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: 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.
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))
Q15. What action can we take against trademark infringement?
A: Registered and unregistered trademarks are protected under the law. (Registered trademark: Trademark Act BE2534, Unregistered trademark: Penal Code Article 272-275 and Trademark Act BE2534 Article 46, Paragraph 2)
Trademark owners can suspend infringement and claim for damages. We can also use the Civil Code, Commercial Code, Consumer Protection Law, Pharmaceutical Affairs Law, Industrial Product Standard Law, and other related laws and regulations for exercising our rights. Prosecutors and trademark owners can prosecute criminal charges against infringers by bringing them directly to the court or to the police station for illegal activities. Violators will be penalized. (Trademark Law Article 107-116)
A: These are the following methods.
(1) Thailand Trademark Database
This is the official database of the Department of Intellectual Property, Ministry of Commerce (DIP).
The trademark database used to be a registration system and was subject to fees and users were limited to Thai residents only.
But these restrictions have been repeal. However, the database language is available only in the Thai language.
(2) ASEAN TMview
The search for trademarks in 9 ASEAN countries is available. The countries included are Brunei, Indonesia, Cambodia, Laos, Malaysia, Philippines, Singapore, Thailand, and Vietnam.
This is a foreign patent information inquiry service provided by the Japanese Patent Office.
Q13. How long is the term of trademark right?
A: Trademark rights will be protected for a decade from the date of application.
It can be updated every decade and if it is updated continuously, it will be for permanent. However, we must apply for renewal registration within 90 days before the end of the trademark term.
Registered trademarks are considered registered on the date of filing.
In addition, regardless of the term, if ground for invalidation may be discovered there will be a possibility of invalidity through trial examination.
Q12. How long does it take to register a trademark?
A: If there is no reason for refusal, registration will take place within 10-18 months after application.
It takes about 9 to 10 months from application to examination, and about 12 to 16 months from application to registration. It takes about 21 to 26 months from application to registration in total.
Q11. How much does it cost to apply for a trademark?
A: The list of product types in the category determines the number of applications and the public costs to be paid. The trademark application fee is 1,000 THB for each product/service specified at the time of filing (if there are 5 or fewer products), and 9,000 THB for more than 6 products/services that require protection.
(1) Application fee
- 1 designated product / service (1 category) 1,000 THB
- 6 designated products/services or more (1 category) 9,000THB (maximum)
(2) Opposition fee 2,000 THB
(3) Registration fee
- 1 designated product/service (1 category) 600THB
- 6 designated products/services or more (1 category) 5,400 THB (maximum)
(4) Appeal request fee 4,000THB
(5) Renewal application fee
- One designated product/service (one category) 2,000 THB
- More than 6 designated products/services (1 category) 18,000 THB (maximum)
Q10. What documents do I need to apply for a trademark?
A: The following documents are needed.
(2) Trademark sample
(3) Power of attorney
・Applicant’s signature and signature notarization are required. Certification by the Thai embassy or consulate is not required.
・ You can apply for a signed copy of your proxy and subsequent completion a notarized proxy later. In that case, it must be submitted before the formality examination (about 7-8 months from the date of application).
* Only when requested by the examiner
・ Priority certificate (within 90 days from the request date)
A: Since 2016, it has become possible to apply simultaneously for goods or services which a trademark covers multiple categories.
However, it is not allowed to divide into categories after application, so if an application containing multiple categories is rejected for some categories, registration procedures for categories that have not been rejected cannot proceed first.