A Comprehensive Trademark Registration Guide for Indonesian Companies in Thailand

Thailand is a crucial partner for Indonesian businesses, with bilateral trade between the two nations exceeding $18 billion in 2020. As the second-largest economy in Southeast Asia, Thailand offers Indonesian companies access to a sizable consumer market of over 69 million people. Its strategic location within the ASEAN region provides a gateway for Indonesian exports, making Thailand a pivotal trade partner.

 

Moreover, Thailand’s investor-friendly policies have attracted over 600 Indonesian companies, highlighting its appeal as a destination for Indonesian investments. This economic synergy, along with trade agreements and a well-established infrastructure, underscores Thailand’s significance for Indonesian businesses aiming to expand their reach in Southeast Asia and beyond.

 

Why Register Your Trademark in Thailand?

Registering a Trademark is one of the first things to be done to establish effective protection in Thailand or internationally. An unregistered sign, logo, or name will not receive the same rights and status as a registered mark. Since Thailand adopted a first-to-file Trademark system, a Trademark may be at risk of being taken by other competitors if not registered in time.

 

Trademark According to Trademark Act B.E. 2534 in Thailand

A Trademark is a mark that identifies the origin of the goods or services and can be distinguished from other Trademark owners. The mark may be a name, drawing, logo, word, letter, combination of colors, or a combination of several of these elements.

 

• A Trademark is a mark used for a product and it is an indication that the product with such a Trademark is different from products of other Trademarks.
• A Service Trademark is a mark used for a service and is an indication the service with such a service mark is different from services of other service marks.
• A Certificate Mark is a mark used by the owner to certify the origin, composition, method of production or characteristics of the goods or services of another person.
• A Collective Mark is a Trademark or service mark used by companies or enterprises of the same group or by members of an association, cooperative, union, state, or private organization.

 

Trademarks consisting of certain characteristics are forbidden under the Trademark Act. These characteristics include:

1. Any mark contrary to public order, moral, or public policy;
2. Marks that are identical to marks prescribed by Ministerial notifications;
3. National flags or emblems of Thailand, royal standard flags, national flags and emblems of foreign states or international organizations;
4. Royal names or monograms; or
5. Marks that are similar to medals, diplomas, or certificates issued by the Thai government or Thai government agency.

 

How do you register a Trademark in Thailand?

Trademarks are registered with the Department of Intellectual Property (DIP). Applicants must have a fixed address in Thailand. Non-residents can only register by appointing a legal representative with a fixed address in Thailand.

 

Filing an Application

An application must be submitted to DIP. The registrar will notify the applicant or its representative of the result of the Trademark Examination within 12 to 18 months. If the application is deemed by the registrar to be registerable, the Trademark will be published for a 60-day period to make sure there is no third-party opposition. If the registrar deems the Trademark unregistrable, a rejection notification will be provided along with a reason for the basis of that rejection.

 

Trademark Application Timeline

The entire process takes about 1 year from the date of filing to obtaining the certificate, presuming there is no office action or request for amendment of the application. However, the Trademark protection period begins on the days of submission of the application for 10 years and may be renewed.

 

Priority Claim

A priority claim is when an application is filed for the first time in one country, and the applicant would like to retain a right of priority to the date of first filing applications for other countries. To claim priority, an application must be filed in Thailand within 6 months from the first foreign filing date (priority date).

 

Required Documents for Priority Claim

1. The original certified copy of the foreign application (issued by the foreign Trademark Office);
2. The statement asserts that the former application has not been abandoned or withdrawn (original required). 

 

A priority claim application must be submitted in Thai language at the time of the filing. Late filing of these documents is possible upon request, and 60 days from the date of filing is allowed for late submission of documents.

 

Renewals

A registered Trademark may be renewed. A request for renewal can be filed 3 months before the expiration date of that Trademark. Late renewal is possible within the 6 months from the expiration date. The late renewal period of 6 months is also known as the grace period, and a penalty of 20% of the official fees must be paid.

 

Fast-Track Applications

Thailand Department of Intellectual Property introduced a new fast-track system for Trademark renewals and registration while the official fees remain the same.

