Overview of Thailand's trademark system

Response to reasons for refusal: When an applicant receives a notice of reasons for refusal from an examiner, the applicant must respond within 60 days. Registration may be achieved by narrowing down or partially deleting the specified products, or by disclaimer waiving rights claims for part of the trademark. For example, if it is clearly stated that no rights are claimed in the descriptive words or phrases in a trademark, registration of the trademark as a whole may be allowed. Please note that if you do not make amendments or submit a written opinion within the application deadline, the application will be considered abandoned. Even if the examiner makes a final refusal, it is possible to appeal and contest the application to the Trademark Board as mentioned above. The Trademark Committee is chaired by the Director of the Intellectual Property Bureau and is comprised of 8 to 12 legal and commercial experts, and examines the validity of examiners' decisions. On average, a hearing before the Trademark Board takes approximately 18 to 24 months. If you are dissatisfied with the committee's decision, you will have to file a lawsuit with the Intellectual Property and International Trade Tribunal (Intellectual Property and International Trade Tribunal) for judicial review within 90 days. Similar to Japan, there is a multi-stage appeal process (in Japan, a refusal at the examination stage goes through the JPO, the Intellectual Property High Court, and the Supreme Court).

Subject of protection (definition of trademark, distinctiveness, etc.)

Definition and Types of Trademarks: Article 4 of the Thai Trademark Law broadly defines a "trademark" and stipulates that it is a "photograph, picture, figure, brand, name, word, letter, number, signature, combination of colors, shape or appearance of an object, sound, or a combination thereof." In the 2016 law revision, sound trademarks were added to the definition, and sounds can now also be registered as trademarks. Therefore, in Thailand, in addition to traditional word and figure trademarks, non-traditional trademarks such as three-dimensional shapes (3D trademarks), combinations of colors, and sound marks are also subject to protection. However, smell trademarks and motion trademarks are not clearly specified under current law, and there are no examples of them being registered. In addition, service marks used for services, collective trademarks used by communities, and certification trademarks that certify the quality of goods and services are also subject to legal protection. These systems are almost the same as the concepts of service marks, collective trademarks, and certification marks under Japanese trademark law.

Distinctiveness requirements: As mentioned above, a wide variety of marks can be applied for as trademarks, but in order to actually receive registration, it is necessary to have distinctiveness to distinguish it from the goods and services of others. For example, corporate logos and coined brand names are usually recognized as distinctive. On the other hand, if the shape of the product itself (three-dimensional trademark) is merely a design of the product, it may be rejected as it does not have the function of indicating the origin. The Intellectual Property Office of Thailand is cautious about registering 3D trademarks, and will only approve packaging shapes if they are unique shapes that function as an indication of origin and are not used by other companies in the same industry (purely functional shapes or common packaging shapes are not allowed). In addition, it is said that it is difficult to register trademarks consisting only of colors based on abstract combinations of monochrome or multicolors, unless there is a case where a specific combination of colors has become famous and acquired distinctiveness. However, in the 2016 revision, "combination of colors" was specified in the trademark definition, so there is a possibility that registration examples of corporate colors, etc. of companies will accumulate in the future.

Protection of well-known and well-known trademarks: Thailand is a member of the Paris Convention, and unregistered well-known trademarks are protected to a certain extent. Specifically, under Article 8 of the Trademark Act, registration of a trademark that is identical or similar to another person's well-known trademark will be refused as it is contrary to the public interest, and under Article 67 of the Trademark Act, within five years of registration, a trademark that was previously registered can be requested to be canceled by the court by proving that the trademark was used first and became well-known. However, in terms of operation, cancellation under Article 67 is only permitted for "trademarks that are widely known in Thailand," and the hurdle is high. In principle, unregistered trademarks themselves do not have the right to claim non-infringement, so in practice it is important to ensure protection by registering important trademarks.

