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Trademarks

November 2009

GENERAL INFORMATION - MARKS

LEGAL NOTES

Basically, the Thai Trademarks Act of 1991 is based on the British trademark law and adheres closely to the TRIPS Agreement.

Trademarks, service marks, collective marks and certification marks can be registered. Color combinations and three-dimensional marks can also be registered but such non-conventional marks as sound and olfactory marks cannot.

Although Thailand is not a member of the Nice Agreement, the Thai Trademark Office has adopted the 8th edition of Nice Classification but not the current 9th edition. An application may cover only one class of goods or services. Broad specifications such as “the class-heading” or “all goods” are not allowed. An itemized list is required.

Use of a mark in Thailand is not a pre-requisite to filing. However, priority of bona fide use in Thailand gives rise to a right to it.

Priority can be claimed on the basis of national treatment and reciprocity. Thailand is a member of the World Trademark Organization and the Paris Convention.

An application is subject to both formal and substantive examinations. As far as substantive examination is concerned, a mark applied for is examined as to its inherent registrabilities and similarity with prior marks. Disclaimers and association of marks may be required. Registrar objections, citations and requirements may be appealed to the Trademark Board within 90 days.

A registration is valid for ten years and may be renewed for an idefinite period of ten years each.

A mark registered but unsed in Thailand with no justifiable reasons may be cancelled.

Pending or registered marks can be assigned with or without goodwill. Partial assignment is not permitted. Consideration is not required.

Licenses and sub-licenses involving marks registered in Thailand executed and effective on or after February 13, 1992 must be recorded with the Trademark Office in order for them to have binding effects.

GENERAL

Documents filed with the Trademark Office must be in Thai or translated into Thai. In application, we have to transliterate into Thai all foreign words appearing in the mark and supply their meaning, if any. Documents should be sent to us in English or accompanied by an English translation.

APPLICATIONS

To file an application for registration of a mark, we need:

a) An original power of attorney with notarial certification;

b) 20 facsimiles of the mark (word or device) for each class;

c) 20 facsimiles of the mark in color, if desired or if the registration is to be limited to certain colors;

d) A statement of the specific goods to be covered; and

e) A translation into English of any words in a mark not in that language and also of any non-English words in powers of attorney (e.g. notarial certificates) or in other documents to be filed.

RENEWAL

Only a notarized power of attorney is required. On renewal, it is possible to delete terms of goods/services that are no longer required but inclusion of new terms is not allowed.

ASSIGNMENTS

An original or a notarially certified copy of a deed of assignment which has been signed by both assignor and assignee and power of attorney from the assignee are required. All signatures must be notarized.

CHANGE OF NAME

An original or notarially certified copy of the certificate of change of name and a notarized power of attorney from the owner in its new name are required.

SERVICE MARKS

The rules of distinctiveness applying to trademarks also apply to service marks.

COLLECTIVE MARKS

Any member of the group may apply listing the members of the group entitled to use the mark. Evidence of membership of the group is required.

LICENSING

A license agreement must meet three basic requirements. It must (1) contain a provision enabling the owner to effectively control the quality of the licensed goods/services, (2) state the licensed goods/services clearly and (3) stipulate whether the license granted is exclusive or non-exclusive.

 

STAMP DUTY

This is payable on all powers of attorney and some other documents. Stamps will be affixed by us.

POWER OF ATTORNEY

General powers are to be preferred. Notarial attestation is essential.

Powers should be in favour of Domnern Somgiat & Boonma Law Office Limited and/or Nettaya Warncke and/or Rutorn Nopakun and/or Kiat Poonsombudlert and include the power to substitute. The power form can be downloaded from our website located at www.dsb.co.th.

NOTARIAL ATTESTATION

If the owner is a legal entity, the Notary Public is required to certify that

a) The firm is a juristic person;

b) The person signing has the authority to do so; and

c) The signature is genuine.

If the Notary Public cannot give the certification required, other evidence of authority and juristic status will be needed. Legalization by the Thai Embassy is NOT required.

PAYMENT

On receipt of our debit notes, please make payment as indicated therein.