South-East Asia IPR SME Helpdesk

Thailand

  

THE FACTS: Business in country for EU Companies

SIZE of Market

  • EU exports of goods to Thailand in 2015: EUR 13.4 billion
  • EU imports of goods from Thailand in 2015: EUR 19.6 billion
  • Total trade in goods in 2015: EUR 32.9 billion
  • EU exports of services to Thailand in 2014: EUR 3.2 billion
  • EU imports of services from Thailand in 2014: EUR 5.8 billion
  • Total trade in services in 2014: EUR 9.0 billion
  • Thailand GDP in 2015: EUR 356.3 billion
  • Thailand GDP growth in 2015: 2.8% 

Total trade in goods in 2015: The EU is Thailand’s 3rd largest trading partner after China and Japan, while Thailand is the EU’s 23rd largest trading partner.

Negotiations for an EU-Thailand Free Trade Agreement (FTA) were formally launched in March 2013, marking an important step in EU-Thai relations. The ambition is to conclude a comprehensive FTA, covering tariffs, nontariff barriers and other trade related issues such as services, investment, procurement, intellectual property, regulatory issues, competition and sustainable development.

Key INDUSTRY SECTORS - 2015

  • The top three EU exports to Thailand were (i) Machinery and appliances (33.1%), (ii) Products of the chemical or allied industries (14.6%) and (iii) Transport and equipment (12.1%).
  • The top three EU imports from Thailand were (i) Machinery and appliances (40.8%), (ii) Foodstuffs, beverages, tobacco (10.5%) and (iii) Transport equipment (8.7%), tied with Plastics, rubber and articles thereof (8%).

IPR in country for SMEs: BACKGROUND

Intellectual Property Rights for SMEs: Why is this RELEVANT to you?

Intellectual Property Rights (IPR), as intangible assets, are a key factor in the competitiveness of businesses in the global economy. Securing intellectual property (IP) is a primary method for realising a return on investment from innovation, and is particularly applicable to Small and Medium-sized Enterprises (see EC definition – http://ec.europa.eu/enterprise/policies/sme/ facts-figures-analysis/sme-definition/index_en.htm) when they internationalise their business in third countries such as those in South-East Asia. IP assets, on top of helping you protect innovations from competitors, can also be an important source of cash-flow for SMEs through licensing or selling by ownership transfer, as well as being a significant pull-factor when attracting investors.

Although SMEs often have limited time and resources, it is important to be aware of how IP can be valuable to businesses. IPR infringement is one of the most common concerns for businesses when dealing with countries from the Association of Southeast Asian Nations (ASEAN), and could lead to loss of business, revenue, reputation and competitive advantage - both in South-East Asia and in core domestic markets - unless proactive steps are taken to protect IP and deter potential infringers.

Software, music and movie piracies are still rampant in Thailand with pirated goods being fairly accessible in major tourist areas in Bangkok city and elsewhere; Thai government officials are fighting a long-running battle against pirated music CDs, digital movies and computer software. According to the Thai Department of Intellectual Property (DIP), 369,920 pirated movie DVDs, 142,257 pirated music CDs, and 54,409 pirated copies of software were seized in 2012 alone.

Patent pendency, technology transfer and border control measures for patent offences are of real concern for EU companies wishing to invest in Thailand.

Thai IP laws and regulations have been regularly amended in recent years to comply with international standards.

How does THAILAND’s IP legal framework compare to INTERNATIONAL STANDARDS?

Generally, IP laws in Thailand comply with international intellectual property standards such as those established by TRIPS, the World Trade Organization’s Trade Related Aspects of Intellectual Property Agreement and Berne Convention. Additionally, Thai IP laws and regulations have been regularly amended in recent years to comply with international standards.

Thailand is also a party to other key IP conventions aimed at creating an equal, standardised IP protection system throughout the world.

In 2008 and 2009 respectively, Thailand signed the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty (PCT) (see the WIPO website for more details on each treaty - http://www.wipo.int/treaties/en/). Thailand is also a signatory to the Berne Convention for the protection of Literary and Artistic Works.

In recent years, Thailand has also undertaken a significant programme of reforms as regards major IP laws, in particular the Copyright Act, the Trade Secrets Act and the Trade mark Act.

In 1997, Thailand established the Central Intellectual Property and International Trade Court (CIPITC) which has exclusive jurisdiction to adjudicate civil and criminal cases involving IP. The experience of the judges has been improving over the years, including through training for court officials, judges, customs authorities, and other IP enforcement agencies (notably the Department of Special Investigation and the Royal Thai Police). Establishment of an IP database to monitor the status of infringement cases, court decisions and repeated offences is also expected in the near future. This would improve the overall level of IP enforcement in Thailand.

In March 2013, the Thai government launched the National IPR Centre of Enforcement (NICE), however, earlier in 2016, the NICE was disbanded, and a Subcommittee for the ‘Suppression of Intellectual Property Infringement’ was created to solve and prevent IP infringement issues, reduce problems for IP rights holders, increase IP protection in accordance with international standards, and build Thailand’s image as an IP-friendly country.

IP law developments:

In line with the commitments put forward by the government to reinforce Thailand's IPR enforcement against counterfeiting and piracy, in 2015 the Copyright Act No.2 and No.3, strengthening Thailand's enforcement against digital piracy and illegal camcording in cinemas, became effective on 4 August 2015 and 6 April 2015 respectively, as did the Trade Secrets Act No. 2 on 6 February 2015.

