Registering Trademarks in Thailand

The trademark is an important legal concept in the world of business and commerce. Trademarks allow companies to distinguish their goods and services from competitors and thereby enhance the goodwill of the public towards their particular brand. Accordingly, trademark law seeks to protect both consumers, by allowing them to identify the origin of products sold in the marketplace, and companies, by allowing them to enforce their trademark ownership rights.

In Thailand, the basic trademark law is the Trademark Act of B.E. 2534 (1991), as amended in B.E. 2543 (2000), which provides for the registration of trademarks.  Registration of a trademark in Thailand would enable a trademark owner to apply the full force of the law to enforce his rights in this jurisdiction, rather than if he were relying only on the registration of the trademark in another jurisdiction.

In Thailand, trademarks are registered with the Department of Intellectual Property. Section 6 of the Act states that in order to be registrable, a trademark must (1) be distinctive, (2) not be prohibited by the Act, and (3) not be the same or similar to a trademark which has already been registered by another person. Section 7 of the Act provides several possible manners in which a trademark may be considered distinctive. One possible distinctive trademark feature would be a combination of “stylized letters” which do not form a word. In this case, it would be necessary for the letters to be stylized because a combination of block letters by itself would not be distinct enough. Furthermore, if the letters formed an invented pronounceable word, then that word by itself would be enough to be considered distinct and there would be no need for the letters to be stylized.

Another possible distinctive trademark feature could be “a word or words that has no direct reference to the character or quality of the goods…” Therefore, any word or words that directly references the character or quality of the goods could not be trademarked. For example, a slogan for a brand of breath mints that read “Minty Fresh” would very likely be considered as referencing the character and quality of the breath mints, and therefore, not distinct. However, Section 7 also provides that names and words not considered distinct under the above two criteria may still be registrable if “used as trademarks with goods which have been widely sold or advertised…” Therefore, if a breath mint manufacturer had used the slogan “Minty Fresh” extensively in Thailand before registering the trademark, this may be a sufficient basis to allow it to be registered.

The second requirement is that a trademark not be prohibited by the Act. Generally, the Act prohibits the registration of a trademark which contains any royal or government emblems or seals, national or royal flags, royal names, any representation or reference to the Monarchy, or symbols of any international organizations, as well as others symbols prohibited in the Act and by Ministerial Notifications. The third requirement is that the trademark not be the same or similar to a trademark that has already been registered by another person. The Registrar will only consider other trademarks registered in Thailand in making its determination but will consider trademarks not registered in Thailand if that trademark is a generally famous trademark (such as the McDonald’s logo). So far, this article has only considered the criteria in determining whether a trademark is registrable. However, there are other aspects that must be considered in registering a trademark that will be discussed in the following article.

 

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Category: Business in Thailand, Company Law, Company Registration