Intellectual Property Protection Strategies for Businesses Expanding into Thailand

Thailand’s inviting business culture has garnered international interest, making it a prime destination for expansion.However, delving into the Thai market requires a thorough understanding of the country’s Intellectual Property (IP) laws. Protecting IP can be done through three general approaches: 

• • Maintaining strict confidentiality of valuable assets
  • Registering industrial property rights
  • Utilizing IP-related agreements such as non-disclosure agreements, technology transfer agreements, franchising, licensing agreements, and incorporating IP provisions in commercial agreements

Prior to taking action, it is important to identify the IP assets that require protection. There are four primary categories:

• • Patents: This protects new and undisclosed inventions, typically new products or processes.
  • Trademarks: Used to identify and distinguish the products or services of a company from its competitors.
  • Copyrights: This protects original creative works including literature, software, photography, music, artwork, and architectural work.
  • Trade Secrets: Though not formally registered, trade secrets protect confidential business information that grants a competitive advantage and is not known to others.

Protecting Patents in Thailand

The Thai Patent Act provides protection for three types of patents:

Novelty is an essential requirement for a patent to be granted in Thailand. According to Thai law, an invention is not considered new if it is part of the state of the art, which includes:

1. 1. Well-known or used inventions in the country before the patent application date
   2. Inventions outlined in publicly disclosed documents or publications either in Thailand or abroad before the application date
   3. Patented inventions in Thailand or other countries
   4. Inventions for a patent application that was filed abroad, more than eighteen months before the patent application date
   5. Inventions for a patent application that was filed in Thailand or abroad, and the application was published before the patent application date

Patent Examiners conduct novelty checks not only in Thailand, but also in international patent databases, and will check patents granted overseas.

In Thailand, certain things are ineligible for patent protection, including:

• • Microorganisms found in nature or substances extracted from animals or plants
  • Scientific or mathematical rules and theories
  • Computer programs (copyright protected)
  • Processes for diagnosing, treating, or curing human or animal diseases
  • Inventions conflicting with public order, morality, public health, or welfare

Patents for Inventions

To register patents for inventions in Thailand, two filing systems are available:

• • National Application – File directly in Thailand or within 12 months of a priority application in another country.
  • Patent Cooperation Treaty (PCT) System – The PCT system makes it possible to:
  • Seek simultaneous patent protection in Thailand and numerous PCT Contracting States by filing an international patent application to the Thai Department of Intellectual Property (DIP) or the International Bureau of the World Intellectual Property Organization.
  • Seek patent protection in Thailand for an invention previously filed under an international patent application in another PCT Contracting State (National Phase).

A patent application in Thailand requires:

• • A detailed description of the invention, which outlines the best mode of utilizing the invention.
  • An abstract
  • A title
  • Drawings (if applicable)
  • Clear, concise claims to properly define the patentee’s exclusive rights

All documents must be submitted in Thai to the DIP. Additionally, due to the backlog of patent applications currently awaiting examination, wait times for examining an invention patent application pose a significant challenge for new applicants.

Petty Patent

Petty Patents, also called utility models, present a viable alternative. They offer a shorter protection period for inventions that are new and industrially applicable, but lack significant inventive qualities.

In Thailand, these are widely embraced among Thai companies or those not seeking protection beyond 10 years. Petty patents are typically approved within a year and a half due to a simplified formality check.

Design Patent

Design patents are considerably popular in Thailand, appealing to both local and foreign applicants. They aim to protect the aesthetics of an article, including features related to its shape, configuration, or pattern.

According to Thai law, each design application should focus on a single design. Therefore, assuming multiple embodiments need protection, separate applications are necessary for each. To ensure full protection, it is important to submit various views, including front, back, right, left, bottom, top, and perspective views, represented through either drawings or product pictures.

Patent Rights

Patent rights grant exclusive control over production, use, sale, and possession. Registering a patent in Thailand provides advantages including evidence of ownership, simplified licensing and assignment processes, increased share value, and enforcement options.

