Trademark

Trademarks are subject to domestic law, which means that trademark owners must register their trademarks in each country where they seek protection and in doing so, comply with national laws trademark registration requirements.

Thailand follows the “first-to-file” system, which means that use of the trademark does not infer ownership of the trademark, and that filing a trademark application is an essential step to secure your exclusive rights to use the trademark.

Here is how we can help you navigate this trademark registration process:

Trademark Registration Process in Thailand

Before registration

Trademark availability search

Distinguishing your brand from those of your competitors will give you an undeniable marketing edge. This will also save you time and costs by foreseeing possible refusals or oppositions due to its resemblance to prior marks.

To ensure your mark is not identical to someone else’s pending or registered mark used to provide the same kind of goods or services, we can conduct a trademark availability search in Thailand, before filing a new application.

We provide our search results within 2 to 3 working days.

Opinion on the registrability

Prior to filing an application, we will inform you of any risk to face an objection based on the fact that your mark would be descriptive of the characteristics or the nature of the goods or services it is used with.

For instance, the registration of a word mark such as “HEALTHY & FIT” to sell food supplements will almost certainly be objected, or “SPARKLING & FRESH” for a beverage mark.

If only part of your mark is likely to be problematic, we will advise you to disclaim this element in the application, which will also save time and costs further down the road.

Selecting & translating goods and services

Although the Thai Department of Intellectual Property uses the Nice classification as guidelines, it requires applicants to be very specific with the goods or services they list.

For instance, the item “pharmaceutical preparations” (in Class 5) will not be accepted. The specifications should state the therapeutic indications of such preparations (e.g. for slimming purposes, for skin allergies).

Therefore, the list of goods or services selected for your foreign application will most likely need to be modified for your Thai application, to avoid having to file an amendment at a later stage

Filing & monitoring your application

Before filing, we will give our opinion on various technicalities: whether it should be filed as a single-class or multi-class application, in black and white or in color, with a disclaimer, or with a translation if the mark is a word mark in a foreign language.

After filing, we will monitor the application in the DIP database free of charge, which may involve: forwarding eventual office actions and advising you of the best course of action, informing you when your application is published and when the registration fee should be paid.

After registration

Monitoring your trademark

We will monitor your trademark free of charge, which may involve advising you of any cancellation action and informing you when the renewal fees are due.

Trademark watch services

To effectively enforce your trademark rights, it is recommended to monitor new trademark applications published in the Trademark Gazette. This would enable you to file an opposition against all potential similar trademarks.

We provide this service, tailored to your specific demands.

Trademark rights enforcement & litigation

Having a registered trademark does not guarantee that your IP rights will not be infringed.

You can trust our professionals for all infringement cases, from collaborating with local enforcement authorities to defending your rights in court.

Licensing & assignment

Leveraging your IP rights might entail licensing or assignment your trademarks.

We can assist you in drafting and recording agreements matching your business plans and preserving your rights.

Trademark registration process (simplified)

Filing of the application – 1-2 days

To register a trademark, an application form (“Kor.01”, in Thai language) must be filed by the applicant or his/her agent with an office or address in Thailand at the DIP or via the DIP online filing platform. An official application fee must be paid on the filing date.

Examination of the application – 6-8 months

The registrar will check if the application complies with the formal requirements and basic registrability criteria set out in the Trademark Act. If there is any formal or substantive issue, the registrar will issue an office action to ask the applicant to amend the application or notify the applicant of the refusal. The applicant will have 60 days to respond to the office action or file an appeal against the refusal.

Publication – 60 days

Once the application has passed the examination, it will be published in the Thai Trademark Gazette. Third parties will have 60 days from the publication date to file an opposition.

Registration – 30 days

If no opposition has been filed, the registrar will issue a letter asking the applicant to pay the registration fees within 60 days of the date of receipt of the letter. The Certificate of Registration will be issued simultaneously with the payment of the registration fees. The trademark will be registered for 10 years, renewable indefinitely.

Thailand Trademark Registration Guide

Access and download our Thailand Trademark guides to acquire basic knowledge on current rules and regulations pertaining to registration, prosecution and Trademark rights enforcement in Thailand.

YOUR QUESTIONS

Our answers

Can an alleged non-distinctive trademark acquire distinctiveness through use?

Yes, if it can be demonstrated that it has been widely sold or advertised in Thailand for a significant period of time. As it was established through case law that a 2-year period of use was not sufficient, a period of 5-year of use is required as a rule of thumb.

Should a trademark be registered in color or in black and white?

A mark registered in black and white or using a grayscale will be protected in all other color combinations. On the other hand, a mark registered in two or more colors will only be protected with the colors claimed. Therefore, it is advisable not to register the mark in color, to provide the widest protection possible to the mark.

Does the Thai Trademark Office follow the Nice Classification?

Although Thailand has not endorsed the Nice Agreement on the International Classification of Goods and Services (1957), it uses the 11th edition of the Nice classification as guideline, with some peculiarities. It is strongly advised to get the opinion of a Trademark Attorney on the goods and services designated in the application. If they do not comply with the local list used by the Trademark Office, the applicant will be required to amend the application.