Any trademark that has already been in use in Thailand for a long time can be considered a dictated distinctive trademark, even if the above conditions are not met.
A mark may be considered distinctive by virtue of its use. For this purpose, the applicant must send to the DIP all evidence of the use of the brand, i.e. email signature, brochure, presentation, advertisement and others.
Some marks are expressly prohibited by law under the Trademarks Act and Ministerial Regulations, including:
|➤ Trademarks being contrary to public order or good morals|
|➤ Marks identical to or similar to well-known marks so that the public could be confused|
|➤ Geographical indications as protected by law|
|➤ State symbols or crests, royal seals, official seals, emblems and badges of royal orders and decorations, seals of office, of ministries and offices, departments or provinces|
|➤ Thai flag or standard royal flag or official flags, national emblems and flags of foreign states or international organizations|
|➤ Royal names, abbreviations of royal names, representations of the king, queen or heir to the throne, names, words, terms or emblems signifying the king, queen or heir to the throne or members of the royal family|
|➤ Other marks prescribed by ministerial notifications|
Before trademark registration, it is essential to check that an identical or similar mark has not already been registered. Indeed, the presence of a similar brand will result in the rejection of the trademark application. To determine the availability of a sign in Thailand, the following steps should be taken:
The existence of a trademark, even a notable one, for many years is not enough to obtain legal protection: third parties can take it, use it, and even register it. It is therefore essential to seek protection for your creation.
This is why national and international law allows entrepreneurs to register a brand so that only the creator can use it, through national or international intellectual property organisations.
The registration of a mark confers exploitation rights to protect your brand. This allows its creator to :
The application with the DIP is made via a form which can be submitted electronically on the DIP website or directly to the DIP department. Before submitting the form, we recommend that you follow the steps below to ensure that your trademark is registered.
Every trademark is related to an activity or a service. As such, your application must include all the goods and services that will be covered by your application.
Once you have identified them, you must classify them according to the international classification known as the Nice Classification and mention these classifications in your application form. For this purpose, there are 34 different classifications of products and 8 different classifications of services. If the applicant wishes to cover several goods and services, an application must be filed for each classification.
(For example, an application for protection for clothing type goods belongs to class 25).
Before filing your trademark, we recommend that you check that your trademark is available and can therefore be registered in Thailand or internationally. It is available if no imitation or reproduction is made of a sign that has already been registered.
The following documents should be sent:
|➤ An example of your trademark in black and white or in color with a maximum dimension of five cm by five cm|
|➤ A signed copy of the Company Director's passport or the applicant's passport|
|➤ The Company Affidavit of the company making the request and its original|
|➤ The applicant's information, namely: your full name, address, country and profession of the applicant|
|➤ The description of the services and products to be protected and representative of the trademark|
|➤ A power of attorney, this must be certified by a notary if the request is signed from abroad|
|➤ Country, date and number of the trademark application and in the countries in which your brand will be registered|
|➤ Date of first use of your mark (if applicable at the time of application)|
The Thai DIP department will send you an acknowledgement of receipt of your application. Processing times are more than 12 months from the date of submission of your application.
Once the trademark has been accepted by the DIP, your application will be published for a period of 90 days so that any other person can oppose your registration if necessary. If no opposition is filed during this period, the registration will be completed and the certificate of registration will be issued.
Once your application has been submitted, DIP officials will send you a letter informing the applicant of the outcome of the trademark registration. The processing time varies between 12 and 18 months depending on the complexity of your application.
In Thailand, the term of protection of a trademark is 10 years, but the duration of registration may vary from country to country depending on the legal provisions of the country.
The applicant has the possibility to renew the application for trademark protection after the end of the 10-year period. The application for renewal must be submitted to the DIP 90 days before the expiry of the 10 year period. If no renewal is submitted, the mark will not be registered and will therefore not benefit from legal protection.
Since November 7, 2017, anyone wishing to register their trademark in Thailand and benefit from an international registration will be able to apply to the DIP authorities. Indeed, since that date, Thailand has ratified the Madrid Treaty, allowing international protection applications to be accepted with the International Intellectual Property Organization (WIPO).
The Madrid system allows a brand to be registered in several countries via a form and to be registered in a single country by signing the Madrid Protocol.
The application for international registration can be made using a form specifying the list of countries in which the owner wishes to obtain protection for his mark and a property right.
Filing an international trademark allows you to register it in more than 122 countries and to proceed by filing an application. In order to register your international trademark in Thailand, several steps must be followed:
The first step is to register an international trademark with the Intellectual Property Office in Thailand. Then, you will have the possibility to extend this registration to 122 other countries by filling in an additional form.
After your international application has been submitted, the Thai DIP administration will forward the application for international protection to WIPO.
After receiving the application, WIPO will check the form of the international application. After acceptance, the mark will be recorded directly in an international register and published in the WIPO Gazette of International Marks.
Following this publication, WIPO will send the applicant a certificate of international registration and notify all countries that are to benefit from the protection of the mark.
An application which, after examination, is refused by the DIP may be appealed. Under Section 35 of the Thai Trademark Act BE 2534 (1991), the applicant has 60 days from the date of publication to appeal the refusal decision to the Office, Department of Intellectual Property in Thailand (DIP).
The filing fees for the registration of your brand are detailed as follows and according to the number of classes covering your protection:
|For a deposit in Thailand:||The administrative fee is THB 1000 per class|
|For international filing in Thailand:||Fees vary by country and can range from THB 35,000 to 50,000|