The new Trademark Act (No. 3) B.E. 2559 (2016), which came into force on 28 July 2016, includes a new chapter on trademark registration that introduces a number of changes, setting the stage for Thailand to accede to the Madrid Protocol.

Other legislative proposals, which were under consideration of the Parliament, and which will need to be reconsidered by the National Legislative Assembly (NLA) are the following:

  • A study on landlord liability provisions commissioned by the DIP was completed and is under consideration of the DIP.
  • Amendments to the Patent Act to implement the provisions of the Doha Declaration and the Hague Agreement System extend the scope of protection of design patents, adjust the registration procedure, and review the official fees; these amendments are under consideration by the Ministry of Commerce.
  • A draft amendment to the Computer Crime Act to reclassify online infringement of IPRs as an offense is under consideration of the Ministry of Information, Communications and Technology.

EU-Thailand IPR Dialogue:

Since February 2011, regular dialogues on IP issues are held between the EU and Thai authorities. These discussions aim at sharing information and best practices, and at ensuring that EU companies’ concerns on IP protection and enforcement are raised with a view to providing a platform where proposals could be made to improve the shortcomings identified in the process.

EU-Thailand FTA negotiations:

In March 2013, the EU and Thailand launched negotiations for a comprehensive Free Trade Agreement (FTA) with the objective of strengthening the economic ties between Thailand and Europe even further. Intellectual Property Rights are a key focus area in these negotiations, as in all EU FTA negotiations. The FTA negotiations were launched on March 6, 2013 and reached the third round of negotiations in December 2013, but have been halted since the military coup in 2014. To resume the process, a positive trajectory must be observed towards political and human rights development in Thailand.

FTA negotiations would provide opportunities for the EU and Thailand to discuss rules on the protection of intellectual property rights such as patents, trade marks, designs, copyrights and geographical indications and have the potential of resolving market access issues that EU companies are facing in Thailand.

These include, for instance:

  • Landlord liability for IP infringement in Thailand;
  • Delay in patent registration of pharmaceutical and other products; and
  • Enforcement of intellectual property rights.

IP TIPS and WATCH-OUTS in Thailand

  • Timely application by EU SMEs for registration of their IP rights before the DIP is crucial for EU SMEs to have a chance of defending and enforcing them. Patents, designs and trade marks are territorial in nature, which means registration in one country is not automatically enforceable in others, and therefore registration in various countries might be necessary. You must register your IP in Thailand in order to receive protection in Thailand.
  • Thailand operates under a ‘first-to-file’ system, meaning the first person to file an IP right in the Thai jurisdiction will own that right once the application is granted.
  • Be aware of the common practice of illegal refilling in Thailand. This practice has been widespread for several years. Counterfeiters often refill genuine packaging and containers with unauthorized products, presenting the goods as genuine commodities. Such refilled goods do not have to pass regulatory standards or quality control checks, and thus might have harmful effects on consumers. Refilled products generally fall into two categories:
  1. products for consumption, such as fish sauce and liquor; and
  2. commodities, such as shampoos, toner and ink cartridges, and lubricants.

Under the new Trade Mark Act, effective from 28 July 2016, this practice is recognised as an offence, punishable by imprisonment of up to four (4) years and/or a fine of up to THB 400,000 (approximately EUR 10,000). You are now granted trade mark protection if your products are subject to this illegal practice.

 

IP Rights in country: THE BASICS

A. Copyrights

WHAT are Copyrights?

Copyright describes exclusive rights granted to authors for their creations. Copyrights allow for the exclusive right of an author or a copyright holder to publish or reproduce their work. These rights include copying; publishing; translating; adapting and altering; distributing; etc. Protected items can be works of literature, music, drama, visual and graphic arts, including (but not limited to) books, movies, songs, computer software, websites and photographic works. This means the concepts and ideas themselves are not recognised as copyrightable, but the modes in which these ideas and facts are expressed may be protected by copyright.

Copyrights in THAILAND: What you need to know

Thailand is party to the Berne Convention and therefore works are protected from the moment of their creation, irrespective of their mode or form of expression, content, quality and purpose.

Although the Berne Convention requires that copyrights be awarded automatically to the creator without the formal need to register these rights, it is still advisable to record copyrights in Thailand, as this will make it much easier to prove your ownership in court proceedings, if you ever need to enforce these rights before a Thai court.

The Thai Copyright Act B.E. 2537 recognises copyrighted works conferred in foreign jurisdictions, provided that the creator is a national, resident or first published the work in a member country of the Berne Convention (https://www.wipo.int/treaties/en/ip/berne/) or the TRIPS agreement of the WTO (https://www.wto.org/english/docs_e/legal_e/27-trips_03_e.htm).

The Thai Copyright Act No.2 and No.3 include for the first time responsibility of intermediaries or internet service providers, for infringement of copyright work on the internet. Separately, recording of movies in theatres without authorisation is penalised with a maximum imprisonment of four years.

How LONG does legal protection last?

Copyright protection in Thailand is automatic and is valid for the life of the author plus an additional period of fifty (50) years after his or her death. If the author is a juristic person, the copyright exists for a period of fifty (50) years after the work is first published or, if unpublished, after its creation.

HOW do I register?

