THAILAND – AMENDMENTS TO TRADE MARK ACT

September 14th, 2016

 

On 28 July 2016, Thai Trademark Amendment Act B.E. 2559 has come into force. There are several key amendments that we would like to highlight as they bring significant effect to the changes on trade mark applications and how applicants can protect their trade marks.

The amended Act has provided many changes. Sound mark is a new addition to the range of protection provided by the Act, but they must not directly refer to characteristics or qualities of the goods/services, do not represent the natural sound of the goods/services and do not ensue from the standard functioning of the goods/services as this is distinctive.

Multi-class application is now allowed. The new Act no longer requires application of only one-class filing of goods and services. This rule is in preparation for the implementation of the Madrid Protocol and to simplify the process of issuing and responding to Office Actions. If there is an Office Action or opposition for one or more classes, the entire application will be delayed. If the applicant wishes for the remaining classes to be prioritised, the problematic classes would have to be withdrawn. However, if the objected class(es) is/are the applicant’s products of interest and the applicant want to withdraw the problematic class, it would result in a delay for all classes.

In order to make sure that the application in one or more classes would not be cited against a prior mark or to anticipate any possible issues, trademark search is highly recommended.

Next, association of marks is no longer compulsory. Examiners are no longer authorised to request association of similar marks of the same owner.

The amended Act provides new deadlines for various stages in the trade mark filing and prosecution. Deadline to respond to office actions or appeals has been reduced from 90 days to 60 days and the opposition period has been reduced from 90 days to 60 days. However, there has been an increase in deadline to pay registration fees from 30 days to 60 days.

As it has been mentioned above, the new Act is to make way for implementation of the Madrid Protocol. Hence, there are new provisions that cater for Madrid application. Accession to the Madrid Protocol will require a separate Royal Decree. The Trademark Office is at present, in the process of drafting regulations regarding the international applications. Upon issuance of the Royal Decree, would have to deposit its instrument of accession with the Director General of WIPO. It is expected that Thailand would be a Madrid member by last quarter of 2016 or early 2017.

There are also changes in official fees, but only for some stages. For search services, the official fee would be charged for availability search for one word or device mark in one class including brief advice and market search with brief advice.
The official fee at the filing, registration, and renewal stages is calculated per class. Thus, there is no difference in the official fees of single class or multi-class applications at those stages.

For filing, the official fee for preparing and filing trademark application would be for one mark in one class and for each additional multiple class. Charges for claiming priority for each application would also be for one mark in one class and for each additional multiple class. Furthermore, there will be charges on reviewing and advice on difficult specification of goods and services, submitting evidence to prove acquired distinctiveness, receiving and reporting an office action, responding to an Office Action and filing an appeal to Trademark Board.

For publication and registration, the charges are for reporting publication, paying registration fee, and forwarding certificate and for one mark in one class and for each additional multiple class.

For recordation, there will be official charges for recordal of assignment or merger for first and each subsequent application and registration. Recordation of change of name and address of proprietor will be charged for the first and subsequent application and registration. The charge for first and subsequent registration will also be applied for recordal of a license agreement and its amendment and termination.

For renewal, there are new charges for renewal of a registration. The charges vary if it is done before the expiration date, or within six months after the renewal date. This is applicable for one mark in one class or for each additional multiple class.

For opposition and cancellation, the new charges are for providing advice, filing an opposition, responding to an opposition, filing an appeal against the Registrar’s decision to Trade Mark Board, filing a cancellation petition to Trademark Board, responding to a cancellation petition, withdrawing of an application and registration, obtaining certified copies of Trademark Office extracts including translation, obtaining a replacement registration certificate including translation and obtaining certification concerning registration particulars.

For application under Madrid Protocol, there will be charges for legal assessment of refusal of international (Thailand) application and recordal of presentation.