Brief procedures for registration of a trademark in Thailand
By Adisak Punites, Vickery & Worachai Ltd.
1. Search of the same or similar trademark/service mark already registered with the Intellectual Property Department (“IPD”)
This procedure is recommended since the Register will reject the application for the trademark/service mark which is the same as, or similar to, the trademark/service mark already registered by other person. If it is the case, there may be no need to file the application for the same or similar trademark/service mark which is likely to be rejected. Thus, it will reduce time and expenses.
2. Preparing and filing the application
The trademark/service mark application must identify the specification of goods or services which the trademark/ service mark will be used in connection with. Note that IPD uses the specification of goods and services in line with the international classes. In case a trademark/service mark is used or to be used in connection with goods and/or services in more than one class, a separate application must be filed for each class of goods or services, i.e. no more than one class of goods or services is permitted to be identified in an application. Further, if the applicant has no place of contact in Thailand , the applicant must designate a trademark agent in Thailand . There is no prohibition for the applicant who has the place of contact in Thailand to designate a trademark agent in Thailand . In general practice a trademark agent in Thailand is normally designated no matter whether the applicant has the place of contact in Thailand or not. After a trademark/service mark application has been filed, the Registrar will normally take approximately four to six weeks to proceed with the consideration process.
3. Publication
If the trademark/service mark is acceptable for registration according to the Thailand Trademark Act, the Registrar will publish the trademark/service mark application in the Trademark journal. If within ninety (90) days from the date of publication there is no person filing an opposition against the trademark/service mark application so published, the Registrar will order the applicant/trademark agent to pay the registration fee. Usually this stage will take about four months. If within the said ninety (90) days period there is any opposition filed against the trademark/service mark application so published, the Registrar will notify the applicant/trademark agent to submit a counter-claim within ninety (90) days from the date of receiving such notice. After receiving the counter-claim, the Registrar will then consider both the opposition and the counter-claim and will make a verdict. This process will additionally take six (6) months.
4. Issuance of the Certificate of Trademark/Service mark Registration
After the registration fee has been paid as per the Registrar's order, the Certificate of Trademark/Service Mark Registration will be issued within approximately four to six weeks.
In case of no opposition concerned, the whole process of registration will take at least seven (7) months.
For the trademark/service registration we require:
- A notarized Power of Attorney;
- A clear and sharp specimen of the mark;
- Specification of goods/services in connection with which the trademark/service mark is to be used; and
- Evidence of prior use (if any), including Xerox copy of the trademark/service mark registration in other jurisdiction (s). This evidence must be submitted at the time of filing the application or within thirty (30) days thereafter.