Although copyright protection arises automatically at the time of creation of eligible work, formal recordation of copyright at the Thai Copyright Office is recommended for EU SMEs, as it would be useful as evidence of ownership in the event of a dispute. A copyright notice should also be affixed to the copyrighted work.

Required Information:

  • Name of the creator(s)/author(s) of the work;
  • Date and place of creation;
  • Date and place of first publication;
  • Name and contact details of the copyright owner;
  • Name of the copyrighted work; and
  • Brief details on the creation and inspiration of the work (10 lines).

Required Documents:

  • 1 set of the copyrighted work;
  • Full name, address, and country of the applicant;
  • Power of Attorney (POA) to be signed by the applicant (to be provided upon receipt of instructions);
  • Signed copy of valid identification card of the signatory to the POA;
  • The original copy of certificate of incorporation of the applicant (if applying on behalf of a company); and
  • Statement of applicant’s rights to be signed by the applicant.

The Copyright registration office in Thailand can be found at the below address:

Department of Intellectual Property, Ministry of Commerce
44/100 Nonthaburi 1 Rd.,
Bangkrasor, Muang, Nonthaburi
11000 (66 2) 5474621 - extension 5

It is advisable to register copyrights in Thailand as this will make it much easier to prove your ownership in court proceedings, if you ever need to enforce these rights before a Thai court.

WHO can register?

Any individual or corporation can file for recordation of copyright works, either through a legal representative or by themselves, provided that their domicile/head office is in Thailand, or they have real business operations/dealings in Thailand. If the applicant is not in Thailand, the recordation of copyright works must be handled by its legal representative.

Which LANGUAGES can I use?

The application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation. How much does it COST? There is no official fee for copyright recordation in Thailand. SMEs shall seek a quotation for cost and service fees if considering using a local IP agent.

Copyrights TIPS and WATCH-OUTS in Thailand

The amendments in relation to the responsibility of service providers set a burden on the right holder of initiating a legal case against the copyright infringement on the internet. As copyright owner, you may ask the court to give an order to the service provider to stop any violation of your copyrighted work in its computer system. Substantial proof of copyright ownership will be required from you in this case. The definition of ‘service provider’ is the same as in the Computer Crime Act of 2007.

 

B. Patents

WHAT are Patents?

A patent is a right granted to the owner of an invention, to prevent others from making, using, importing or selling the invention without his permission. A patent may be obtained for a product or a process that gives a new technical solution to a problem or a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.

The Thai IP system divides patents into two categories: patents of invention and patents of utility models (also called ‘petty patents’). Both are exclusive rights temporarily granted for an invention.

Obtaining a patent is the only way to efficiently secure a product or a method against counterfeiters. Beyond simple protection, this asset provides SMEs with an exclusive right to produce, use, offer for sale or import patented product or process into a new market. This intangible asset may therefore give a strong competitive advantage, and generate a profitable return on investment. Owning a patent, or better, a portfolio of several patents, may also attest to the innovation capacity of a company in the eyes of potential clients or partners, and may therefore boost the development of business activities into a new market.

Patents in THAILAND: What you need to know

Both current types of patents in Thailand (invention and petty patents) are required to be ‘new’ (this means it has not been published anywhere or disclosed to the public prior to the date of filing).

Patents of invention, in addition to being new, must involve an ‘inventive step’ (this means the idea relating to the new product or process is not obvious to a person skilled in the field of technology) and must be ‘industrially applicable’ (this means capable of industrial production), as is the case in most international patent systems.

Contrary to patents of invention, petty patents are not required to meet the ‘inventive step’ requirement, and thus the registration process is different. There are also differences in the length of protection (see below).

Thailand is a member of the Paris Convention and the Patent Cooperation Treaty (PCT), which means applicants for invention patents and petty patents are entitled to a ‘right of priority’ (i.e. the same filing date the original application made in the home country can be used in Thailand), if the same filing is made in Thailand within twelve (12) months from the first filing in any other country that also belongs to the Paris Convention. In using the PCT Route, the same filing must be made in Thailand within thirty (30) months from the first filed application (see https://www.wipo.int/treaties/en/).

Another route for patent applications is the ASEAN Patent Examination Co-operation (ASPEC) system. ASPEC is a regional patent work-sharing programme involving nine (9) of the ten (10) IP Offices in the ASEAN Member Countries (only Myanmar is not yet involved). The objectives of ASPEC are to reduce complexity, save time, and improve the quality of searches and examinations. Reference made to an earlier examination already performed in one IP office will help an examiner in the other IP office to better understand the invention claim, reduce searches, and develop a more comprehensive examination strategy. For example, a patent application from Singapore would, in theory, be able to take advantage of an expedited process at the Department of Intellectual Property in Thailand, allowing for the eventual speedier grant of patent protection. ASPEC is free-of-charge and operates in English in all ASEAN IP Offices (except Myanmar).

Patent pendency, technology transfer and border control measures for patent offences are of real concern for EU companies - in particular in the pharmaceutical industry wishing to invest in Thailand. Patent Examination Guidelines for Chemical and Pharmaceutical Patents, implemented on October 10, 2013, provide guidance to Examiners in these fields so that the examination is standardized.

How LONG does legal protection last?

Patents of invention last twenty (20) years from the filing date in Thailand, with no possibilities for extension/renewal.