Scope of trademark rights: Registered trademark rights extend to the unauthorized use of trademarks that are the same or similar to the registered trademark for designated goods and services (the basic concept of the scope of rights is the same as in Japan). In Thailand, it is also possible to register by specifyingcolors at the time of application.For example, if you obtain rights for a specific combination of colors, the rights will be limited to the use of those colors. On the other hand, if you register it in monochrome without insisting on color, you have the advantage of being able to exercise your rights to use it in any color. As an application strategy, you may also consider choosing not to request a color even if the color of the logo is distinctive. Furthermore, as a language issue, it is also possible to apply for a trademark in Thailand in both Thai and Roman characters. For example, if an English trademark and its Thai transliteration are registered as one trademark, even if a third party uses only the English or Thai notation, the rights will be granted.There are advantages to being able to exercise your interests. However, on the other hand, if the trademark owner does not use both expressions, it is difficult to assess the risk of cancellation due to non-use. In practice, it is safer to applyforseparately for English trademarks and Thai trademarks, and it is desirable for Japanese companies to consider registering both if their brand name is likely to become established locally as a Thai name.

Update and duration

The term of trademark rights in Thailand is stipulated as 10 years from the filing date (if there is a priority right, starting from the basic filing date), and it can be renewed any number of times every 10 years thereafter. **≪Reference≫** In Japan, the period is 10 years from the date of registration, but in Thailand, it is based on the filing date, so it should be noted that if the examination period is prolonged, the effective period of initial protection will be shortened. For example, if it takes one and a half years from application to registration, the remaining period will be approximately eight and a half years at the time of registration. This has been changed from the previous ``10 years from the date of registration'' due to legal reform (enforcement of the 2016 revised law).

Renewal Procedure: Trademark owners must apply for renewal within the last three months before the expiration date. Even if you miss the renewal deadline, you can renew within the 6-month grace period by paying an additional fee (20% more than usual). Once this grace period has passed, the trademark right will expire and applications will be allowed to be filed by third parties. There is no particular obligation to submit proof of use at the time of renewal, and the procedure is completed by paying the prescribed renewal fee (there is no declaration of use system like in the United States). It is similar to the renewal system in Japan, and if you want to continue protecting your trademark, you need to manage the deadline and register for renewal every 10 years. In Thailand, it is common for renewal procedures to be carried out through a local agent, and in the case of foreign companies, there are many cases where the agent will contact you about six months before the expiry date to inquire about whether or not the renewal is possible.

Right infringement and remedies

Requirements for trademark infringement: If a trademark that is the same as or similar to a registered trademark is used for designated goods or services without the permission of the trademark owner, it will constitute an infringement of trademark rights. In Thailand, theregistration principle is strictly enforced, and in principle, enforcement of rights (injunctions and claims for damages) against unregistered trademarks is not allowed. Therefore, it is essential toregister your trademark to protect against unauthorized use of your trademark by others. Even if another company uses the same mark in an unregistered state, redress under general torts (Article 420 of the Civil Code) is difficult (almost no protection is provided in practice except in cases of malice), and the crime of passing off (acts of using someone else's product or business markings to mislead as to the source) under Article 272 of the Penal Code can only be punished by up to 1 year in prison or a fine of up to 20,000 baht. This criminal law provision is similar to Article 2, Paragraph 1, Item 1 of Japan's Unfair Competition Prevention Act (unauthorized use of another person's product display), but the scope of application and penalties are limited. Therefore, for Japanese companies, trademark registration is the best way to protect important brands locally.

Civil and criminal measures: Legal measures for trademark infringement in Thailand include both civil proceedings and criminal prosecution, but in practice, criminal proceedings are often used. Violation of trademark law is considered a crime, and rights holders can prosecute infringers to law enforcement authorities such as the police. After conducting an investigation, the police obtain a search warrant (search and seizure warrant) from the court, and seize the infringing goods and arrest the culprit. In Thailand, there are several specialized agencies for controlling intellectual property infringement, such as theEconomic Crime Investigation Division and the Department of Special Investigation (DSI), which play a central role in detecting counterfeit brand products. Criminal procedures allow forcible investigations by public authorities and are effective in quickly seizing and halting distribution of infringing goods, so they are widely used by rights holders as a countermeasure against counterfeit goods. Criminal prosecution is permitted for acts of infringement or attempted infringement of registered trademark rights, and the statutory penalty is imprisonment for up to 4 years or a fine of up to 400,000 baht (in the case of trademark infringement). Especially for the manufacture and sale of a malicious counterfeit trademark (the act of imitating a trademark), there is a separate penalty provision of up to two years' imprisonment or a fine of up to 200,000 baht. However, first-time infringers often plead guilty and receive a fine, and criminal punishment does not always result in long-term imprisonment. On the other hand, in Japan, it is possible to file criminal charges for trademark infringement (up to 10 years' imprisonment or a fine of up to 10 million yen), but in practice the police only take action in cases of malicious commercial counterfeit goods. In Thailand, the difference from Japan is that the police can take action under the initiative of rights holders even for relatively small-scale infringements.

