Trademark basics
Starting with the basics: understanding the legal definition of a trademark
What is a trademark?
A trademark is a sign (drawing, shape, in 2D or 3D), an acronym, a word or combination of words, or even a sound, which is capable of distinguishing the products or services offered by one individual or company from those offered by someone else.
How to choose a trademark?
When selecting a trademark, beside its marketing appeal, one should carefully consider two things from a legal standpoint:
(1) Is someone else already using it to commercialize the same type of products or services?
(2) Is it descriptive of the products or services it will be used with, or maybe too generic
The response to both questions should be “no”.
To ensure that the trademark is available for use, it is preferable to conduct a search in the relevant countries where the mark will be used. Most trademark search databases are now easy to use and are accessible to all prospective owners. However, only a local trademark attorney may be able to assess the degree of similarity with prior registered trademarks, taking into consideration the practice of the national IP office and the national laws and regulations. In Thailand, a trademark search can be done using the Thai Department of Intellectual Property database, available at the following link: https://search.ipthailand.go.th/
The trademark should also be distinctive, which means that the word(s) or sign used should not be descriptive of the nature or characteristics of the products or services to which it applies, and it should also not be generic. For example, the word “Doctor” may not be registered to sell pharmaceutical products or provide medical services, while in Thailand, colors are considered generic words that can also not be registered. However, if only a portion of the trademark is descriptive, it may still be registered with a disclaimer; a disclaimer is a statement recorded during the registration process of a mark, by which the applicant waives their exclusive rights to use the portion of the mark that is deemed generic with the products or services to which the mark applies.
Before trademark registration: preparing information, documents and budget
Trademarks are subject to domestic law, which means that trademark owners must register their trademarks in each country where they seek protection and in doing so, comply with national laws requirements.
Thailand follows the “first-to-file” system: in other words, solely using the trademark will not be sufficient to prove ownership of the mark. Filing a trademark application is an essential step to secure exclusive rights to use the mark and prevent third parties from using it.
There is a series of information of documents that a prospective trademark applicant must prepare, as outlined hereafter.
Selecting the classes and related goods and services for a trademark
A trademark is always registered only in connection with the products (goods) and/or services with which it will be used. These goods and services are organized in a numbered list which is called the Nice Classification, updated regularly, and available at the following link: https://www.wipo.int/classifications/nice/en/
There are 45 classes in the Nice Classification, classes 1 to 34 for goods, and classes 35 to 45 for services. For instance, if the trademark is to be used with cosmetics, it should be registered in class 3. If the mark is the name of a restaurant, it should be registered in class 43. After selecting the class, the specific items within the class should also be listed, since one class can cover many different types of goods or services. By way of illustration, class 45 includes legal services, but also adoption services, cartomancy, babysitting or even “releasing doves for special occasions”.
The Thai Department of Intellectual Property follows the Nice Classification with a few specificities. One should always check prior to filing a trademark that the list of goods and/or services that they selected comply with the national requirements. For Thailand, a bilingual official list of goods and services, derived from the Nice Classification, is available at the following link (keyword search): https://tmsearch.ipthailand.go.th/
Thailand allows multi-class applications, which means that a trademark can be filed in different classes in a single application.
Information regarding the trademark applicant
A trademark can be filed and registered in an individual’s name or in a company name. The address of residence or the location of the principal office should be indicated in the application. It is essential to ensure that this information is identical across all trademarks filed by the same person or entity, to facilitate the registration process and management of one’s trademarks’ portfolio.
Documents required to file a trademark application in Thailand
Foreign applicants must appoint a local representative to file the application on their behalf in Thailand, while Thai companies or Thai nationals or residents may file the application themselves.
When foreign applicants appoint a local representative, the only formal document required is a notarized Power of Attorney.
For domestic applicants appointing a local representative, a Power of Attorney is also required but does not need to be notarized. In addition, they must provide:
– For Thai nationals: a signed copy of their ID card;
– For foreign nationals residing in Thailand: a signed copy of their passport (ID page and visa page);
– For Thai companies: a signed copy of the company registration certificate issued within the past 6 months, along with a signed copy of the ID card/passport of the person(s) who signed the Power of Attorney.