The registration process currently suffers severe backlogs and takes up to five (5) to six (6) years or more. Patent applications in physics and biotechnology fields can take between five (5) to nine (9) years and in some cases well over ten (10) years, especially for pharmaceutical and complex chemical patents. Petty patents last six (6) years from the filing date in Thailand, and are extendible twice for two (2) more years (i.e. maximum term of ten (10) years). The registration process typically takes between three (3) to five (5) years.

HOW do I register?

Thailand operates under a ‘first-to-file’ system. Hence, if SMEs are applying for a patent it is important to do so early. Once the patent is granted, the duration of protection is measured from the date of filing in Thailand. The preliminary examination of applications is usually completed within two (2) years after the submission of all required documents.

Applicants who have filed an international Patent Cooperation Treaty (PCT) application and who wish to obtain patent protection in Thailand via the PCT route (‘right of priority’) must file a national phase entry application in Thailand within thirty (30) months from the first filing date under the PCT system.

Required Information:

  • Full details of the applicant(s): name, address, and nationality;
  • Full details of the inventor(s)/designer(s): name, address, and nationality;
  • Specification of the invention/design in English or any other language including:
    • Description
    • Claims
    • Abstract
    • Drawings (if any); and
  • If the ‘right of priority’ is claimed:
    • Date of priority
    • Priority number
    • Country of filing

Required Documents:

  • For national phase PCT application
    • Power of Attorney (notarisation is required if the applicant is not a Thai national);
    • Deed of Assignment (if the applicant in the international and Thailand national phase is different); and
    • Thai translation of the patent text.
  • For the application under Paris Convention
    • Power of Attorney (notarisation is required if the applicant is not a Thai national);
    • Deed of Assignment (if the applicant is not the inventor);
    • Statement of Applicant’s Right (if the applicant is the inventor);
    • Certified copy of the priority documents (if any); and
    • Thai translation of the patent text.

Patent applications should be filed at the below address:

Department of Intellectual Property, Ministry of Commerce
563 Nonthaburi Rd.,
Bangkrasor, Muang-Nonthaburi, Nonthaburi 11000
Hotline: 1368

Obtaining a patent is the only way to efficiently secure a product or a method against counterfeiters. Beyond simple protection, this asset provides SMEs with an exclusive right to produce, use, offer for sale or import patented product or process into a new market.

WHO can apply for a patent?

Any individual or corporation, who is an inventor or an assignee of the right, can file an application. The applicant needs to retain a patent agent qualified before the Thai Department of Intellectual Property (DIP) if they do not have a domicile/head office in Thailand or have real business operations in Thailand. It is generally recommended to hire a local IP agent or lawyer due to technicality and complexity of patent applications.

Which LANGUAGES can I use?

The application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation (such as the patent specification, Power of Attorney and Deed of Assignment documents).

The Thai translation of the English-language specification, notarized Power of Attorney, and executed Deed of Assignment can be submitted within 90 days from the date of filing the application in Thailand. This deadline is non-extendible.

How much does it COST?

The official filing fee for a patent application in Thailand is THB 500 (approximately EUR 12). Additional costs and services fees should be added if using a local IP agent (it is recommended to seek quotations beforehand to properly plan the budget). 

The applicant needs to retain a patent agent qualified before the Thai Department of Intellectual Property (DIP) if they do not have a domicile/head office in Thailand or have real business operations in Thailand.

Patents TIPS and WATCH-OUTS in Thailand

  • It is recommended to apply via the direct national application system rather than the PCT route where possible, as the application wait time may be reduced this way. While applications for design patents and petty patents are still largely dominated by domestic applicants, applications for patents of invention are mostly filed by foreign applicants. Since 2011, the trend among foreign applicants has been to file fewer direct national applications, and instead there has been a sharp increase of applications through the PCT route. Accordingly, the backlog has been increasing over the years, which has become worrisome: among the twentythree thousand (23,000) pending applications made in 2012, only one thousand (1,000) have been granted so far.
  • A direct national filing (i.e., under the Paris Convention) only makes sense if parallel applications of the same invention, which have been filed in other countries, are expected to be granted quickly; in Thailand, the substantive examination of Thai applications depends on the outcome of any patent applications that have already been filed abroad at other Patent Offices. Otherwise, filing an application for a petty patent in place of an invention patent should be considered, so long as ten (10) claims provide the desired scope of protection and a ten (10) year protection term is sufficient.

 

C. Designs

WHAT are Design rights?

A design right is an exclusive right temporarily granted for a form or composition of lines or colours, which gives a special appearance to a product and can serve as a pattern for a product of industry or handicraft. A registered design may be obtained to protect the features of shape, configuration, pattern or ornament applied to an article by an industrial process.

Design rights in THAILAND: What you need to know

Design rights, which in Thailand are called Design Patents, cover products with a distinctive shape, pattern, colour or the combination of these, which must be ‘novel’. This means essentially neither widely known or used by others in Thailand or a foreign country before the filing of the application for a design patent, nor mentioned in a document or a printed publication in Thailand or a foreign country before the filing of the application for a design patent. Moreover, according to Thai Patent law, a registered design should not resemble any prior design.

Thailand is a member of the Paris Convention, which means the applicants' Design Patents are entitled to a ‘right of priority’ (i.e. you can use the same filing date as the original application made in your home country), if the same filing has been made within the last six (6) months (see the WIPO website here for more details on the Paris Convention and a full list of members - http://www.wipo. int/treaties/en).

How LONG does legal protection last?