Civilly, a trademark owner (or registered licensee) can bring an action for an injunction or damages in the Intellectual Property and International Trade Court (IPIT Court). However, in Thailand, remedies through civil litigation are limitedand are not used frequently due to litigation costs and time. Strategically, the infringement is first stopped through criminal investigation, and then, if necessary, civil damages are sought. Additionally, in civil litigation, it is possible to petition the court for a temporary injunction, but very strict requirements must be met for a Thai court to issue a provisional injunction. Specifically, special circumstances are required, such as the infringing act causing irreparable damage and the defendant being at risk of being unable to compensate, and it is extremely exceptional that a provisional disposition is granted in practice. In this respect, it is similar to Japan's provisional disposition system, but while in Japan there are cases where a provisional disposition is issued relatively quickly, in Thailand it can be said that the hurdles for issuing one are high.

Remedies for infringement: If infringement is found, the criminal will be subject to the above-mentioned imprisonment and fines, and the infringing products will be confiscated and destroyed. In civil cases, if the amount of business loss due to infringement is determined as compensation for damages, the payment of compensation will be ordered, and a permanent injunction will be issued against future infringement. Please note that under Thai law, there is no provision for **punitive damages** in ordinary trademark infringement lawsuits (except in certain cases such as the Product Liability Act). Therefore, the maximum amount of compensation will be the actual amount of damages or the amount equivalent to a reasonable license fee. This is also the case in Japan, where punitive damages are not permitted under current law.

Customs Seizure (Border Measures): In Thailand, trademark owners or their agents can also stop infringing goods at the import/export stage by notifying the customs authorities. Trademark rights holders provide customs with information about their trademarks and typical infringing products, and when they discover imported cargo that is suspected of infringing, they can report it and customs can seize and detain the cargo ex officio. Once the item is seized, the right holder has 24 hours to confirm whether the item is genuine or not, and if it is a counterfeit item, the process is to formally request continuation of the seizure and disposal. Thailand does not have an intellectual property rights registration system with the customs like Japan, but the customs authorities independently detect counterfeit branded products, so it is important for those with rights to notify the customs of their company's point of contact (proxy contact information) and build a cooperative relationship. In addition, Japan also has a system for petitioning the customs for an import suspension, which is common in preventing the import of counterfeit branded products.

License/Rights Assignment: For licenses to use registered trademarks with the permission of the trademark owner, Thai law requires a written contract and registration with the DIP. A characteristic of Thailand is that if a license agreement is not registered in the Trademark Registry, the agreement not only cannot be asserted against a third party, but is also interpreted asinvalid between the parties. In other words, unless the licensee has registered the license, he or she does not officially have the right to use the product and cannot exercise the right to seek an injunction against the infringer. In Japan, registration of a trademark license is voluntary, and the contract itself is valid even if it is not registered, but it should be noted that in Thailand, registration is a requirement for validity. License agreements are also required to include quality control clauses. Just like in Japan, this must be a contract that allows the licensor to control quality in order to maintain trust in the trademark. Assignment of rights (transfer of trademark) also requirescreating a deed of assignment and registering it with the registrar. Registration procedures for these licenses and transfers are also generally carried out through local agents.

