16 June, 2016

Thailand Update: Trademark Amendment Act brings changes for trademark law

Thailand Update: Trademark Amendment Act brings changes for trademark law

The Thai Government’s Trademark Amendment Act B.E. 2559, will come into force on 28 July 2016 bringing with it welcome changes to the landscape of Thai trademark law. Its recalibration of the current procedures is complemented by new additions, which will help propel Thailand further towards the international standard of IP protection.

Changes to the Trademark Application Procedure

  • Multi-Class applications available

The Act eliminates the current requirement of filing one application in one class of goods/services. This means that it will be possible to file multi-class applications. Aside from approximating national law in preparation for accession to the Madrid Protocol, this change is expected to further simplify the process of issuing and responding to Office Actions.

  • Association of marks no longer required

The Act revokes the present law’s authorization given to Registrars to request association of similar marks of the same owner.

  • Suspension of later applications for marks deemed identical or similar to previous applications/registrations

Under the current regime a prior application automatically negates other applicants’ rights to later apply for the same mark, the Act provides for a clearer procedure to deal with cases where identical or similar marks are filed successively, i.e. the later applications will be suspended, rather than rejected, while the first application undergoes examination.

Improved Prosecution and Protection

  • Wider identical and similar trademark search

Registrars will be examining citations from all classes and not only the specific class(es) in which an application was filed, given that items of goods in the application and citations are of the same characteristics. Thus, the scope of trademark protection is further extended and there will be more focus on coexistence of trademarks on the register.

  • Reduction in prosecution time

The Act advocates reduction in the time period for responding to Office Actions and oppositions from the previous 90 days to 60 days. This can potentially reduce the average prosecution time by 3 months.

  • Extension of deadline to pay registration fees

The deadline to pay registration fees will be extended from 30 to 60 days after the Registration Notification date with a possibility to request for further time extension.

  • Renewal grace period

The Act adds a grace period of 6 months after the registration expiration date, during which registrants will be allowed to renew their registrations at a late renewal fee.

  • Effect of trademark assignment and inheritance

The Act clarifies that assignment or inheritance of trademark ownership does not extinguish the valid licenses agreed previously in relation to the subject mark. In the absence of such provision, the current situation requires new license agreements to be made and recorded after each assignment, and the Act will eliminate this complication.

  • Sound marks

Arguably the most publicised new addition by the Act is the protection of sound marks. As goods and services are capable to distinction by sonic means, sound marks, which have been afforded protection in numerous jurisdictions, is a natural addition to the categories of marks protected under trademark law. Sounds that do not make direct reference to the characteristics or qualities of the goods/services, do not represent the natural sound of the goods/services or do not occur from the normal functioning of the goods will be considered distinctive.

  • Refilling prohibition

The Act decrees that any person who uses packaging materials bearing the trademark of another for the packaging of his own goods in order to mislead the public to believing that the said goods originated from the trademark owner will be liable to 4-year imprisonment or a fine not exceeding THB 400,000 or both.

Preparations for Madrid

In order to construct the legal infrastructure for Thailand’s accession to the Madrid Protocol, new provisions have been imposed, including those pertaining to an applicant’s entitlement to apply and the relevant procedures. However, further Royal Decrees will need to be issued in order to complement this basic structure.

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