Design Patents last ten (10) years from the filing date in Thailand. The registration process typically takes up to three (3) years.

HOW do I register?

Thailand operates under a ‘first-to-file’ system. Hence for SMEs applying for a design patent it is important to do so early. Once the design patent is granted, the duration of protection is measured from the date of filing in Thailand.

To file an application for a design patent, the following data has to be submitted:

  • Claims;
  • Drawings;
  • Power of Attorney;
  • Deed of Assignment;
  • First filing date and serial number;
  • Name and address of the applicant;
  • Name and address of the designer;
  • Information whether the colour shall be claimed;
  • Priority document if based on prior foreign application.

The following documents have to be submitted on the date of filing or within ninety (90) days from the date of filing:

  • Deed of Assignment (if the applicant is not the designer);
  • Statement of Applicant’s Rights (if the applicant is the designer); • Power of Attorney.

The Power of Attorney and Deed of Assignment can be submitted within 90 days from the date of filing the application. This deadline is non-extendible. The priority document must be submitted within sixteen (16) months from the first filing date.

Design patent applications should be filed at the below address:

Department of Intellectual Property, Ministry of Commerce
563 Nonthaburi Rd.,
Bangkrasor, Muang-Nonthaburi, Nonthaburi 11000
Hotline: 1368

WHO can apply for a Design Patent?

Any individual or corporation, who is an actual designer or an assignee of a right holder, can file an application. Applicants need to retain an agent qualified before the Thai DIP if they do not have a domicile/head office in Thailand or have real business operations in Thailand. It is recommended to hire a local IP agent.

Which LANGUAGES can I use?

The application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation.

How much does it COST?

The official filing fee for a patent application in Thailand is THB 250 (approximately EUR 6). Additional costs and services fees should be added if using a local IP agent (seek quotations beforehand).

D. Trade Marks

WHAT are Trade Marks?

A trade mark is a sign that allows consumers to identify and distinguish goods or services of one undertaking from those of another. The sign may be composed of words, slogans, devices, letters, numerals, combinations of colours or any combinations of the above. The registration of a trade mark provides EU SMEs with an exclusive right to exploit the trade mark within a geographic territory. SMEs may thus license their rights to allow a third party to sell goods or services under their mark and collect royalties.

To be registered, the trade mark sign must be distinctive (i.e. neither generic nor descriptive of the designated products or services), non-deceptive (as to the proprietorship or origin of the goods or services), and available (not identical with or similar to prior trade marks filed by a third party).

Because Thailand is party to the Paris Convention for the Protection of Industrial Property, Thai trade marks enjoy a ‘right of priority’ if the same filing has already been made in any other country also belonging to the Convention within a six month period prior to registration in Thailand (see more details and a full list of members to the Paris Convention - http://www.wipo.int/treaties/en/ ip/paris).

Thailand operates under a ‘first-to-file’ system for trade mark registration. It is therefore very important to register early, before entering into the market, so as to diminish the risk of trade marks being registered by someone else first, or in other words, registered 'in bad faith’.

Many amendments have been enshrined in the new Trademark Act (No. 3) B.E. 2559 (2016) which came into force on July 28, 2016, (except for the provisions of Section 31 of the Act) which shall come into force by the enactment of a Royal Decree. Amendments cover, among other areas:

  • Thailand’s compliance with the Madrid Protocol, which is expected to be implemented in 2017;
  • Allowing multiple-class applications;
  • Allowing for a six (6) month expiry grace period for trade mark renewals;
  • Providing protection for sounds marks;
  • Changing the maximum number of days for oppositions and responses to official actions to sixty (60) days, instead of ninety (90) days;
  • Revised government fees;
  • Provision to protect against "refilling" practices.

How LONG does legal protection last?

Trade mark protection lasts for ten (10) years from the filing date in Thailand, with the option to indefinitely extend for consecutive ten (10) years periods, subject to timely application for renewal. The registration process typically takes between twelve (12) to eighteen (18) months.

HOW do I register?

When the application for registration of a trade mark has been submitted, the registrar will send a letter to notify the result of the examination to the applicant within an average of twelve (12) to eighteen (18) months. Once the trade mark has been accepted by the registrar, the mark will be published, opening a ninety (90) day period in which other parties can register an opposition. If no opposition is submitted within the prescribed period, the trade mark proceeds to registration and the certificate of registration is issued.

Required Information and Documents:

  • 1 electronic sample of the mark in black and white or in colour (max 5 cm x 5cm);
  • Full name, address, country and occupation of the applicant;
  • Description of the goods and services to be designated;
  • Power of Attorney, notarised (can be submitted at a later stage);
  • Country, date and number of the priority trade mark application (if claiming ‘right of priority’);
  • Certified copy of the priority application (if claiming ‘right of priority’) and translation (can be submitted at a later stage); and
  • Date of first use of trade mark (if any).

Trade mark applications should be filed at the below address:

Department of Intellectual Property (DIP), Ministry of Commerce
44/100 Nonthaburi 1 Rd.,
Bangkrasor, Muang, Nonthaburi 11000
(66 2) 5474621 – Ext. 5

 

The registration of a trade mark provides EU SMEs with an exclusive right to exploit the trade mark within a geographic territory.

 

WHO can register?

Any individual or corporation can file for trade mark registration either through a legal representative (using a local IP agent to represent the company before the Thai Department of Intellectual Property(DIP) is an option) or by themselves, provided that their domicile/head office is in Thailand, or they have real business operations/dealings in Thailand.