Specialized Intellectual Property Court: Thailand has the **Central IP&IT Court**, which was established in 1997, and is responsible for the first instance of intellectual property disputes such as trademark infringement. If you are dissatisfied with the judgment, you can appeal to the Supreme Court as a higher court. Since the case is handled by a judge who is familiar with intellectual property cases, you can expect expert judgment (Japan has an intellectual property high court, but Thailand is unique in that it has specialized courts starting at the district court level). The trial period for infringement lawsuits depends on the case, but it is approximately one to two years for both criminal and civil cases. The period for appeal after a judgment is relatively short, less than one month, and the procedure progresses quickly.

Relationship with international applications (including MadPro)

Thailand acceded to the **Madrid Protocol** on August 7, 2017, and became effective from November 7, 2017. As a result, companies from countries that were members of the Protocol prior to Thailand's accession, such as Japan, will be able to designate Thailand in their Madrid applications. If you designate Thailand with a MadPro Application, the Thai DIP will be the receiving office, and protection will be granted after substantive examination, publication in the official gazette, and opposition, just as with normal domestic applications (Thailand, as a member of the Protocol, is obligated to notify whether or not protection is granted within 18 months in principle). The examination standards and requirements are the same as for domestic applications even when filing through MadoPro, and for example, a Notification of Provisional Refusal may be issued through WIPO due to lack of distinctiveness or the existence of similar trademarks. In this case, the applicant (Japanese company, etc.) must appoint a representative in Thailand and respond to the reasons for refusal within 90 days after receiving the notification (time period calculation is based on WIPO rules). If the response is approved and the examination is cleared, protection in Thailand based on the international registration will be confirmed and recorded in the international register.

Paris priority: Thailand is also a member of the Paris Convention (effective August 2008), and it is possible to claim priority if an application is filed in Thailand within 6 months of first filing in another member country, including Japan. A priority certificate is basically not required. When filing in Thailand, declare the earlier filing country, date, and application number, and submit a Declaration of Priority prepared by a local representative. If you designate Thailand in your Madrid application, priority information will be automatically transmitted via WIPO, so no separate procedures are required.

Points to note when using international applications: When Japanese companies seek trademark protection in Thailand, there are two methods: via the Madrid Protocol and direct local application. MadPro is convenient because it allows you to centrally manage multiple countries, but it is necessary to take into account the fact that you will eventually need to involve a Thai representative when dealing with rejections during examination in Thailand, and that the trademark in the country of basic application (e.g. Japan) needs to be maintained for 5 years in order to maintain the international registration (if the basic trademark is invalidated, the rights in Thailand may also be affected). On the other hand, local application (Paris route) requires procedures in Thai, but has the advantage of obtaining independent rights without depending on the underlying trademark. In terms of costs, there are advantages and disadvantages depending on the number of specified products and classes. Multi-class applications are possible in Thailand, but the fee structure is based on the number of product items rather than on a per-class basis, so specifying multiple classes at once can be rather expensive (1,000 baht per product for up to 5 products, 9,000 baht flat rate for 6 or more products, etc.). In either case, it is difficult for a foreign company to proceed with the application on its own, so we recommend receiving support from a patent attorney or lawyer who is familiar with Thai intellectual property.

Trademark administrative procedures (related authorities/examination system)

The authority responsible for trademark administration in Thailand is theDepartment of Intellectual Property (DIP) of Thailand, which is a government agency under the Ministry of Commerce. DIP handles all matters including trademark application/registration, examination, opposition, and cancellation trials. DIP is staffed by trademark registrars, who conduct day-to-day formal and substantive examinations and opposition hearings. The Trademark Board has been established as a higher court in case of dissatisfaction with the examiner's decision. The Trademark Committee is chaired by the Director of the DIP and is comprised of 8 to 12 experts in law and commercial transactions, with at least one-third of the members being from the private sector. This committee is responsible for filing appeals against examiners' decisions of refusal, petitions for cancellation/invalidity, and determining whether license contracts can be registered. If you are further dissatisfied with the committee's decision, you can appeal to a specialized court, the Intellectual Property and International Trade Court (IPIT Court)**, and the decision can be appealed all the way to the Supreme Court.