Cost to register and maintain a trademark in Thailand
The official fees for registration and renewal in Thailand are calculated based on the number of classes and items per classes, as follows:
| Trademark filing | – Up to 5 items per class: THB 1,000/item – More than 5 items per class: THB 9,000/class |
| Trademark registration | – Up to 5 items per class: THB 600/item – More than 5 items per class: THB 5,400/class |
| Trademark renewal | – Up to 5 items per class: THB 2,000/item – More than 5 items per class: THB 18,000/class |
If the budget of the applicant is limited, listing a maximum of 5 items per class would be judicious.
Trademark registration process and timeline in Thailand
The overall duration of the registration procedure in Thailand is around 10 to 12 months. It may be shorter or longer, depending on the length of the goods and services and whether the registrar issues any office action or refusal.
Once the application is filed, the procedural steps will be as follows:
01 Examination of the application | Duration: 6 to 10 months
The registrar will check if the application complies with the formal requirements and basic registrability criteria set out by law. If there is any formal or substantive issue, the registrar will issue an office action to ask the applicant to amend the application or notify the applicant of the refusal. The applicant will have 60 days to respond to the office action, or file an appeal against the refusal before the Trademark Board.
02 Publication | Duration: 60 days
Once the application has passed the examination, it will be published in the Thai Trademark Gazette. Third parties will have 60 days from the publication date to file an opposition.
The Gazette can be accessed via the following link: https://tmpub.ipthailand.go.th/en/
03 Registration | Duration: 30 days
If no opposition has been filed, the registrar will issue a letter asking the applicant to pay the registration fees within 60 days of the date of receipt of the letter. The Certificate of Registration will be issued simultaneously with the payment of the registration fees. The mark will be registered for 10 years, renewable indefinitely.
After trademark registration: maintaining a trademark registered and up to date
Validity of a trademark in Thailand
A trademark registered in Thailand is valid for 10 years, counting from the filing date of the mark. It is renewable every 10 years upon payment of the corresponding official fees.
The renewal fees can be paid within 90 days prior to the expiration date. Late renewal is possible in the 6 months following the expiration date, sanctioned by a 20% surcharge of the official fees
A new Certificate of Registration, in paper, is issued after each renewal.
Registering a transfer of ownership of a trademark in Thailand
A trademark is an asset that may be handed over or sold to another company or individual during the course of business operations. The change of ownership must be registered with the Thai Department of Intellectual Property to become valid.
If the trademark has simply been transferred to another person or company (in legal terms, if it has been assigned), the new owner must provide a Deed of Assignment signed by both parties and notarized to the Thai Department of Intellectual Property.
If the trademark has changed ownership due to a merger, a notarized copy of the merger agreement should be provided.
Licensing the use of a trademark in Thailand
The owner of a trademark can authorize someone else to use it in connection with some of or all the goods and/or services designated in the registration, with a license agreement.
To be effective in Thailand, this license agreement must be registered with the Thai Department of Intellectual Property and include the conditions and terms of the use of the trademark and specify the goods or services with which the trademark is to be used by the licensee.
The trademark owner must retain control over the quality of the goods or services provided under the license agreement. Failure to exercise such control can be cause for the cancelation of the license agreement.
After trademark registration: protecting a trademark from infringement
Trademark watch: preventing a party from registering a similar trademark in Thailand and overseas
Trademark watch refers to the monitoring of trademarks filed and published in Thailand and in other countries to ensure that another party offering the same type of goods or services will not try to register an identical or similar mark. This service is offered by intellectual property law firms and service providers specialized in this type of work. It can also be done by the owner of the mark themselves by checking WIPO Global Brand Database (https://branddb.wipo.int/branddb/en/) but is rather time-consuming.
If the watch identifies that a similar trademark has been filed and published, the legitimate owner of the trademark can file an opposition against the copycat applicant during the publication period, proving that they have better rights in the trademark.
Trademark enforcement: taking action against the unlawful use of one’s trademark
If a trademark is being used by a third party without the consent of the owner of the trademark, the legitimate owner may take legal action against the infringer. The legal remedies available encompass sending a cease-and-desist letter, filing a complaint with the police, conducting a raid or filing a criminal and/or civil lawsuit against the infringer.
Please refer to our IP Enforcement section for more information.