• Fast-Track Renewal can be shortened from 60 days to 60 minutes, applicable for renewal requests for Trademarks of no more than 30 items of goods and services, and under the condition that there are no changes to those items.
• For Fast-Track Registration, the Trademark Examination period can be shortened from around 12 months to around 6 months. Two conditions must be fulfilled to accelerate Trademark examination under this system:

1. 1. The application is filed for no more than 10 items of goods and services and the items must be obtained from DIP’s list. 
   2. The application must not be amended after filing.

 

Trademark Assignment

Assigning or inheriting a Trademark must be registered with the registrar of the DIP. It may be an assignment of a Trademark Application or a Registered Trademark, or an assignment of specific classes or items.

 

Required Documents for Trademark Assignment

1. Copy of the assignor and assignee’s national ID card or other ID card issued by a governmental agency.
2. Copy of the assignor and assignee’s passport in case of a foreigner, or a power of attorney made outside of Thailand appointing a legal representative.
3. Copy of the assignor and assignee’s certificate of juristic Person issued not more than 6 months before the application submission date in case of a juristic person. If the applicant is a juristic person established under foreign law, a power of attorney made outside of Thailand appointing a legal representative must be provided.
4. Assignment or inheriting application
5. Original Assignment contract signed by the assigner and assignee. In case the assignor and assignee jointly submit the assignment application both assignor and assignee shall affix their signatures in the presence of the registrar and attach their ID cards with the application
6. Original Registration certificate.

 

Publication

When a Trademark Application is deemed registerable, the registrar will order the application to be published for 60 days in which any person who believes they have a better title to that Trademark or believes that the Trademark is not registerable under the Trademark Act can file an opposition.

 

If no opposition is submitted during the publication, the registrar will request the applicant to pay the registration official fee, which must be paid within 60 days from the date of receipt of the request. The Trademark registration certificate will be issued after the official fee is paid. If an opposition is filed during the publication period, the applicant must file a counterstatement within 60 days from the date of receipt of the copy of the opposition. Failure to respond to the opposition will result in cancellation of the application. However, if either party is dissatisfied with the registrar’s decision regarding the objection, they may appeal to the Trademark Board. The Trademark Board’s decision may be appealed to the Central Intellectual Property and International Trade Court.

 

Cancellation

A registered Trademark may be cancelled if the requirements under the law are met. Cancellation of a registered Trademark may be under the authority of the registrar, the Trademark Board, or the Central Intellectual Property and International Trade Court depending on the circumstances of the case. This handbook will discuss cancellation by the Trademark Board and by the Court.

 

To commence a cancellation action before the Trademark Board, any interested person or the Registrar may petition the Trademark Board to order the cancellation of any Trademark if it appears that at the time of registration the Trademark:

• was not distinctive, or
• contained or consisted of a prohibited characteristic, or
• was identical to a Trademark registered by another person for goods of the same class or of a different class with the same character, or
• was so similar to a Trademark registered by another person that the public might be confused or misled as to the ownership or origin of the goods for use with goods in the same class or in different classes found to be of the same character, or
• was not used for more than 3 years.

 

In addition, any person who believes that any Trademark is contrary to public order, good morality, or public policy may petition the Trademark Board to cancel the Trademark Registration.

 

The petitioner may appeal the decision of the Trademark Board to the Central Intellectual Property and International Trade Court within ninety days of the Trademark Board’s decision

 

“Hijacked Trademark”

To commence a cancellation action before the Court, any interested person or the Registrar may petition the Court to cancel a Registered Trademark:

 

• Within five years from the date of the Registrar’s order to register a Trademark by showing that the petitioner has a better title to that Trademark than the registered owner, or
• By showing that, at the time of the cancellation petition, the Trademark had become common to the trade for certain kinds or classes of goods, to the extent that to the trade or in the public eye, the Trademark has lost its meaning as a Trademark.

 

What is a Trademark Office Action?

