Trademark Amendment Act moves Thailand towards international harmonisation

Thailand’s intellectual property (IP) law has taken a big step towards harmonising its trade mark protection procedures with international practices.

The Trademark Amendment Act (in Thai) provides for international trade mark registration under the Madrid System, the convention that allows trademark owners file and protect trade marks in all of the countries belonging to it. The Act came into force on July 28, with the separate Royal Decree confirming its accession to the Madrid System expected to be issued later in 2016.

“The Madrid Protocol has paved the way for IP in Thailand and with a few more regulations to work through, the full integration to the Protocol should be in place by June 2017,”says Franck Fougere, managing partner at Ananda IP. At the same time as it is preparing to accede to the Protocol, Thailand is also under pressure to improve its protection of IP rights. “The United States Trade Representative (USTR) 301 report gives Thailand one of the worst rankings for IP protection,” adds Fougere.

Franck Fougere

“The reduction in costs has been the biggest impact, especially with the flat fee for applications with more than six products,” says Fougere. “The protection of three-dimensional shape marks and sound marks is also a step for Thailand to extend the definition of trade marks and for it to move closer to countries that already grant them.” Sounds that do not make direct reference to the characteristics or qualities of the goods/services, do not represent the natural sounds of the goods/services or do not occur from the normal functioning of the goods will be considered distinctive. This is in line with other countries’ trade mark rules. An example of a sound mark would be the “ta-da” sound from Microsoft’s operating system.

The legislation also includes stiff penalties for anyone who intentionally misleads as to the origin of goods. Any person who uses packaging materials bearing the trade mark of another for the packaging of his/her own goods to mislead the public into believing the goods originated from the trade mark owner is now liable to four years of imprisonment or a fine of up to Bt400,000 ($11,500) or both.

Refilling

The practice of collecting bottles for products such as perfume and shampoo and refilling them with fake content is a popular one in Thailand, for example. Fougere, who has been involved in the process of lobbying for the regulation targeting refilling, says: “This will be good especially for cosmetics, perfume and alcohol companies because refilling is a big issue, especially for health reasons.” However, whether this is strong enough of a deterrent remains to be seen. “There is still corruption and a degree in leniency,” says Fougere. “It is rare to see imprisonment sentences and maximum fines applied in reality.”

The new law also eliminates the existing requirement to file an application in only one class of goods or services. While multiple class applications will make the application process more streamlined, it could hold up an application if something goes wrong with an application for one class. To move in line with other countries, the practice of registering associated marks is no longer required so that similar marks belonging to the same owner do not need to be associated.

Deadlines

Other features include the reduction from 90 days to 60 days for filing amended lists and disclaimers which is accompanied with an increase in deadline for submitting fees from 30 days to 60 days. A grace period for renewals has also been included so that registrants can renew registrations by paying a 20% surcharge of the official renewal fee, up to six months after the registration expiration date.

“Thailand hasn’t revised its trade mark laws since 2001 and with this new Act, trade marks will be cheaper to protect and also result in less backlog,” says Fougere. “In the Association of Southeast Asian Nations (ASEAN), Singapore is the best for trade mark protection but Malaysia will be facing some competition and Thailand is definitely better than Indonesia.” Businesses have welcomed Thailand’s progress in IP. It is expected to encourage local companies that have been considering registering their trademarks to do so now. This is only the beginning of an increasingly vibrant IP scene in Thailand.