Q15. What is the overall flow of trademark registration?
A: After application, a formality examination will be conducted. If it is deemed that the formalities are being observed, the process proceeds to a substantive examination to determine whether or not registration is permitted and if the registration is approved, it will be announced in the official gazette and registered.
A: Subject matters of copyright include literary, artistic and scientific works.
Subject matters of copyright-related rights include performances, phonograms, video recordings, broadcasts and encrypted program-carrying satellite signals.
Subject matters of industrial property rights include inventions, industrial designs, layout-designs of semiconductor integrated circuits, trade secrets, marks, trade names and geographical indications.
Subject matters of rights to plant varieties include plant varieties and reproductive materials.
Q18. What kind of relief is available for trademark infringement?
A: There are reliefs for trademark infringement by criminal charges, civil lawsuits, and customs injunction. Since it takes about 1 to 2 years from trademark application to registration, if a foreign company has not acquired a trademark right in Thailand, the provisions of criminal law are often used to protect unregistered trademarks. The reason is that it is cheaper than civil lawsuits, and it is only necessary to prove that it is an illegal activity and commercial activity due to misappropriation. In addition, Thailand adopts a private prosecution, so the trademark owner themselves can file a criminal complaint against the person who infringes on the trademark right. Trademark owners can join the trial as a joint plaintiff with the prosecutor, so it enables people to be sure that the infringing product has been disposed of. It also applies to non-registered trademarks.
A: Intellectual property rights have Copyright, Copyright-related rights, Industrial property, and Rights to plant varieties.
Trademark categorizes in industrial property.
A. Yes, there are four conditions for applying for the Madrid Protocol:
- A trademark application or trademark registration should have already been made in own country
- Trademarks should be the same
- The specified goods and services should be the same or within the same range
- The applicant or the holder should be the same
A: The following acts are not considered as an infringement.
- Use of first and last names, surnames and business addresses with bona fide, including the business of their predecessors, or acts with bona fide using descriptions of the nature and quality of products (Article 47)
- Parallel import (Supreme Court Judgment No.2817 / 2543 2000)
- suspension and claim of damages against violated non-registered trademark cannot be requested except in cases of fraud with counterfeit goods or passing off (*) (Article 46)
* Passing off: Non-registered trademarks can be protected in the same way as passing off, which is a common-law right of the British legal system if the infringer can be proved to be malicious.
Q14. Is there any way to check whether there are any trademarks that are similar to the one we are planning to apply for and which have already been registered or are pending?
A: We can check with the following methods.
(1) Method of submitting Form TM4 to the Registrar with a prescribed commission fee of 360 RM and a copy of the trademark indication
(2) A method in which the applicant or his / her representative conducts a manual inspection at the Kuala Lumpur Trademark Office
(3) Method using Online Search & Filing System of Intellectual Property Corporation of Malaysia (MyIPO) (http://www.myipo.gov.my/en/home/)
A: The Philippines requires you to submit a Declaration of Use (DAU) for domestic applications. Note that this is also required for international applications via the Madrid Protocol.
In addition, the Madrid Protocol application is a very useful system for trademark registration overseas, but it has disadvantages. Since the registration is dependent on the home country application or registration for five years after the international registration, if the home application or registration is rejected, withdrawn, abandoned or invalid, the international registration will also be revoked. This is called the central attack, in which case the applicant can change to a national application for each designated country within three months after the cancellation of the international registration. In that case, the application will be deemed to have been filed on the international registration date.
A: The treaties or institutions that are members are as follows. Figures in parentheses are membership years.
- Madrid Agreement Concerning the International Registration of Marks (1949)
- Paris Convention for International Protection of Industrial Property (1949)
- World Intellectual Property Organization (WIPO) (1976)
- Patent Cooperation Treaty (PCT) (1993)
- The Berne Convention for the Protection of Literary and Artistic Works (2005)
- Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (2005)
- The International Union for the Protection of New Varieties of Plants (UPOV) (2006）
- Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite) (2006）
- Madrid Protocol (2006)
- International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (2007)
- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPSs) (2007)
Q16. What actions are considered to be infringements of trademark rights?
A: The following actions are considered to infringe on the trademark rights stipulated by the Trademark Law.
- The act of using a registered trademark in goods or services without the consent of the trademark owner (Article 44)
- An act of falsifying another person’s registered trademark (Article 108)
- An act of imitation so that it is misidentified as a registered trademark of others (Article 109)
- Import, sale, offering sale of goods and possession for sale purposes with registered trademarks of others counterfeited or imitated. (Article 110 (1))
- Providing services or applying for services using registered trademarks of others counterfeited or imitated (Article 110 (2))