Commentary : Thailand’s New Trademarks Act

by Satyapon Sachdecha and James Pate

Thailand’s Trademarks Act of B.E. 2534 (1991) has been amended. Subsequent to the Uruguay Rounds relating to multinational trade, Thailand, as a World Trade Organization member, was obligated to enact new laws to make the protection of intellectual property a more efficient process. Also, officials of the Department of Intellectual Property of the Ministry of Commerce were of the opinion that it was an appropriate time to amend the Trademarks Act; particularly with regard to the definition of a mark, publication fees, Trademark Board, cancellation of trademark registration and enforcement. For these reasons, the Act was amended. The new Act was approved by Parliament earlier this year, was published in the Royal Thai Gazette on April 1, 2000 and, became fully effective on June 30, 2000. The new Act is referred to as the Trademarks Act B.E. 2534 (1991) as amended by the Trademarks Act (No.2) of B.E. 2543 (2000).

The new Act contains several significant changes. The authors believe that these changes will make the application and registration process easier for many trademark applicants. Also, that the expanded powers of the Registrar and Trademark Board should benefit trademark proprietors. The authors comment on these significant changes as follows:

1. Definition of mark expanded

Under Section 4 of the former Act, a mark was defined as a “photograph, drawing, device, logo, name, word, letter, numeral, signature, or any combination thereof but not including industrial designs under the law of patents.”

Section 4 of the new Act expands the definition of a mark to also include “phrases, color combinations and shape or configuration of goods.” This expanded definition may imply that consumers are now more sophisticated in distinguish the goods or services of one proprietor from another than before.

As for “configuration of goods” the authors believe that the inclusion of this new term may make it easier to register 3-D marks. However, as of this writing, it seems that it is not yet clear as to whether multiple views of a 3-D mark may be required by the Trademark Office or if a single view would be suffice for application and registration purposes.

Also under the new Section 4, the prohibition against registering on “industrial designs under the law of patents” has been removed. This raises two interesting points : First, although the authors do not believe that the removal of the prohibition will cause a flood of new trademark applications for marks which may also be considered industrial designs, the change does seem to indicate that some well-known marks registered in other countries but denied registration in Thailand may now be registered under the amended Act (See, Trademark Board Decision Nos. 1247/2541 and 1149/2542).

Interestingly, there are marks which may be characterized as industrial designs which were registered prior to 1991 under the old Trademarks Act of B.E. 2474 (1931) or the Trademarks Act (No. 3) of B.E. 2504 (1961) that probably could not have been registered under the Trademark Act of B.E. 2534 (1991) due to the prohibitive definition of a mark. (Citations omitted). Now, it would seem that we have come full circle with the removal of  the prohibition! (See, Trademark Gazette, Vol. 1692, page 106, Application No. 401093). Even though this mark was published for opposition on June 23, 2000, seven days prior to the June 30 effective date of the amended Act, it may seem that the Trademark Registrar was already applying the new definition of a mark because the mark would clearly seem to be an industrial design rather than an otherwise distinctive mark!

Secondly, the removal of the prohibition against registering an industrial design as a mark may provide designers with an interesting alternative. A design may be registered as a patent as provided by the Patent Act (No. 3) of B.E. 2542 (1991). The term of protection is limited to only ten years from the date the application was filed in Thailand (Section 62 of the Act). Then, the patentee’s exclusive rights expire. Suppose a designer chose to protect his design as a mark instead and, registration was granted under the amended Trademark Act. provided that he complied with all regulations and renewed his registration every ten years as provided by Section 53 of the Trademarks Act, the designer / trademark proprietor would have the exclusive right to use the design as a mark in connection with goods and/or services registered for successive 10 year periods, without limitation.

2. Registering a juristic name as a mark in block letter now permitted

Section 7 (2) of the former Act provided that the name of a juristic person could only be registered as a mark if it was “represented in a special manner” and, not a geographical name. Thus, the name of a juristic person in mere block letters could not be registered as a mark.

This arbitrary rule was perceived by many as unfair because an otherwise distinctive words in block letters that were all or part of a juristic name could not be registered.

Trademark attorneys created a ruse to circumvent this rule. The strategy was to file executive or the application in the name of a trusted executive or director of the company. Thus, the Trademark Registrar would not be alerted that the proposed mark was a juristic name. Then, the individual named in the application would later assign the registration to the company. However, this method was not foolproof. If the juristic name was familiar to the individual examiner at the Trademark Office, the application could be rejected, pursuant to Section 7 (2).