Protecting Trademarks in Thailand

The best method to protect a trademark in Thailand is to register it with the DIP. For eligibility, trademarks must fulfill three criteria:

1. 1. They must be distinct. Trademarks in Thailand can achieve distinctiveness through the mark’s inherent character or extensive usage. Marks lacking initial distinctiveness may still be registered if they gain distinctiveness through widespread usage over time.
   2. They must not be prohibited by law. In Thailand, specific marks are explicitly forbidden by law, including those contrary to public order, morality, or public policy. Prohibited marks include royal or official arms, crests, flags, royal styles, names or representations of royal family members, and any mark identical or similar to a well-known mark.
   3. They must be available for registration. Marks that are identical or too similar to existing registered or well-known marks are ineligible for registration in Thailand. This is to protect both the original owners’ IP rights and consumers.

Registering a trademark in Thailand involves submitting an application to the DIP with detailed information about the products or services, indicating their usage status.

It is essential to avoid using broad descriptions like “clothes” or “makeup” as objections from the Registrar are common, highlighting the importance of precision.

Notably, applicants should be aware of the official fees, ranging from 300 to 500 THB per goods or services, payable to the DIP.

Since Thailand isn’t part of the Madrid Protocol, direct application through a local resident or agent is required. The registration process typically spans nine months, with the key steps being:

• • Filing
  • Examination
  • Publication
  • Registration

Once registered, the trademark is protected for 10 years and must be renewed every 10 years.

Trademark Rights

A registered trademark in Thailand grants exclusive usage rights to its owner, preventing trademark squatting and offering various benefits, including evidence of ownership, simplified licensing, and assignment processes.

Protecting Copyright in Thailand

To protect copyright in Thailand, the copyright recordation process is essential. Copyright owners, including creators, employers, or assigned copyright holders, can apply for recordation. Depending on the nature of the copyright, they will need to provide the following details which may include:

• • Brief description of the copyrighted work
  • Title of the work
  • Applicant’s name, address, and nationality
  • Author’s name, address, nationality, and date of birth
  • Details on the acquisition of the copyright and the country where the work was created
  • Dates of creation and publication for published works
  • Information on recordation and registrations in foreign countries
  • Permission to publish the copyright

In Thailand, the copyright recordation process includes application filing, examination, acceptance, electronic storage, and issuance of a recordation certificate. This process usually takes 2 to 4 months to complete.

Copyright Rights

Copyright gives authors, artists, and creators both moral and exclusive rights to utilize, publish, and commercialize their work. These exclusive rights include, but are not limited to, the right to:

• • Reproduce the work via copies
  • Distribute copies to the public
  • Rent out copies of the work
  • Translate or adapt without authorization
  • Hold public performances and communicate the work to the public

Protecting Trade Secrets in Thailand

Trade secrets are protected in Thailand under the Trade Secrets Act of 2002. Registration is not needed for legal protection but specific conditions must be met for eligibility, those being:

• • Information must not be publicly known or accessible to those normally connected
  • Information holds commercial value derived from its secrecy
  • Controller has taken appropriate measures to maintain secrecy

Essential measures include non-disclosure and non-use clauses in agreements governing trade secrets, such as confidentiality or employment agreements. When there is a risk of breach or reverse engineering, trade secret owners may consider patent applications, but careful consideration is crucial before selecting a protection strategy. This is due to the limited 20-year protection period offered by patents and the required disclosure of secrets during the patent application process.

Trade Secret Rights

Owners of trade secrets have exclusive rights, with the ability to pursue court orders and damages for infringements. Thailand’s Trade Secret Act imposes criminal penalties, including imprisonment and fines of up to 200,000 THB for infractions. One of the most common violations involves employees disclosing sensitive information to competitors, usually after their termination from the wronged company.

Protecting Your Assets With Siam Legal

Securing protections for your organization’s intellectual assets is a vital task for success and growth in Thailand, but it’s also complex and fraught with risk. The Thai government takes IP protection seriously, so applications are strictly scrutinized and can be rejected for seemingly small and unforeseen reasons. That’s why it’s important to seek the assistance of a knowledgeable and reputable law firm with extensive experience in Thai IP law.

Siam Legal International has been helping local and international businesses of all industries navigate Thai business law for over 20 years, providing personalized and effective legal solutions. Our seasoned legal team will provide guidance and answers to all your questions regarding IP protection so you can make informed decisions about the future of your company. We’ll also stick with you through the whole application to provide support and give you the best chance of a swift and successful process.