Trademarks are intellectual property used in association with goods or services to identify their manufacturer or provider. A trademark will be protected only after it is registered with the Department of Intellectual Property, Ministry of Commerce. Upon registering a trademark, its proprietor will be entitled to solely use it with his goods or services and to guard against use by others, except with his consent, in which case such consent is to be registered with the Department of Intellectual Property in the form of a licence to use trademark. The law applicable to the registration, the use and the licensing of trademarks is the Trademarks Act B.E. 2534 (1991).
Are unregistered trademarks protected under Thai law?
Though the law provides that only registered trademarks are protected by the Trademarks Act, the trademarks which are not registered with the Department of Intellectual Property may be protected under the Penal Code of Thailand (Offences relating to Trade), particularly Section 272, which provides that “Whoever uses a name, figure, artificial mark or any wording used in the trade of others, or causes the same to appear on goods, packages, coverings, advertisements, price lists, business letters or the like with the intention of misleading the public about the proprietor of such goods or trade shall be liable to imprisonment for a period not exceeding one year or a fine not exceeding Baht two thousand, or both.”
With such provisions, unregistered trademarks are, in effect, protected by the Penal Code. As a result, if there is an unauthorized use of a trademark, the proprietor of such trademark may file a complaint with the inquiry official for prosecution against such unauthorized person on grounds of violation of Section 272.
A number of Supreme Court Judgments, e.g., Supreme Court Judgments No. 1731/2506, No. 96/2523, No. 2157/2523, confirm that the Penal Code has been enforced in protection of the unregistered trademarks.
However, the offence under Section 272 is a compoundable offence, meaning that the person who has used a trademark without official permission may negotiate with the proprietor of such trademark about paying compensation in order to close the case.