The revised Thai Trademark Act was adopted by the National Legislative Assembly on 18 February 2016 and published in the Royal Gazette on 29 April 2016 so that this new Trademark Act will enter into force in Thailand on 28 July 2016. What are the main changes?
Procedural changes
1- Multi-class applications allowed: one application can cover several classes of products and/or services. It will be possible to file a single-class or a multi-class application.
2- Madrid Protocol accession: Thailand will become part of the International Trademark Registration system once the implementing regulations are enacted (expected by end of 2016). Thailand will either act as the Office of Origin (i.e. the country in which is filed the basic national application for a mark which will serve as the basis of the international application) or be one of the designated countries in the international application.
3- Deletion of registration of associated marks: similar marks belonging to the same Applicant and applied for registration with similar products/services in the same and related classes no longer need to be registered as associated marks. This means that assignment of certain identical/similar marks belonging to the same Applicant will be allowable. However, recordal of such assignment will be accepted only on the condition that the Assignor provides a Letter of Consent to the Assignee to be the new owner of such similar/identical mark.
Broader scope of protection
1- Additional type of registrable marks: sound marks (e.g. musical jingle such as Tarzan yell) can be registered in Thailand provided that they meet the legal requirements (i.e. a mark must be possible- not forbidden under Thai law, valid – neither generic nor descriptive- and available- not be confusingly similar to and/or identical with prior rights).
2- Refilling deemed as trademark infringement: refilling genuine packaging and containers bearing registered marks with unauthorized products (often for alcohol, shampoos, perfumes etc.) in order to mislead consumers into believing that such goods are those of the registered trademark owners is finally considered as an offense under the Thai Trademark Act. The penalties are increased to an imprisonment of up to 4 years and/or a fine of up to THB 400,000 (approximately EUR 10,000). Previously, the penalties had little deterrent effect since violators faced up to 1 year imprisonment maximum and/or a fine of up to THB 2,000 maximum (approximately EUR 50) as provided under Section 272(1) of the Thai Penal Code.
Revised deadlines & official fees
1- New deadlines to respond to Office Actions: 60 days (instead of 90 days) for filing amendments, disclaimers, oppositions and appeals whereas trademark holders are given more time to pay registration fees (60 days instead of 30 days).
2- Grace period for renewal: late renewal is allowed within 6 months from the expiry date (subject to a 20% surcharge of official fees).
3- If the below new fee structure is implemented, it will be even more crucial to develop a strong filing strategy so as to optimize costs and brand protection.
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