A characteristic of the examination system of the Thai trademark system is that there is no examination request system. Unlike patents in Japan, examination of trademarks begins automatically after filing, and there is no application publication system, and the trademark is only published in the official gazette once it passes examination. Examinations are conducted from both absolute and relative perspectives, and examiners also conduct prior trademark searches at the same time. Therefore, each examiner has a wide range of discretion, and examination results may vary to some extent. As mentioned above, in response to a notice of reasons for refusal, the process is to make amendments and submit written opinions within 60 days, and if necessary, request a hearing from the Trademark Committee. There is also a three-stage structure for objections, first decided by the examiner and then heard by a committee or court. The number of examiners is limited and the burden on each examiner is heavy, so in practice, formal reasons for refusal are often notified even for trivial points. However, there are many cases in which it is possible to respond by making adjustments and amendments with the local agent, so it is important to respond politely to the notification.

DIP is also moving toward e-government, and officially introduced online **electronic filing (e-filing)** in July 2017. Applicants can apply online by filling out a standardized electronic form, improving processing efficiency. Although it is difficult to use e-files directly from Japan, local agents can use electronic filing to speed up procedures. Additionally, DIP's trademark database is open to the public free of charge and can be used for simple similarity searches before filing. However, from the viewpoint of data reliability and similar groups, it is safer to entrust the actual investigation and rights maintenance management to experts.

Use obligation and non-use cancellation system

In Thailand, after trademark registration, there is a obligation to use the trademark. However, unlike in the United States, there is no system to submit a declaration of use at the time of registration or renewal, and rights do not automatically expire due to non-use. Howevercontinued non-use may be subject to a cancellation request by a third party. Article 63 of the Trademark Law stipulates the following regarding cancellation of non-use:

An interested person or registrar may request the Trademark Board to cancel a trademark registration on the grounds that ``between the registration of the trademark and the request for cancellation, the owner of the registered trademark did not intend to use the trademark in good faith and did not use the trademark, or the trademark was not used in good faith in connection with the registered goods for the three consecutive years before the request for cancellation.''

Simply put, (1) If there was no intention to use the trademark at the time of registration and it was never actually used, (2) If the trademark has never been used without justifiable reason for three years or more after registration, interested parties (such as other companies in the same industry) can request cancellation of the trademark if these conditions are met. However, as a feature of Thai law,the burden of proving non-use rests on the claimant. In other words, the claimant must prove the fact that there was no use by the trademark right holder, which is a high hurdle because it is negative proof. For example, even if you don't actually see products with that trademark on the market, it is difficult to completely prove that the trademark is not in use. For this reason, the reality is that there are very few cases in which a cancellation request is successful. Exceptionally, for products such as pharmaceuticals and foods that require manufacturing and sales permission from government agencies, it is easy to assume that they have not been released (unused) due to the fact that such permission has not been obtained, and there have been cases in which non-use cancellation has been approved. However, for general products, if there are some signs of use, the claimant is likely to lose. In Japan, the non-use cancellation trial system requiresthe trademark right holder to provethe presence or absence of use, but in Thailand, the big difference is that therequester has to prove non-use. Therefore, if you want to cancel a competitor's dormant trademark in Thailand, you will need more careful evidence gathering and proof strategies than in Japan.

However, although the hurdles for non-use cancellation are high, there is still a risk if a trademark is left unused permanently. Especially for trademarks that are important for brand strategy, it is important to continue to use them appropriately even after registration to demonstrate your presence in the market. Under Thai law, a period of 3 years is a rough guideline, so it is recommended that you actually start using the product by the time the application is registered and that there is no blank period of more than 3 years after registration. Even if use is temporarily suspended, there is room for consideration if there are legitimate circumstances, such as product improvement or inventory adjustment (justification of non-use due to "special circumstances"). However, due to the burden of proof, even if there are special circumstances, the final decision will be made by the court, so a safe measure is to avoid leaving the product unused for long periods of time.

Scope of use: "Use" here refers to the act of actually selling and distributing products bearing the registered trademark or providing services in Thailand. Any use made by a licensee pursuant to a license agreement is also recognized as use by the trademark owner (note, however, that only if the license is legally registered). In addition, use within the range that is considered to be the same as a registered trademark (for example, changing the font or color) is counted as use, but use in a manner that is far removed from the registered trademark is not permitted. This point is similar to Japan.