A Trademark Office Action is a letter issued by the DIP examiner reviewing your Trademark application. The Trademark Office Action deadline is 60 days from the date the DIP sent the Office Action to the International Bureau (WIPO) and is non-extendable.

 

In general, there are two types of raised in Trademark Office Actions:

1. Registration refusal;
2. Requests for clarification, modification and/or disclaimer

 

Common grounds for rejecting a trademark application may include:

• likelihood of confusion over a previously registered Trademark;
• mere descriptiveness;
• a disclaimer of a generic term;
• amendments to the identification of goods and services;
• revisions to the description of the mark;
• additional DIP filing fees due to the identification of goods/services covering more classes than what was originally paid.

 

Notice of Appeal

If the DIP Trademark examining registrar does not issue a favorable decision in response to the request for reconsideration within 60 days of the date of the Final Office Action, the applicant must file a Notice of Appeal with the DIP within 60 days from the Final Office Action

 

Responding to Office Actions

The most common rejections presented in a Trademark Office action are those that refer to the proposed mark being “confusingly similar” to another existing or applied Trademark. It is important to keep in mind that confusing similarity is not established by exact copies but with a far broader scope, including:

 

• sound-a-likes that may look very different on paper than the written mark being applied for but merely sound similar when spoken aloud;
• pluralization’s or similar modifications to root words, which are often considered confusingly similar to such root words and vice-versa;

 

Another important rejection found in DIP office actions is the broad or vague description of goods and services In Thailand, a Trademark Application must indicate the class and specify the products within that class to be used for the Trademark applied. Thailand followed the classification for Trademark Registration provided in the Nice Agreement despite not being a party to it. The Tenth Edition of the Nice Agreement divided classifications of goods into 34 classes (Class 1 to 34) and divided classifications of services into 11 classes (Class 35 to 45). The Nice Agreement classifications and its list of goods and services are generally accepted by Thailand’s Trademark registrars, but there are instances where the registrar requires a clearer and more specific description for certain goods and services as per Thai regulations regarding the goods and services registered for the Trademark.

 

We list below some examples of descriptions of goods and services not in conformity with Thai bow and our recommendations on how to overcome them:

 

In Class 3, the terms “cosmetics” “make-up,” and “perfumery” are broad or vague descriptions and more specificity is needed. In the past, the term “cosmetics for use with eyes, lips, cheeks, and hair” was considered appropriate, but it is no longer accepted by the Thai registrar. However, terms such as “cosmetic kits for makeup” “cosmetic kits for skincare” and “cosmetic kits for facial care” are acceptable. Instead of using “perfumery,” applicants may use “perfumes” “eau de cologne” or “eau de parfum”.

 

The takeaway here is that office actions against your application for Trademark registration while potentially difficult to overcome, are not necessarily the end of the road. If you are facing a similar refusal, you have options, and we at AFFA IPR would be happy to discuss your mark, your rejection, and the options for overcoming it.

 

What are the required documents?

• An electronic sample of the mark in black and white, or in color (max five cm by five cm);
• Full name, address, and country of the applicant;
• Description of the services and goods to be designated;
• Notarized power of attorney. If the application is made through an agent;
• Country, date, and number of the priority Trademark application, if priority right is claimed;
• Certified copy of the priority application and translation into Thai, if priority right is claimed; and 
• Date of first use of the Trademark (if any, at time of application).

 

For appeal, the required information/ documents are as follows:

1. Documents related to the right to the Trademark

• Copy of registration certificate of the Trademark in Thailand 
• Copy of registration certificate of the Trademark in other countries
• History of the usage of Trademarks

 

2. Documents related to the company of Trademark owner

• Financial statements. Auditor’s report
• History, biography, and reputation of the company
• Obtained awards or certification marks
• Evidence of business connection between the applicant and the opponent (if any)

 

3. Documents related to the right to the Trademark

• Copy of documentation of the sale of goods/services such as purchase orders, receipts, invoices, and billing for goods that sell to clients or distributing agents.
• Copy of documentation of purchase of goods or goods production orders such as purchase orders, receipts of goods selling, and receipts of raw material expense.
• Copy of documents related to the importation of goods such as Bill of Lading Packing list, Certificates of Origin, etc.
• Pictures of goods/service samples, goods/service directory, or catalogue.
• List of distributing agents or shop branches or selling channels.
• Receipts of advertising expenses and advertising campaign summarize report from the advertising agency.

