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Updated Trademark Opposition Procedure in Thailand 2017

Overview

A trademark application which, after examination, is considered acceptable for registration by the Registrar shall be published in the Trademark Gazette. Under Section 35 of the Thai Trademark Act B.E. 2534 (1991) as amended, within 60 days from the publication date, an opposition can be filed with the Trademark Office, Department of Intellectual Property.

Details and considerations

Reasons for opposition

(1) Better rights or better title
(2) Lack of distinctiveness
(3) Prohibited mark 
(4) Identical or confusingly similar to a prior mark
(5) The application does not conform to any provision of the Trademark Act

Person eligible to file an opposition

For the first ground, i.e. better rights or better title, the person who thinks he has better rights may file an opposition. For the remaining grounds, any person may file an opposition.

Deadline to file an opposition

The deadline to file a notice of opposition is 60 days from the publication date. The deadline to file a notice of opposition cannot be extended.

Opposition procedure

A notice of opposition must be filed with the Trademark Office using the form required by law along with all the supporting information. The official fee to file an opposition is 2,000 Baht.

A notarized Power of Attorney is required to file an opposition on behalf of the opponent.

The opponent may request an extension of 60 days to submit additional evidence in support of the opposition. 

After an opposition is filed, the Registrar shall serve a copy on the applicant by registered post. The applicant has 60 days from the date of receipt to file a counter statement with the Registrar. There is no official fee for filing a counter statement. If no counter statement is filed within 60 days, the application will be deemed abandoned. The deadline to file a counter statement cannot be extended.

The applicant may request an extension of 60 days to submit additional evidence in support of the counter statement.

After the parties have filed their notice of opposition and counter statement along with their supporting evidence, the Registrar will consider arguments of both parties and issue a decision. Based on recent statistics, for straight forward cases with not much evidence, it usually takes about 10 months for a decision to be issued. For complex cases or opposition with huge amounts of evidence, it could take 16 months or more for a decision to be issued. The written decision will be sent to both parties.

If a party disagrees with the decision of the Registrar they may file an appeal to the Trademark Board within 60 days from date of receipt of the Registrar’s decision. The official fee to file an appeal with the Trademark Board is 4,000 Baht.

The appellant may request an extension of 60 days to submit additional evidence in support of the appeal. The appeal is ex-parte and the other party cannot submit a response. 

After the appeal is filed, the Trademark Board will consider the appeal and issue a decision. Based on recent statistics, for straight forward cases with not much evidence, it usually takes about 14 months for a decision to be issued. For complex cases or opposition with huge amounts of evidence, it could take 20 months or more for a decision to be issued. The written decision will be sent to both parties.

If a party disagrees with decision of the Trademark Board they may file an appeal to the Intellectual Property and International Trade Court (IPIT Court) within 90 days from the date of receipt of the Trademark Board’s decision. The judgment would be announced in about 12-16 months after the complaint is filed.

Judgment of the IPIT Court can be appealed to the Court of Appeal for Specialized Cases. Parties who are not satisfied with the judgment of the Appeal Court must petition the Supreme Court to hear their case.

Remedies available

The only remedy available in an opposition proceeding in Thailand is the refusal to register a mark. The Registrar and the Trademark Board does not award attorney’s fees or costs. The Court can award attorney’s fees but the amount is generally very low and does not reflect the actual fees.

Recommendation

It is advisable to file an opposition as it is easier and more cost effective to oppose a trademark than to allow it to proceed to registration and cancel the mark at a later stage.

Sources

1. Trademark Act B.E. 2534 (1991) as amended in B.E. 2543 (2000) and B.E. 2559 (2016)
2. Ministerial Regulation B.E. 2535 (1992) issued under the Trademark Act B.E. 2534 (1991) as amended by Ministerial Regulation No. 5 B.E. 2560 (2017)

Authors

Dr. Satyapon Sachdecha /
Mr. Sukhprem Sachdecha
Satyapon & Partners Ltd.
Bangkok, Thailand

Last update

August 30, 2017

VERASAK MAIWATANA

Former Director of Patent Office
Department of Intellectual Property Thailand
We would like to announce that, effective October 2016, Verasak Maiwatana, former Director of Thailand Patent Office, has joined our patent team to oversee our patent prosecution and litigation matters.

His professional experience, while, serving at the Thailand Patent Office, Department of Intellectual Property, are as follows:

1981 - 2009 : Patent Examiner
2009 - 2010 : Head of PCT Receiving Office, Thailand Patent Office
2010 - 2011 : Director of IP Management Division
2012 - 2016 : Director of Patent Office

- Head of IP Negotiation Team for JTEPA
- Drafting various laws, regulations and guidelines
- Training and observation tour from : USPTO, EPO, JPO, KIPO, SIPO, IP AU, IPOS, MYIPO, GPO, etc.

