright protection for 50 years from the work's first publication date.