The Department of Intellectual Property, the competent authority, prepared and submitted a Draft Trade Mark Bill (the “Bill”) to the Council of State for its consideration and review in 2008. After pending for consideration for more than 3 years, the Council of State recently approved the Bill and has submitted it to the Cabinet for their consideration and approval.
On 22 November 2011, the Bill was approved by the Cabinet and the approved version was submitted to Parliament for its final consideration and approval before being published in the Royal Gazette and becoming enforced.
The Bill contains several significant points. The Department of Intellectual Property believes that it will expand the scope of trade mark protection in Thailand, make the registration process faster and easier and provide more suitable fees for registration.
The main points are as follows:
- Definition of the term “Mark”
Under the current law, “Mark” is defined as a photograph, drawing, device, manual, signature, combination of colors or shapes or a configuration of an object or any one or the combinations thereof.
Under the Bill, “scent and sound” have been included in order to expand the definition of Mark protected in Thailand.
- Distinctive status of trade mark
The Bill provides clearer and more specific criteria for distinctive status as to whether the mark is distinctive or not. The Bill provides that an invented word, invented number or invented character have distinctive status and are able to be registered as trade marks. Such criteria dispel a long history of arguments between applicants and trade mark examiners on whether such marks can be registered and protected under the trade mark system. The Bill also provides that a shape mark has a distinctive status, and that the shape of a mark can not indicate the nature of the goods, can not obtain a technical result and can not give substantial value to the goods. The Bill also provides specific criteria for scent and sound marks stating that such marks can not indicate directly to the character or nature of the goods and can not be the scent or sound of the goods themselves.
Moreover, the Bill provides that if a trade mark is not inherently distinctive as provided by law, it can acquire distinctive status by way of acquiring a secondary meaning – that is, proving that the mark has been used in the applicant’s goods or services in commerce and has become well known in Thailand. The trade mark will then become distinctive.
- Multiple-class applications
In this Bill, multiple-class applications will be allowed in place of a traditional single-class application.
- Timeframe for responding to office actions/decisions
The timeframe for responding to any office instruction/decision will be shortened from 90 days to 60 days from the date of receiving such official action issued by the trade mark examiner or receiving the decision of the Trade Mark Board. The competent authority believes that the current timeframe is too long and only prolongs the registration process. Thus, it has been decided that the timeframe be shortened in order to expedite the registration process of trade marks.
- Timeframe for paying registration and renewal fees
The current law provides that the applicant shall pay the registration fee within 30 days after acceptance of the instruction for registration of a trade mark. Under the Bill, the time frame for paying of such fee will be extended to 60 days in order to give the applicant more time to settle the payment.
The Bill also provides a chance for the applicant to delay the payment of a renewal fee but a surcharge at the rate of 20 percent from the amount of fee will be applied.
- Government fees
Government fees for some of trade mark’s prosecution will be increased; such as the fee for applying for the mark which will be increased from 500 Baht to 1,000 Baht per goods/service.
- Transitional period
The provision of the current Trade Mark Act B.E. 2534 (A.D. 1991) shall be applied to any application for registration, assignment, license, amendment, renewal or revocation which has been filed with the authority prior to the enforcement of this Bill.
It is difficult to predict how long will it take for the Parliament to consider and approve the Bill. However, we are optimistic that the above amendments to the Bill will bring our trade mark system and the practices of the trade mark examiners closer to international standards and provide business operators the support needed to protect their trade marks in Thailand.
By Rawat Chomsri, Partner, Daniel Q. Greif, Senior Counsel, and Panisa Suwanmatajarn, Associate © December 2011
Khun Rawat can be reached at email@example.com
Daniel can be reached at firstname.lastname@example.org
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