Which LANGUAGES can I use?

The application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation.

How much does it COST?

Official fees are calculated per product/service designated, and not by ‘class’ (i.e. the product categories or industry sectors in which protection is requested): THB 500 (approximately EUR 12) at time of filing, and THB 300 (approximately EUR 7) at time of registration for each product/service specified. More details can be found on the DIP’s website. Additional costs and services fees should be added if using a local IP agent (seek quotations beforehand).

As of July 28, 2016, when the new Trademark Act came into force, the official fees have been changed as follows:

At the time of filing

An application with one to five item(s) of goods/services will be charged at THB 1,000 (approximately EUR 26) per one item of goods in one class.

An application with more than five items of goods/services will be charged on a lump-sum basis of THB 9,000 (approximately EUR 230) per one class.

At the time of registration

An application with one to five item(s) of goods/services will be charged at THB 600 (approximately EUR 15) per one item of goods in one class.

An application with more than five items of goods/services will be charged on a lump-sum basis of THB 5,400 (approximately EUR 138) per one class.

Trade Marks TIPS and WATCH-OUTS in Thailand

  • The recordation of well-known trademarks in Thailand has been revoked. A way to cancel a bad-faith registration is by proving that the mark was unused for a period of three (3) years prior to the petition for cancellation, in which case you can file a petition of cancellation on the grounds of ‘non-use’.
  • In Thailand, three-dimensional signs (shapes) can be registered as trademarks, but few applications have actually been accepted for registration. The new Trademark Act also recognises the protection of sound marks (implementing provisions will have to become effective). Importantly, the new Trademark Act made changes to streamline the examination procedure, and included revised fees.
  • Multiple-class filing in a single application is also now possible in Thailand, easing the preparation and filing since a single application can be used to file for protection in multiple classes, resulting in less paperwork, fees, and a more streamlined process for your trademark registration in more than one class at once.
  • After the expiry date of your trade mark registration, a grace period of six (6) months to renew the registration of your mark is now granted. Be aware that a surcharge of 20 percent (20%) of the government renewal fee must be paid by the end of the grace period.

 

Thailand operates under a ‘first-to-file’ system for trade mark registration. It is therefore very important to register early so as to diminish the risk of trade marks being registered by someone else first.

 

E. Geographical Indications

WHAT are Geographical Indications?

A Geographical Indication (GI) is a name or a sign used on goods that have a specific geographical origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of origin. For example, agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. In other words, a Geographical Indication informs consumers that a product comes from a certain place and has special qualities due to that place of origin.

Unlike a trade mark, it may be used by all producers who make their products in the place designated by a Geographical Indication and whose products share specified qualities.

Geographical Indications in THAILAND: What you need to know

GIs are recognised and can be registered in Thailand since 2004. Thailand is one of the pioneers of GIs protection in Asia, with several GIs already registered nationally (nearly forty Thai registered geographical indications in Thailand) and abroad. ‘Champagne’ from France, ‘Prosciutto di Parma’ from Italy, ‘Scotch Whisky’ from Scotland and ‘Cognac’ from France are all examples of European GIs which are recognised in Thailand. Moreover, ‘Buon Ma Thuot Coffee’ from Vietnam is the first South-East Asian GI to be recognised in Thailand. Also, in 2013 ‘Khao Hom Mali Thung Kula Ronghai’ or “jasmine rice” from Thailand became the first South-East Asian GI to be recognised in the European Union.

For a GI of a European country to enjoy protection in Thailand, there must be explicit evidence that such GI is protected under the law of such country and has been used continuously until the date of filing an application for registration in Thailand.

Unlike in the EU, GIs might become generic in Thailand. GIs on wines and spirits and rice get stronger protection than those on agri-food products. In addition, GIs on handicrafts are protectable in Thailand.

Concerns have been raised by EU companies regarding noncompliance in respect of Article 22(2) and 23 of WTO TRIPS. Article 22(2) requires countries to provide legal means to prevent the use of a geographic indication that "suggests that the good in question originates in a geographic area other than the true place of origin." Under Article 23, a country shall provide a legal means to prohibit the inaccurate use of a geographic indication for wines and spirits regardless of whether the use of the indication on a similar product would be misleading. This provision applies also in cases where the geographic indication is "used in translation or accompanied by expressions such as 'kind', 'type', 'style' or 'imitation' or the like." According to this principle, the use of an expression, such as "Scotch-type Whisky", shall be prohibited. Meanwhile, only registered Geographical Indications are protected in Thailand, whilst indicating or suggesting that a good originates from a GI-protected geographical area is not.

How LONG does legal protection last?

Once obtained, these rights will last continuously, without the need to renew the registration.

HOW do I register for Geographical Indications recognition?

Applications for GIs shall be submitted with the Department of Intellectual Property. Department of Intellectual Property (DIP), Ministry of Commerce 44/100 Nonthaburi 1 Rd., Bangkrasor, Muang, Nonthaburi 11000 (66 2) 5474621 - extension 5

WHO can register?

Government agencies, public bodies, state enterprises, local administration organisations or other state organisations having area of responsibility covering the geographical origin of the goods; natural persons, groups of persons or juristic persons engaging in trade which is related to the goods using GI and domiciled in the geographical origin of the goods; groups of consumers or organisations of consumers of the goods using GI are eligible to apply for registration of a GI in Thailand.

