Trademark registration is an important step for businesses to protect their intellectual property and establish brand identity in Thailand’s dynamic market. Thailand offers a robust legal framework for trademark protection, governed by the Trademark Act B.E. 2534 (1991) and subsequent amendments. However, navigating the trademark registration process can be complex, requiring a thorough understanding of the criteria, requirements, and procedures involved.

Registrability criteria

The Trademark Act amendments in 2016 expanded the definition of a mark in Thailand, including diverse forms such as photographs, drawings, logos, names, words, phrases, letters, numerals, signatures, combinations of colors, figurative elements, and even sounds. However, for eligibility, these marks must meet specific criteria.

Trademarks must possess distinctiveness, avoiding direct references to the character or quality of associated goods or services. Descriptive marks are discouraged, but a mark initially lacking distinctiveness can acquire it through extensive use and promotion over time. The Department of Intellectual Property (DIP) in Thailand accepts various forms of evidence to demonstrate mark use, including receipts of sales, marketing and advertisement receipts, and purchase orders. This evidence should be directly related to the sales or advertising of products or services associated with the mark.

Thai law prohibits marks falling into the following categories: those contrary to public order, morality, and public policy; those confusingly like well-known marks; those comprising geographical indications protected by law; and those using seals, emblems, flags, names, etc., related to or used by Thai government entities, the Thai royal family, foreign states, and international organizations.

To avoid conflicts with existing trademarks, applicants are advised to conduct a trademark availability search before filing a new application. This search can be executed using the DIP online database in Thailand, and similar search engines are available for trademark data in ASEAN countries and internationally on WIPO’s website.

Requirements

Commencing the trademark registration process in Thailand involves the submission of the “Kor.01” application form, either directly at the DIP or through the online filing platform. Throughout this process, several essential documents and information are required for a successful application.

One element is the Power of Attorney, a notarized document executed by the applicant or their legal representative. This document appoints the agent in Thailand and includes vital details about the applicant, such as name, address, nationality, or country of incorporation. For Thai nationals or corporations, a simply signed Power of Attorney, without notarization is accepted. This should be accompanied by a signed copy of the applicant’s national identity card (for individuals) or the company registration certificate (for corporations).

Another component is the Specimen of the Mark, encompassing various considerations depending on the nature of the mark. Whether it’s a word, picture, or sound, the specimen should be clear. For word marks in a foreign language, it is required to provide the meaning and transliteration in Thai. In the case of 3D marks, seven views must be submitted, covering the front, back, left, side, top, bottom, and perspective. Sound marks require a description, along with a recording not exceeding 30 seconds.

Applicants must also submit an Enumeration of Goods/Services, outlining the specific goods or services associated with the intended mark. Notably, late filing of the notarized Power of Attorney copy is permissible upon request within 90 days from the trademark application date. Additionally, the calculation and payment of Filing Fees are crucial steps in the process. The fees are determined based on the number of designated goods or services and the number of classes.

It must be noted that certain formal elements of the application, such as the applicant’s address, can be amended post-filing. However, amendments to the list of goods and services and the specimen of the mark are subject to the registrar’s request or may be necessary to align with local practices.

Registration Process

The trademark registration process in Thailand unfolds over a span of approximately 12 to 16 months. Following the initial application filing, the registrar is reviewing it with regards to both formal and substantive prerequisites outlined in the relevant laws and regulations. In cases of non-compliance, the registrar issues either a refusal to register the mark, deeming it prohibited, nondistinctive, or similar/identical to prior marks, or an office action prompting the applicant to amend the application or furnish additional documents.

In response, the applicant has a 60-day window to address the registrar’s concerns. This may involve filing an appeal before the Trademark Board if faced with a refusal or a request to disclaim a non-essential element of the mark. The appeal process typically spans 2 to 3 years before a decision is made.

Simultaneously, amendments must be filed to align with the registrar’s directives, taking around 3 to 6 months to process. Failure to respond within the stipulated time leads to application abandonment.

Should no objections be raised by the registrar, the application undergoes publication in the Thai Trademark Gazette around 9 to 10 months after the filing date. This publication invites a 60-day period during which third parties can contest the trademark based on superior rights or non-compliance with the Trademark Act.

Upon notification of opposition, the applicant has 60 days to issue a counterstatement; otherwise, the application is deemed abandoned. The registrar’s decision on opposition takes about a year, subject to potential appeals before the Trademark Board, Court of Appeal for Specialized Cases, and the Supreme Court.

In the absence of opposition, the registrar prompts the applicant to pay the registration fee. The applicant has 60 days to complete this payment. Simultaneously, the Certificate of Registration can be obtained, and the trademark is registered for a 10-year term from the Thai filing date, renewable indefinitely every 10 years.

The registered trademark gives the rights outlined in the TRIP Agreement, primarily entailing exclusive usage rights for the designated goods and services. It also empowers the prevention of third parties from utilizing a similar trademark for analogous services and goods.