Cancellation procedures: Requests for cancellation for non-use (cancellation of registration) should be made to the Trademark Committee. To make a request, submit the prescribed petition and attach evidence supporting the reason for cancellation. If you are dissatisfied with the Trademark Board's decision, you can appeal (file a lawsuit) to the Intellectual Property and International Trade Tribunal within 90 days. If you are still dissatisfied with the court's decision, you can appeal to the Supreme Court. The procedure scheme for cancellation is similar to that of trials and lawsuits in Japan, but as mentioned above, the system operation, such as the distribution of the burden of proof, is quite different. It is also possible for a trademark right owner to voluntarily apply for waiver of rights (cancellation of trademark registration), in which case the consent of the licensee is required if a license agreement exists.

Requirements specific to foreign applicants (such as the need for a local representative)

The following are points to note and requirements when foreign companies and individuals apply for trademarks and maintain rights in Thailand.

• Need for a local representative (patent attorney/attorney): When a foreign resident files a trademark application in Thailand, it is virtually essential to appoint a local representative. The application procedure is conducted in Thai, and all communications with DIP are communicated in Thai, so it is common to request a local patent attorney etc. A power of attorney will be issued to the agent, but the signed power of attorney must be certified by a notary public in each country and attached. In principle, special certification other than notarized certification (consular certification, etc.) is not required, and one notarized power of attorney can be used for multiple applications. In the case of Japanese companies, the general process is to send a PDF of a power of attorney with the seal of the company representative and signature authenticated by a notary public, which is then translated into Thai by a local agent and submitted.

• Applicant information/documents: The applicant's name, address, nationality, etc. should be written on the application form. Even in the case of a corporation, there is no special requirement to submit a certificate of company registration information, and the declaration is basically sufficient (however, in rare cases, additional documents may be required at the registration stage). Submit the trademark sample (shape, etc.) according to the specified size, and if applying as a color trademark, write the color bread number, etc. Trademarks containing foreign language characters must have their pronunciation and meaning written in the application. For example, when a trademark includes Japanese or English words, the pronunciation and translation should be clearly indicated. This is important for the examiner to understand the dictionary meaning of the word and determine whether it is descriptive.

• Local contact information: A delivery address within Thailand is required for foreign applications, which is usually met by the agent's address. Notification documents from DIP will be sent to the agent. Even if you apply via Madrid, you will ultimately need to appoint a local representative in response to a refusal, so it is essential to secure a local contact.

• Costs and Currency: Trademark fees in Thailand are denominated in baht and are structured according to the number of product items as mentioned above. There is basically no double pricing system for foreigners, and they are paid the same amount as Thais. Agent fees vary depending on the agent, but they are often cheaper than in Japan. The total cost from application to completion of registration is approximately 100,000 to 100,000 yen per class.

• Other unique systems: In Thailand, there is no system that requires you to obtain a **trademark usage certificate (business license based on trademark rights)**. However, as mentioned above, there are certain matters that foreign companies should keep in mind when exercising and utilizing their rights, such as the fact that license agreements need to be registered, and when offering trademark rights as collateral, registration with the Business Development Bureau is required based on the Commercial Secured Transactions Act. Additionally, Thai country domains ".th" and ".Thai" domain names are only allowed to be registered by Thai companies or Thai trademark holders. Therefore, Japanese companies considering developing a website for the Thai market would benefit from obtaining trademark registration to qualify for domain name registration.

I have explained the Thai trademark system above, touching on the differences with the Japanese system. Although Thailand has many similarities with Japan in its legal system, it has its own unique operational practices. When Japanese companies develop a trademark strategy in Thailand, it is important to collaborate with local experts and prepare based on the points mentioned above (flow of application to registration procedures, registration requirements, examination standards, duration of rights, risk of non-use revocation, license registration obligations, utilization of international applications, etc.). Please maintain and develop your brand in the Thai market through appropriate intellectual property protection.

References/Information Sources: Thai Trademark Law (Trademark Act B.E.2534 (1991) and its revised law), JETRO Thai Intellectual Property System Explanation, Thai Intellectual Property Office materials, various practical explanations, etc. Please also refer to the links for each quotation as appropriate.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

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