Which LANGUAGES can I use?

The application form and other relevant required documents must be submitted in the Thai language or accompanied by a Thai translation.

How much does it COST?

Official fees are calculated at THB 1,000 (approximately EUR 26.5 per application. More details can be found on the DIP’s website. Additional costs and services fees should be added if using a local IP agent (seek quotations beforehand).

For a GI of a European country to enjoy protection in Thailand, there must be explicit evidence that such GI is protected under the law of such country and has been used continuously until the date of filing an application for registration in Thailand.

 

Geographical Indications (GIs) TIPS and WATCHOUTS in Thailand

  • For foreign geographical indications to be recognised in Thailand there must be explicit evidence that such geographical indication is protected in the home country and that it has been used continuously until the date of application in Thailand.
  • Governments, natural persons, groups of natural persons or groups of consumers can file an application for geographical application. There is no need for renewal of a registered Geographical Indication.

 

F. Trade Secrets

WHAT are Trade Secrets?

Trade Secrets are any piece of information that can satisfy the below three (3) criteria in order to make them enforceable before a court:

a) It must be non-public information;

b) It may offer business advantages to the owner; and

c) It must be proved that measures to protect the confidentiality of the information have been taken.

Typically, trade secrets could include new products or business models, special techniques, formulas, customers and suppliers’ lists, technical know-how, etc.

Trade Secrets in Thailand: What you need to know

The protection of trade secrets was incorporated into Thai law in 2002, and on 6 February 2015 the revised Trade Secrets Act became effective, bringing slight amendments to previous legislation. As trade secrets are by nature ‘unregistered rights’, there is no formal registration system for these.

How LONG does legal protection last?

Because there is no formal registration process for trade secrets, these are often referred to as ‘unregistered rights’, meaning that they can theoretically last forever – as long as they remain secret.

Trade Secrets TIPS and WATCH-OUTS in Thailand

  • It is crucial to put in place adequate measures to protect your own trade secrets to maintain competitive advantage in your business. Consider recording your basic information with the DIP in Thailand for additional protection.
  • In relation to the pharmaceutical sector, Thai law does not yet grant data ‘exclusivity’, which would guarantee additional market protection for originator pharmaceutical companies (i.e. companies that have discovered and developed pharmaceuticals). Health authorities or generic drug applicants in Thailand are not prohibited from referring to originator pharmaceutical companies’ data to approve generic versions of the originator’s product; current measures aim only to protect the “physical disclosure” of confidential information.
  • Agreements between parties, such as employment agreements or confidentiality agreements, concerning trade secrets are very important. It is important for these agreements to be complete and concise.

 

Using CUSTOMS to Block Counterfeits

HOW can Customs help in protecting IP?

Customs is the governmental agency that is authorised, among others, to implement trade enforcement measures, including checking and detaining suspected infringing goods crossing a border.

Customs in THAILAND: What you need to know

At present, the Customs Act B.E. 2496 (A.D. 1926), and the Notification of the Ministry of Commerce governing Exportation and Importation of Goods B.E. 2530 (A.D. 1987) and No. 95 B.E. 2536 (A.D. 1993) give customs officers the power to search, inspect and seize pirated copyright and counterfeit trade mark goods imported into and exported from Thailand.

It is advisable to record IP rights with the DIP (also known as ‘Customs Recordation’). After Customs Recordation has been made with the DIP, the DIP will later forward the recorded information to the Customs Department. This will help customs authorities recognise counterfeit versions of products, and improve the chances of such suspect items being blocked at the border.

WHAT can be registered?

At the moment, only trade marks and copyright works can be recorded with the Thai Customs through the DIP.

How LONG does legal protection last?

There is no formal need to periodically renew such registrations. However, it is best to keep customs and/or the Thai DIP updated of any relevant new IP registrations you make or any change in relevant information.

HOW do I register?

In the past, Customs allowed brand owners to directly record with Customs the brands/ trademarks they would like Customs to monitor, along with detailed trademark information and authorized importers. Customs would later record such information in their intranet for Customs Inspectors to check the contact details of brands/trademarks if they came across suspected counterfeit goods. The former system was conducted efficiently by Customs in practice and the brand owners would not have to sign a letter of consent to bear responsibility. Under the new system, however, the IPRs Center of Customs Department would like brand owners to act in accordance with the regulation concerning the importation and exportation of goods to Thailand and now requires brand owners who would like Customs to continue monitoring their brands to file for Customs Recordation with the DIP.

Required Documents:

  • Certified copy of the Certificate of Registration (or other adequate documents);
  • Notarised Power of Attorney;
  • Letter of guarantee from the applicant (to bear damages that may be suffered by the exporter/importer in the case that goods detained turn out to not be infringing items); and
  • Samples of the products.

More details can be found on the Customs Department’s website http://www.customs.go.th, and Customs registrations can be made at this address:

The Customs Department
1 Sunthornkosa Road, Klong Toey,
Bangkok, 10110, THAILAND
Tel: 02 667 6000/ 02 667 7000
Email: customs_clinic@customs.go.th

Which LANGUAGES can I use?

The application form and required documents shall be completed and provided in the Thai language.

How much does it COST?

Customs recordation with the DIP is free of charge. There is no government fee for filing an application. There is no cost for keeping the seized goods in the Customs warehouse. Customs is responsible for the expenses of the destruction, but in practice, Customs will ask the intellectual property rights owners to help with the expenses. Additional costs and service fees should be added if using a local IP agent (seek quotations beforehand).