The amended Section provides a compromise. Now, only the full name of a juristic person, represented in block letters cannot be registered as a mark. The key word here is full.

Thus, one may now register a juristic name as a mark in block letters, provided it is not the full name, nor descriptive. For many companies, this means simply omitting “Inc.”, “Co.”,  Ltd.”, “Corporation” or other business entity designation from the representation of their mark. (Naturally, descriptive words in the name must still be disclaimed.) The authors believe this will be of great benefit to many companies, especially for so many of the new dot com companies seeking trademark protection for domain names.

3. Publication fees

Publication fees have been abolished. Unnecessary paperwork has been reduced. This should expedite the registration process.

4. Priority claims available to all applicants from WTO Countries

Thailand is not a signatory to any international convention on trademarks. Thus, priority cannot be claimed pursuant to the Paris Convention or any other treaty. Under Section 28 of the former Act, priority claims were allowed for nationals from several countries that had entered into reciprocal agreements with Thailand, namely; the United States, the United Kingdom, Australia, Austria, France, Germany, Ireland, Japan, South Korea, Spain and, Switzerland. Applicants from countries not having such a reciprocal agreement could also claim priority, provided they could prove that a Thai applicant would also be granted priority in their country. This could be a cumbersome process; obtaining a letter issued by the Trademark Office in the applicant’s country stating a Thai could claim priority there.Under the amended Act, applicants from all WTO member countries may now claim priority, pursuant to TRIPs. Applicants from other countries not WTO members may also claim priority, pursuant to either reciprocal agreements or, by letter from their country’s Trademark Office as explained above. The end result is that most applicants will now be able to claim priority.

Note that when priority is claimed, the filing date in Thailand is still considered as the registration date and the 10-year term protection begins on that date.

5. Expanded powers for the Trademark Board to decide cancellation petitions based on better title to a Mark.

Under Section 67 of the former Act, if someone registered an identical or confusingly similar mark of one who had better title; the party claiming better title would have to petition the Central Court of Intellectual Property and International Trade within 5 years of the date such mark was granted registration to seek cancellation. This could cost thousands of dollars and take months, or even years to resolve.

Under the new Act, Section 67 remains in force and one still has the option of filing a cancellation petition in court. Additionally, amendments to Section 61 of the new Act provide that an interested party or, the Registrar, may petition the Trademark Board to cancel a nondistictive mark under Section 7, a prohibited mark under Section 8 or, a mark identical or confusingly similar to a mark registered in Thailand. And, there is no 5-year statute of limitations as imposed by Section 67 in regard to action in court.

Many trademark proprietors were frustrated to find out that their marks have been copied or imitated here and that such marks had been granted registration long ago, beyond the 5-yearlimit for taking action in court under Section 67. The authors believe that this amendment will benefit those whose marks are famous but have not been registered in Thailand. Section 8 (10) prohibits the registration of a generally famous mark, whether it is registered or not. Because the amended Section 61 provides that the Board may cancel a mark prohibited by any subsection of Section 8, the amended Section 61 should be of great interest to owners of famous marks who find themselves in this situation.

6. Trademark Board Members

The Trademark Board must now also include members from the private sector who have specialized knowledge in the field of intellectual property. However, any Trademark Board member who has any interest or involvement in a case to be decided will not be allowed to participate in deciding such case.

7. New powers of the Trademark Registrar, to combat Infringement

Under the current law, officers of the Royal Thai Police are empowered to investigate suspected acts of infringement, conduct searches of vehicles and structures, seize infringing goods and evidence and, make arrests. No search warrant is needed if the goods are in plain view. Under the new Act, similar powers are also granted to the Trademark Registrar and his authorized officials, provided that the infringement is open and notorious and that any delay would prevent the seizure of goods and arrest. The Registrar is required to make a report to the Director General of the Department of Intellectual Property, Ministry of Commerce, within 3 days of such a search and seizure and/or arrest. The authors anticipate that rules and guidelines covering this expanded power should follow soon and shall be issued by the Minister of Commerce in the form of a Ministerial Regulation.

In conclusion, the authors believe that the amended Trademark Act is a very positive step forward for Thailand, bringing the country classes to realizing its international obligations and setting new standards. They are optimistic that both Thai and foreign businesses will greatly benefit from the recent amendments to the Trademarks Act.

*  LL.B. (Thammasat); Barrister-at-Law; LL.M. (U. of Miami); M.C.L. (George Washington U.)

*   B.A. (University of North Texas); M.A. (University of New Orleans); J.D. (Nova Southeastern University)