2016 – Trademark Act of Thailand – The amendments

4th July, 2017 - 2:27 pm Categories: Intellectual Property News & Updates 0 Comments

The Government of Thailand has made several new amendments in their trademark act [1], which have become effective on July 28 2016. These amendments have brought significant changes in structural policy of Thailand. This includes Thailand’s ratification of the Madrid protocol, which allows an application for registration of sound marks. Other changes introduced via these amendments in the Trademark act, include the procedure and prosecution of trademark registration in Thailand, and, thus, the change in Intellectual Property (IP) strategy. Anticipatoryamendments to the registration and prosecution process are mention below.

1. Multi-Dimensional Applications for Trademarks Allowed[2]

Previously, Thailand did not accepted multi-dimensional, multi-class filings using a single application, but multiple applications of single-dimensional, single-class filings were used instead. The changes via the amendments in the Trademark act of Thailand effective from July 2016, now allows multiple-dimensional, multi-class filings in a single Trademark application. This does not mean that the single class filing applications will not be accepted. They are still accepted.

There are both advantages and disadvantages of multiple-dimensional, multi-class filings [3]for the amended Trademark act. The main advantageis the ease inthe registration process for Trademark filing – same/single application can now be usedfor filing for protection in multiple-dimension, multiple-classes, which results in less paperwork, registration fees, and a more structured/streamlined process.

However, the majordrawback of the amendments is the possibility that complexitiesregarding one of the, multiple-dimensional, multiple-classes applied for could affect the approval process for the entire application as a whole. This is due to the factthat an application for multi-class, multi-dimensional filingsis treated as a single application, with each dimension being only a single component part of the application. This means that, at worst, an opposition or other objections in single class can delay the entire application to lapse altogether.

Because of the Pros and Cons of filing multiple-dimensional, multiple-classes trademark applications under the new Trademark act of Thailand; it has now become very important to devise a well-assessed IP strategy for selecting the type of Trademark application to be used. Some Trademarks can get the benefit of filing a single-class application when the main objective is the timeliness and the priority date of registration, or if the business plan is for short-time monetary gain and does not include future IP portfolio expansion. However, certain other trademarks with the potential for business as far as expanding IP portfolio is concerned would enjoy benefits of these amendments in the new Trademarks Act of Thailand. Therefore, a mixture of pros such as ease and timeliness of registration process and portfolio expansion may prompt IP owners to go for multi-dimensional, multi-class Trademark applications for potential business growth and portfolio expansion.

1. No requirement of associated marks

In the previous Trademark Act of Thailand, i.e. the single-class filing process, the Intellectual Property department of Thailand used to ask IP owners to associate related/similar marks filed across various other classes. In other words, previously under Trademark Acts section 14 the Trademark registrar wasallowed to order the Trademark applicant of associating identical or similar trademarks [4] that relate to products or goods in same or different classes. This provision was required to avoid misunderstanding in pubic that different IP holders, which are similar or related as judged by the registrar, but, in fact, they belong to the same IP owner.The main drawback for IP holders due to this requirement was that the associated marks cannot be transferred or assigned separately, but must be assigned as a collection of registered “associated” marks, which required additional fees.

The amendments in the new Trademarks act of Thailand have removed the requirement of associated marks completely. After thesechanges have become effective, thetrademarkowners of associated marks are able to transfer and assign each mark single basis. [5]

Other amendments [6]

There has been a reduction in the period for filing amendments, appeals or opposition from previously 90 days to currently 60 days which is calculated from the day of receipt of related order from the Trademark Office.

Increase in time-period – from 30 to 60 days with respect to paying the registration fees.

Introduction of Grace Period for renewals– Renewal is possible within six months from the expiry date against a 20% surcharge.

About the Author : Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Footnotes

[1] “Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol.” Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol | Tilleke&Gibbins. Tilleke&Gibbins, 3 June 2016.

[2] “Thailand Update: Trademark Amendment Act Brings Changes for Trademark Law.” Spruson&Ferguson.Spruson& Ferguson, 16 June 2016.

[3]1, 2016 August.”UPDATING NEW THAILAND TRADEMARK ACT.”IP NEWSLETTER (n.d.): n. pag. ILCT, 1 Aug. 2016.

[4] Mirandah. “Thailand – When Trade Marks Must Be Associated.” Mirandah Asia. Mirandah, 19 May 2017.

[5]”Hailand: Amendments to the Trademark Act Information Is Provided by Www.ip-coster.com.” Thailand: Amendments to the Trademark Act. IP Coster, 26 July 2016. Web

[6] European Patent Office: Comprehensive Amendment to the Trademark Act