Customs TIPS and WATCH-OUTS in Thailand

  • Although Customs recordation with the DIP is not mandatory, it is advisable to record IP rights in their database, as it will help the customs authorities to recognise counterfeit versions of products, and improve the chances of such suspect items being blocked at the border. In case of information on a suspected illegal shipment of products, EU SMEs can also work together with customs in advance to detain such shipments.
  • Piracy and counterfeiting is still widespread in Thailand, as infringers are demonstrating increasingly sophisticated counterfeiting methods and are finding new ways to try outwitting customs and other IP enforcement authorities. An example for such a method is ‘transhipment’, whereby goods are first shipped to an intermediate location in order to hide the point of origin. It is therefore strongly recommended that European business owners record with the DIP and actively cooperate with them.

 

Under the new system, the IPRs Center of Customs Department would like brand owners to act in accordance with the regulation concerning the importation and exportation of goods to Thailand and now requires brand owners who would like Customs to continue monitoring their brands to file for Customs Recordation with the DIP.

 

ENFORCING your IP

Enforcing your IP

In the case of your IP assets being infringed in Thailand, besides using customs to block counterfeits (customs are described separately in Part 4 above), there are two (2) main avenues of enforcement: civil litigation and criminal prosecution. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option, particularly for SMEs facing budget constraints.

Civil Litigation

Civil litigation is one of the options available to IP owners to enforce their rights. The number of civil litigation cases has increased over the past few years. A total of 310 civil litigation cases were brought to the IP&IT Court in the year 2014, and 325 cases were brought in 2015. There were less than 150 cases brought in both 2010 and 2011. While these figures may seem low in comparison to the number of criminal cases that are brought each year, the number of civil litigation cases that are brought continues to rise each year.

In civil proceedings, possible outcomes include injunctions and awards of damages. However, preventive injunctions are rarely granted in Thailand due to the difficulty for the plaintiff to prove the ‘emergency’ of the case to the judge, and the amount of damages awarded is low, thus usually not warranting the investment necessary to engage in litigation.

Criminal Prosecution

Criminal prosecutions are usually considered as the most costeffective enforcement route available to IP right holders in Thailand. However, search warrants necessary to conduct a raid action are also very difficult to obtain, as the standard of evidence of the alleged infringement required is very high. The judges are reluctant to impose harsh penalties on infringers, especially for first-time and minor offenders. This results in light penalties which often do not act as a deterrent to infringers.

Penalties available under criminal prosecution are in the form of fines and imprisonment. Penalties for infringement of a trade mark registered in Thailand can include fines of up to THB 400,000 (approximately EUR 10,000) and/or prison sentences of up to four years (but usually reduced or suspended for first-time offenders).

There are some penalties for infringement of non-registered marks in Thailand (i.e., foreign-registered trademarks) available under the Penal Code. These penalties include fines of up to THB 6,000 (approximately EUR 150) and/or imprisonment of up to three (3) years. However, the legal remedies available to you would be more limited than if you had registered the trade mark.

Enforcement TIPS and WATCH-OUTS in Thailand

  • Although the legal framework in Thailand is relatively developed, major obstacles to an effective fight against infringement remain, as is the case across the majority of Asian countries. Strong enforcement of IP laws together with well-coordinated IP awareness campaigns are necessary to effectively deal with rampant IP infringements in Thailand. You should consult with a local attorney for advice on the best avenue to enforce your rights in Thailand based on your specific case.
  • Criminal prosecutions are usually considered as the most cost-effective enforcement route available to IP right holders in Thailand, while civil litigation is rarely used.

 

Criminal prosecutions are usually considered as the most cost-effective enforcement route available to IP right holders in Thailand.

RELATED LINKS and Additional Information

IPR Helpdesk Blog

Delegation of the European Union to Thailand - https://eeas.europa.eu/delegations/thailand_en

Thai Europe Business Association (TEBA) - http://www.thaieuro.biz/

European Association for Business and Commerce (EABC) - https://www.eabc-thailand.org/

World Intellectual Property Organisation – https://www.wipo.int/portal/en/index.html

The Thai Department of Intellectual Property - https://www.ipthailand.go.th/en/

Central Intellectual Property and International Trade Court - http://www.asianlii.org/th/cases/THCIPITC/

Royal Thai Police Bureau - http://www.aseanapol.org/information/royal-thai-police

Thai Customs Department - http://www.customs.go.th

Department of Special Investigation - https://www.dsi.go.th/index

ASEAN IP Portal – https://www.aseanip.org/

TEAR-OUT supplement

Tear-out Supplement

In the case of IP assets being infringed in Thailand, there are two (2) main avenues of enforcement: civil litigation and criminal prosecution.

Civil Litigation

The relevant documents to initiate a civil lawsuit in Thailand would need to be drafted on an ‘ad hoc’ basis by lawyers licensed to represent clients in the country. The “Complaint for the Court” form is available below. The document is provided to serve as a general example.

Criminal Prosecution

Criminal prosecutions are usually considered as the most costeffective enforcement route available to IP right holders in Thailand.

No official standard forms are publicly available.

Customs Enforcement

IP holders can register their IP rights with the Customs Department of Thailand. The official form “Memorandum of Inspection of Goods with Customs” is listed and included below.