The procedural changes introduced by the 2016 Trademark Act

The amendments in Thai trademark law brought about by the 2016 revisions were aimed partly at preparing national legislation for Thailand’s accession to the Madrid Protocol. Such intent can be read clearly from the whole new Chapter 1/1 on “Trademark Registration under Madrid Protocol”, or the recognition of a new category of unusual marks – the sound marks.

Other changes were made to procedural rules pertaining to trademark application, registration and prosecution to simplify and harmonize processes and timeframes, as summarized below.

A simplified and more lenient application procedure

Prior to the 2016 Trademark Act, a trademark owner seeking protection of his/her trademark across different classes would have to file distinct single applications for each relevant class. The new procedure allows for multi-class applications, thus alleviating paperwork and official fees. It is worth noting, however, that it might not always be the best option for the applicant seeking multi-class protection, depending on his/her business plan or IP strategy and related commercialization deadlines.[1]

In addition, an owner of distinct trademarks that target the same kind of products and considered to be similar or identical will no longer be required to associate these during a new trademark application.[2]

Finally, the owner of a trademark who has missed the usual deadline of 3 months prior to the expiration date to renew the registration of his/her trademark now has the possibility of applying for the renewal up to 6 months following the expiration date, although he/she will have to pay a penalty fee (surcharge of 20% of the renewal fee).[3]

Harmonized procedural timeframes

The Thai Trademark Act reduced or increased several procedural deadlines to bring them to a blanket 60-days deadline. For instance, the applicant now has 60 days following the date of the pertinent event to file an opposition notice, to amend a list of goods or services or to answer to a number of other requests from the Trademark Office.

Last but not least, the 2016 Trademark Act devised a new set of official fees, which can be accessed on DIP website: http://www.ipthailand.go.th/en/trademark-006.html

References:
[1] Section 9 of Trademark Act (No. 3) B.E. 2559
[2] Section 35 of Trademark Act (No. 3) B.E. 2559
[3] Section 54 of Trademark Act (No. 3) B.E. 2559