Registration and protection of Intellectual Property Rights in Thailand

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Intellectual Property for SMEs and Startups

Kowit SomwaiyaManaging Partner

14th March 2017Rembrandt Hotel, Bangkok

www.lawplusltd.com

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Intellectual Property: A Tool for Development

• 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.

• 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.

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Intellectual Property and Thailand 4.0

Efficiency-Driven

Economy

Innovation-Driven

Economy

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TRADEMARK

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Trademark Registration: 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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• Inherent 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: Distinctiveness 1

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Trademark Registration: Distinctiveness 2• Acquired distinctiveness

– A non-distinctive trademark is registrable if it has acquired distinctiveness by use, e.g.

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Trademark Registration: Not Prohibited by Law

• 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 documentsObjection

(Response to be filed within

60 days)

Acceptance for Publication Examination by

Trademark Registrar 10 to 12 months

Publication of application in Trademark Gazette (Opposition period 60 days)

Transmission of certificate of registration

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Trademark Registration: Term of Protection• Term of Protection

– Registration is effective for ten years from filing date (which is considered to be registration date).

• Renewal– A trademark registration is allowed renewal within three

months prior to its expiry date and during a grace period of six months from its expiry date. A surcharge of 20 percent of the official renewal fees will be payable for renewal during the grace period.


Trademark Registration Remarks• Established Registration System

– 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


Utilization of Trademark: Do’s and Don’ts • Do’s

– DO use your trademark directly on the subject goods, or on the container or packaging in which the goods are sold.

– DO (at least) use your trademark with goods as registered

– DO use all capitals, italics, different fonts or colors, or at least initial caps to distinguish a trademark from other text in advertising material.

– DO compile and keep full evidence of use and advertising materials

– DO trademark watching


Utilization of Trademark: Do’s and Don’ts • Don’ts

– DO NOT use a trademark as a noun. Always use a trademark as an adjective followed by a noun. For example, KLEENEX tissue.

– DO NOT use a trademark in a possessive form, unless the trademark itself is possessive. For example, JOHNSON'S baby oil.

– DO NOT pluralize a trademark. Instead, the common noun should be pluralized. For example, two SCHWINN bicycles rather than two SCHWINNS.

– DO NOT use trademarks as verbs. Xerox, for example, runs ads pointing out that even Xerox can't xerox, it can only photocopy.


Utilization of Trademark: Trademark Licensing Agreement• The owner of the trademark allows the licensee to use that

mark in exchange for certain fees and/or royalties. • No ownership rights are transferred in this exchange.• Trademark license agreements shall be in writing and

registered with the Trademark Registrar.• Agreement must show at least:-

– conditions or terms between the trademark owner and licensee to insure effective control by the registered owner of the trademark over the quality of the goods of the licensee;

– the goods for which the trademark is to be used.

• Exclusive/ Non-Exclusive


Utilization of Trademark: Trademark Licensing and Franchising

Source: www.thaifranchisecenter.com

Source: www.japantimes.co.jpSource: www.b-quik.com

Source: www.arcadia-engineering.com

Source: www.panphol.com


Utilization of Trademark: 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.


Trademark Enforcement• 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


Trademark Enforcement: How to stop infringement?• Warning notice• Cease and desist letter• Negotiation• Cancellation action Lawsuit against infringers (file for injunction order

or/and compensation)− Criminal Prosecution− Civil Enforcement

• Border (Customs) Measures• Preventive Measures

− E.g. build awareness, cooperate with national anti-counterfeiting agencies, make use of technology to help to identify fake products


PATENT


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)


Registration of Patents and Product Designs

Requirements

Invention Patent Petty Patent Design

Patent

Novelty

Capability of

industrial applicationInventive step/ Non-obviousnes

s

Application Types

- Local- PCT

National Phase

Local Local

X X


COPYRIGHT


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.


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.


Q&A



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Tel. +95 92 6111 7006

Kowit SomwaiyaManaging Partner

[email protected]

http://www.lawplusltd.com/


The information provided in this Document is general in nature and may not apply to any specific situation. Specific advice should be sought before taking any action based on the information provided. Under no circumstances shall LawPlus Ltd. and LawPlus Myanmar Ltd. be liable for any direct or indirect, incidental or consequential loss or damage that results from the use of or the reliance upon the information contained in this Document. Copyright © 2017 LawPlus Ltd. and LawPlus Myanmar Ltd. www.lawplusltd.com Contact: Kowit Somwaiya, Email: [email protected]

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