ip protection and trademark registration in thailand and abroad
TRANSCRIPT
LAWPLUS
IP Protection and Trademark Registration
in Thailand and Abroad
Paramee Kerativitayanan, Associate
www.lawplusltd.com
Korean-Thai Chamber of Commerce
Legal Seminar
17 November 2017
Holiday Inn Sukhumvit Hotel, Bangkok
LAWPLUS
The information provided in this document is general in nature and may not
apply to any specific situation. Specific advice should be sought before
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contained in this document. Copyright © 2017 LawPlus Ltd.
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Presentation Outline
• Intellectual Property Protection and Its Importance to Businesses
• Creation, Protection, Utilization and Enforcement of IP in Thailand for
SMEs and Startups
• Trademark Registration in Thailand
• Trademark Registration Abroad
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What Is Intellectual Property?
• Intellectual property (IP) refers to creations of the mind, such as
inventions; literary and artistic works; designs; and symbols, names and
images used in commerce. [WIPO]
• Types of IP:
– Trademarks
– Patents (Inventions and Product Designs)
– Copyrights
– Others e.g. trade secrets, geographical indications, etc.
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What Is Intellectual Property?
Invention Patent
e.g.
- Device (hardware)
- System
- Technology
- Method of
manufacturing
Design Patent
e.g.
- Model of the device
- Model of the pen
- Appearance / shape
Trademark
e.g.
- Samsung
- Samsung Galaxy Note 8
- Power-on and power-off
sounds
Copyright
e.g.
- Software (source code)
- Application icons
- Default ringtones
Other IP
- Trade secrets, etc.
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Why Intellectual Property Protection Is Important to Businesses?
• In today’s knowledge-driven world, proper use and protection of intellectual property (IP)
assets is the key to success for businesses, both large and small.
• Business owners rely on ideas, know-how, and innovations to create and improve
products and services that distinguish them from their competitors.
• IP rights (IPRs) not only help businesses to prevent imitators from copying their
innovations or brand names but also help them to gain revenue through licensing,
franchising, and other IP transactions.
• IPRs help in securing a share in niche markets and increase revenues.
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Why Intellectual Property Protection Is Important to Businesses?
• Trademarks are the most widely used form of registered IP throughout the world.
• From the study of the International Trademark Association (“INTA”), looking at data from
2012 to 2015, trademark-intensive industries within Thailand generated a 22% direct
contribution to GDP and 40% indirect contribution to GDP.
• From the study of OHIM among EU countries, the highest revenue-per-employee
increases are linked to trademark-only and combined trademark-and-design
owners: 30% and 39%, respectively (OHIM (EUIPO), 2015).
• Trademarks have values and create added values.
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The World's Most Valuable Brands (Forbes 2017)
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Intellectual Property and Development
Efficiency-Driven
Innovation-Driven
IP Creation IP Protection
IP Utilization
IP Enforcement
Intellectual Property
as a Tool for Development
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Creation and Protection of Intellectual Property in Thailand
• TRADEMARKS:
– Registration of trademark is not required for protection but recommended.
– An owner of unregistered trademark has limited scope of rights and protection.
• PATENTS AND PRODUCT DESIGNS:
– Registration of invention or product design is required for protection.
• COPYRIGHTS:
– No registration is required for protection. Your work is under copyright
protection the moment it is created.
– Deposit of copyright is beneficial and recommended.
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Utilization of Intellectual Property in Thailand
• Use IPR in your own business by your own company alone
• Gain profits by licensing or transferring your company’s intellectual property rights to other
companies
– Exclusive license
– Non-exclusive license
– Cross-license
– Partial license
– Licensing-in
– Know-how license
• Use another company’s intellectual property right and conducting commercialization
independently
• Gain a large market share by acquiring intellectual property rights of other companies
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Utilization of Intellectual Property: Debt Collateral
• Using IP as business collateral is allowed under the Business Collateral Act B.E. 2558
(A.D. 2015) (“BCA”), effective on and from 2nd July 2016.
• A collateral provider
– an individual
– a juristic person
• A collateral receiver
– a financial institution
– a person prescribed in a ministerial regulation
• e.g. trustees, securities companies, mutual funds, or factoring businesses
• No requirement to deliver a collateral property
• A collateral agreement must be made in writing as a contract and registered online with the
Business Collateral Registration Office (“BCRO”), Department of Business Development,
the Ministry of Commerce.
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Enforcement of Intellectual Property in Thailand
• Intellectual Property and International Trade Court (IPIT Court), established in
1996
• Specialized Appeals Court, established in 2016
• Criminal actions work better than civil actions
• Police and customs enforcements prior to criminal actions
• Procedures under the Computer Crimes Act against online infringement
• Warning notice / Cease and desist letter
• Negotiation
• Preventive Measures,
– e.g. building awareness, efficient contract, employee agreement, market watch, market
search, make use of technology to help to identify infringing products, cooperation with
other agencies, etc.
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TRADEMARK REGISTRATION
IN THAILAND
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Trademark Registration in Thailand: Basic Rules
• Adopts the “first to file” system.
• Allows multiple-class application.
• Non-traditional mark, i.e. sound mark is registrable.
• Filing > Examination > Publication > Registration.
• Term of Protection: ten years from filing date, renewable.
• It normally takes around 18 to 24 months from filing date to reach its
registration.
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Trademark Registration in Thailand: Registrability
• To be registrable, a trademark must
– be distinctive;
– not be prohibited under Trademark Act of Thailand (e.g.
national flags, royal names and mark confusingly similar to
well-known mark); and
– not be the same as or similar to a trademark registered by
another person.
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• Distinctiveness
– invented word, e.g.
– signature of applicant, e.g.
– stylized letters or numerals, e.g.
– word(s) which is non-descriptive of character or quality of the goods or
services, e.g.
– invented device, e.g.
– etc.
Trademark Registration in Thailand: Distinctiveness
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Trademark Registration: Prohibited Marks
• These are some examples of the marks that are prohibited by law.
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Trademark Registration: Process
Filing of trademark
application and required documents
Objection
(Response to
be filed within 60 days)
Acceptance for Publication Examination by
Trademark Registrar 10 to 12 months
Publication of application in Trademark Journal (Opposition period 60 days)
Issuance of certificate of registration
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TRADEMARK REGISTRATION
ABROAD
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Trademark Protection in Myanmar
• No specific law. Specific laws are being drafted.
• Basis of protection: “First-to-use” basis
• Registration: Simple registration by means of Declaration of Ownership and
Cautionary Notice
• No examination and opposition proceedings
• Search: Search on cautionary notices in newspapers kept by companies
• Suggestions / Strategies:
– Register before use.
– Seek immediate protection under declaration ownership and cautionary
notice register.
– Do not wait for specific IP laws.
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Trademark Protection in Myanmar: Registration Process
Registration granted
Publication of Cautionary Notice in a Local Newspapers
3 weeks
Re-publication of Cautionary Notice
3 years
1 week or less
Filing DOO and PoA with Registry Office
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Trademark Registration in Vietnam
• Adopts the “first to file” system
• Allows multiple-class application
• The process involves these stages:
− (1) formality examination and publication in the Gazette (3 months);
− (2) substantive examination (9 months) and
− (3) issuance of registration certificate of the registered mark (2 months).
• Substantive examination
− Absolute grounds - inherent registrability
− Relative grounds - conflict with prior trademark rights
• Non-traditional marks are not protectable.
• Term of registration: 10 years from the filing date (renewable)
LAWPLUS
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