 

Thailand Trademark Examination Practice

The current guideline for the Thai Trademark registrar, compiled from precedent Trademark Board decisions and Court cases, unifies those decisions and precedents to provide a clearer direction of Trademark examination, specifically on the requirements for distinctiveness, which has been very useful for applicants and Trademark representatives in formulating an application strategy and analyzing the possibility of registrations. This handbook will highlight some guidelines to offer Trademark owners and international Trademark attorneys a better understanding of the current Thailand Trademark registrars’ practices.

 

1. An invented word – means, a new word with no meaning or available translation. This includes a combination of translatable vocabularies with other invented words. The guideline provides that the latter combinations if the whole word is not translatable, shall be considered an invented word. For example, “HAIRBEAURON” may be considered an invented word due to the word “hair” and “beau” are translatable, but not the word “ron”. Apart from the combination itself, the pronunciation of the invented word shall be taken into consideration as well. However, a combination of more than two words with meaning must be considered as a whole whether their combined meanings would refer directly to the quality or the characteristics of the goods for that Trademark. This would render the mark not distinctive and, therefore, not registerable. For example, the mark “WatchKit” filed for smart watches is not distinct due to the mark as a whole implies the pronunciation of “watch” and “kit” separately.

 

2. Invented marks with alphabets and numbers – Usually an alphabet or number mark must be invented or stylized. The DIP recently adopted a court precedent where a combination of more than three non-stylized alphabets or numbers, not in their alphabetical or numeric orders, may be considered distinctive. Examples are TCL or HTC marks. However, other alphabets or numbers which could symbolize the quality or characteristics of the products for the Trademark may not be registered. For example, a Trademark of dietary supplements consisting of vitamins such as A, B1, or B12 is not considered distinctive.

 

3. Marks containing foreign characters such as Chinese or Japanese – If a mark of a combination of those characters cannot be translated as a whole, even though each may reference to the quality or characteristic of the goods if separated, that mark may still be considered invented if a trusted language Institute provides that the combination as a whole has no meaning in that language or is not translatable

 

4. Acquired distinctiveness – Certain Trademarks, although lacking in distinctiveness, may still be registered if the legal requirements are met. Namely, if the mark is widely sold or advertised for a suitable period that the general public or the public within that industry in Thailand knows the goods or services of the Trademark are different from others. A well-known mark in other countries but not in Thailand does not apply to this case.

 

Frequently Asked Questions

1. Why was my application refused based on broad or vague identification even though I chose my items of goods and services from the Madrid System?

Since the Trademark registration is filed to Thailand, the scope of goods and services should not be too broad or vague. The items should be clear, using words or texts that are necessary, concise, and precise. For example, “cosmetics” is a broad or vague identification. It should be amended to cosmetics for make-up”, or identify the items more specific, such as facial creams, lipsticks, blush on, etc.

 

2. Can I register wordmark in a foreign language such as Chinese?

Thai Trademark registrar can register a wordmark in other languages, but the application must provide a pronunciation and a Thai translation. For the Chinese language, the pronunciation of both Mandarin and Teochew dialects must be provided along with its translation.

 

3. My original certificate is lost. Can I still file for a Trademark Assignment?

The original certificate of registration must be provided for assignment. If the original certificate is lost, a duplicate may be requested by AFFA IPR only if we are the representative for the Trademark. It takes around 3-5 working days. We then can use the duplicate certificate to apply for a Trademark Assignment.

In case AFFA IPR is not the representative for the Trademark, a change of representative must be filed and a power of attorney from the Trademark owner must be provided before applying for a duplicate certificate to continue with Trademark assignment.

 

Should you require further information and assistance regarding Trademark in Thailand or abroad, please contact us at [email protected].

Source:

• Trademark Act B.E. 2534