14 Dec Trademark Act
The Importance of Thailand’s new Trademark Act –
Thailand’s new Trademark Act came into force on July 28, 2016. Overall, we believe that the new Trademark Act will be good for IP practitioners and Thailand as a whole. The introduction of multiclass applications, the grace period for renewals, and capped fee amounts certainly makes things more convenient for IP owners. The new fees; however, are on the high side when compared to many other countries. We are expecting more changes in Thailand’s IP system in the near future. For example, complete online IP filing should be available by mid-2017. Currently, there is a partial online filing system. An application can be submitted online, but then the hard copies must be filed with the Department of Intellectual Property (DIP) within 15 days and the fees paid at the DIP within 24 hours after filing online.
Some past problems also have not been addressed in the new Trademark Act, specifically the strict criteria in examining the distinctiveness of a trademark in Thailand. Even so, the new Act is not likely to affect the actual practice and the criteria of examination stay the same. There are also issues regarding the description of goods and services. Even though Thailand has adopted the 10th Edition of the Nice Classifications, the DIP still has its own list of acceptable designations. The list is a collection of acceptable wordings in Thai language that have been previously accepted in the past. The list can be very different from the Nice Classifications. Harmonizing the Thai language list and the Nice Classifications is something that needs to be addressed in the future.
The new Act is also intended to support the Madrid Protocol, a central registration system for the international registration of trademarks and service marks via a single application. However, registrations under the Madrid Protocol are not expected to be available until sometime in 2017. In general, the Madrid Protocol will be good for Thailand. However, Thai companies will need to understand the pros and cons of using the Madrid Protocol and know how to use the system. For example, if a company wants to protect the house brand in a large number of countries, then using Madrid will be effective and much cheaper. If a company is only looking to file in one or two countries, then direct filing would be a better choice. To protect a sub-brand in a particular group of countries when using versions localized to a particular region, direct filing would be better. For a localized version in a specific language, for example, Mandarin Chinese, this should be supported by a direct filing in China. It would not be effective to file the Chinese language mark in other countries. Thai companies must also pay attention to the Central Attack concept and filing strategies.
Important changes and new amendments to the Act
The new Act expands the definition of a trademark in Thailand beyond the traditional trademark of the past and now includes the sound mark. However, there are no regulations regarding the filing and prosecution process of sound marks at this time. We have been discussing the general criteria with the Registrar and believe that applicants will be required to submit a sample of the sound mark in a digital format for the purpose of examination. We believe that the new sound mark will be good for Thai businesses. Marketing activities for businesses are becoming more complicated, so marketers need to be more creative and be given more tools to communicate with their customers. To do this, trademarks should not be limited to just marks or visual representations and should cover a wider range of protections.
Increased Fees and Capped Fees
Under the new Act, all official fees for filing, registration, and renewal have at least doubled, but a ceiling rate has also been introduced. In the past, costs depended on the number of items designated in the application. Now, for five or more designated items, there is a capped fee amount for filing, registration and renewal fees. This is good news for businesses that need to register large numbers of items as the capped fee will significantly reduce the costs of the official fees. On the other hand, for less than five items, the official fees will be at least double.
In the past, Thailand only offered single class applications. Now, it’s possible to file a single application designating different classes at the same time. While this kind of multiclass application is similar to ones in other countries, it has some limitations in Thailand. At present, there are no rules, regulations, or procedures to separate a filed multiclass application at a later stage. This means that if a client files a multiclass application and there is an objection or opposition against one of the classes designated, then they will either have to file an appeal or remove the designated class that has a problem. In other countries, a multiclass application can be divided and separated. For example, if an application covers class 1, 2 & 3 and then class 3 has an opposition filed against it, the application can be divided. Class 1 & 2 can proceed to registration and the dispute can go on for class 3 only. Unfortunately, this option is not available in Thailand at this time and there is no plan for this to be available anytime soon. Before filing a multiclass application in Thailand, if there is a likelihood of any objection or opposition, it may be better for the client to register several single class applications. If there is no likelihood, for example, the mark has been registered in the past, then a multiclass application is advantageous.
Under the new Act, there is no longer an association requirement. In the past, same or similar marks covering goods with the same or different classes with the same owner had to be registered as associated trademarks. One of the serious drawbacks to this requirement was that associated marks could not be assigned or transferred separately. With the association requirement gone, trademark owners now have much more flexibility in assigning their marks. Associated marks registered under the old Trademark Act are no longer considered associated.
Reduced Time Frame for Office Actions and Oppositions
The period of time to respond to an official notification or file an opposition has been reduced to 60 days, instead of the previous 90 days. This will significantly affect IP practitioners in Thailand and IP practices will have to adapt their timelines and procedures accordingly. In the past, when the publication period was 90 days, clients had more time to decide on filing an opposition or not. For monitoring services, practices will have to report faster or even before publication if there is a possibility the application will be allowed for publication. Unlike other countries, Thailand does not offer any kind of extension, so now everything has to be completed in 60 days. This will be good for Thailand as it will help reduce the backlog at the Trademark Office and will be important in helping the Trademark Office meet Madrid Protocol application deadlines.
There is now a grace period for renewals. Six months after the expiry date with a 20% surcharge.