key issues and considerations for ip in thailand

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KEY ISSUES AND CONSIDERATIONS FOR

IP IN THAILAND

Kowit Somwaiya Managing Partner

www.lawplusltd.com

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Thailand

•source: http://www.operationworld.org/thai

Land Area: 513,115 sq km

Population: 68.13 million (2015)

Capital: Bangkok

Urbanites: 34%

GDP: US$397.475 billion (2015)

Per capita income: US$5,771 (2015)

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Intellectual Property Registration • TRADEMARKS:

– Registration of trademark is not required for protection but recommended.

– First-to-file system.

– Unregistered trademark is not protected against infringement, but passing-off.

• PATENTS AND PRODUCT DESIGNS:

– Registration of invention and product design is required for protection.

– Novelty is required for registration.

• COPYRIGHTS:

– No registration is required for protection.

– Copyright work is protected upon creation.

– Deposit of copyright is beneficial and recommended.

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Trademark Registration - Thailand

• Established Registration System

– Registration process is complicated and costly

– It takes around 18-24 months for an application to reach registration

• Pending Changes

– Accession to the Madrid Protocol (expected by the end of 2017)

– More trademark examiners in 2016-2018

• Suggestions and Strategies

– File at least one year before use

– Register trademark license

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Trademark Enforcement - 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

• No administrative action available

• Suggestions and Strategies:

– Compile evidence of use

– Take a swift and decisive action against infringement

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2016 Amendment to Trademark Act B.E. 2534

• Sound marks and three dimensional marks are allowed registration.

• Multiple-class applications are allowed.

• Single-class applications remain possible.

• Associated mark is not required and partial assignment is allowed.

• Shorter period of responses to TMO’s orders (from 90 days to 60 days).

• Renewal grace period of six months from the expiry date is allowed, subject to a 20% surcharge on the official renewal fees.

• Increase of official fees (in most cases) to two times of the 1991 rates.

• Official fees for filing, registration and renewal are now fixed if goods/services are more than 5 items in a class.

• Unauthorized refilling of genuine package is penalized.

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Registration of Patents and Product Designs

Patent Type Basic Requirements Protection Period

Invention Patent Invention or process which has novelty, inventive step and industrial application

20 years (non-renewable)

Petty Patent Invention or process which has novelty and industrial application but does not have inventive step

6 years plus two allowable extensions of 2 years each (10 years in total)

Design Patent Ornamental aspects or aesthetics of products (shape, configuration, pattern, etc.)

10 years (non-renewable)

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Registration of Patents and Product Designs

Requirements Invention Patent Petty Patent Design Patent

Novelty

Capability of industrial

application

Inventive step/ Non-

obviousness

Application Types

- Local - PCT National

Phase Local Local

X X

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Copyright Protection: Eligibility

• Expression of idea NOT idea itself

• Originality (≠ Novelty)

• Works of authorship

• Applied arts

• Performer’s rights

• Exclusions

– news

– unexpressed ideas

– discoveries, scientific or mathematical theories

– etc.

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Copyright Protection Term

• Works of authorship: the lifetime of author plus 50 years from his death, or 50 years from the publication date if the author is a legal entity or anonymous person

• Works of applied art (such as drawings, paintings, sculpture, prints, architecture, photography, drafts, and models for utility or functional use): 25 years from the date of publication

• After expiration of copyright term, work falls into public domain.


TIPS for Your IP in Thailand 1

• Register your trademarks and patents early.

– A trademark application takes around 18-24 months to reach registration.

– An invention patent application takes around 5-8 years to reach registration.

– Thailand uses a ‘first-to-file’ system (the first person to register an IP right (trade mark, patent, etc.), rather than use it, owns it).

• Record your copyright.

– Though copyright protection is automatically conferred to the author, voluntarily recording/depositing your copyright is recommended.



• Apply for a distinctive trademark to increase chances of registration.

• Descriptive or suggestive mark is normally rejected.

• Clearly identify all products and services to be associated with your trademark to prevent the delay in registration process.

• Maintain secrecy of your patent through confidentiality agreements in case disclosure is necessary before you file a patent application for it.

• Compile evidence of use and advertising materials.

• IP watching, especially trademark watching.

• Take a swift and decisive action against infringement.



• Use local investigators and investigate deeply and upfront before taking legal action.

• Be proactive with market surveys.

• Be “on the ground” to enforce and litigate.

• Use border control measures.

• Record IP with Customs Department.

• Target major infringers / monitor repeat offenders.


Unit 1401, 14th Floor

990 Abdulrahim Place

Rama IV Road, Bangkok 10500

Tel. +66 (0)2 636 0662

Fax+66 (0)2 636 0663

Room 517, Yangon International Hotel

No. 330 Corner of Ahlone and Pyay Roads

Dagon Township, Yangon, Myanmar

Tel. +95 9 505 6667

Tel. +95 92 6111 7006

•www.lawplusltd.com

[email protected]

http://www.lawplusltd.com/

key issues and considerations for ip in thailand

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