With 35 years of experience in the Thailand Patent Office, Department of Intellectual Property, Mr. Maiwatana brings in a wealth of patent examination experience to our firm. We are certain that such invaluable experience would provide significant value to our clients.

It is our pleasure to welcome Verasak Maiwatana to Satyapon’s patent team.
We are very pleased to inform you that on Friday, March 10, 2017, Satyapon Sachdecha and other members of Satyapon & Partners enforcement team attended the destruction ceremony of IPR infringing goods, which was held at the 11th Infantry Regiment, Royal Thai Army Base in Bangkok.

The destruction ceremony was organized by the Department of Intellectual Property together with other agencies including Internal Security Operations Command, Royal Thai Army, Royal Thai Police, Customs Department, Department of Special Investigation (DSI).

The Ceremony was presided over by General Prawit Wongsuwan, the Deputy Prime Minister, and Chairman of IPR Violation Suppression Sub-Committee. The event was well-attended by government officers as well as representatives from diplomatic corps, intergovernmental agencies, and media.
 
During his opening speech, the Deputy Prime Minister stressed that “The Thai government steps up its effort in strengthening the national intellectual property system through effective rights enforcement and public awareness campaign.”

The destroyed counterfeits were those seized by Customs, DSI and Economic Crime Police as IPR violations in cases in which the decisions are now final. The seized goods destroyed at the event include a wide variety of copyright and trademark infringing goods such as bags, clothing, watches, mobile phones and their accessories, electronic appliances, and CDs.

A total of 3,639,679 items of infringing goods were destroyed. 2,915,525 items were seized by Customs, 447,511 were seized by DSI and 276,643 items were seized by Police. Destruction of the goods help ensure that they are removed from all channels of commerce.

We hope that the Thai government and other enforcement units continue to step up their efforts to protect intellectual property rights in Thailand. If you would like to learn more about how we can assist you with your intellectual property enforcement needs in Thailand, please feel to contact us at satyapon@satyapon.com.
Newsletter: THAILAND's Madrid Protocol will take effect on November 7, 2017
The current Government of Thailand is continuing its efforts to overhaul the Intellectual Property Laws of Thailand to bring them in line with international standards and speed up application processing times as a part of their Thailand 4.0 Plan. 

The Thai Patent Office has just recently almost quadrupled its permanent staff from 25 examiners to 95 in an effort to reduce the backlog of patents and speed up future applications to make it more attractive and easier for inventors to protect their rights in the Kingdom. Patent Law changes are also coming soon.

Our own Sukhprem Sachdecha sits on the Law Reform Commission on Patent for the Thai Ministry of Commerce. The draft was posted for public hearing in May of 2017, the first round of draft revisions were completed recently on Nov. 29, 2017, and they expect the second round to be completed before the end of the year or early 2018. Another public hearing of the revised laws is expected in early 2018. Provided everything goes smoothly the new laws should take effect in late 2018.

The goal of the changes is to streamline the application process to make it more efficient and to modernize some of the outdated laws to current international standards.

2017 has been a huge year for rights holders in Thailand with the Kingdom revising Patent Law and acceding to the Madrid Protocol. Adding staff to both the Trademark and Patent offices and an unprecedented level of government cooperation in terms of enforcement. Thailand is truly embracing the importance of Intellectual Property there has been no better time to protect your interests in the Kingdom.

As always if you need assistance with any intellectual property matter in Thailand, Cambodia, Laos, Myanmar or Vietnam or would like more information about the above please do not hesitate to contact us at satyapon@satyapon.com
U.S. Trade Representative Robert Lighthizer announced Friday, Dec. 15th, 2017 that the Trump Administration has downgraded Thailand from the Priority Watch List to the Watch List, a triumph for the current government in Thailand who has been heavily pushing reforms to improve trade relations with all Nations through sweeping IP changes in the last few years.

Thailand is taking all the right steps to ensure Intellectual Property rights holders can enforce their rights in the Kingdom. As well as accession to the Madrid Protocol they have also been updating laws and regulations to international Standards. Last year Trademarks were updated with the inclusion of Soundmarks and streamlined regulations went into place this year. Patent Law changes are now under review, our partner Suhkprem Sachdecha sits on the Law Reform Commission on Patent for Thai Ministry of Commerce, the new laws should take effect late next year.

In addition to the changes in law the Department of Intellectual Property has significantly increased the number of examiners for both Trademark and Patent, in fact over a 300% increase in Patent examiners in order to deal with the backlog and ensure speedier approvals in the future.

The changes are not just in the laws, regulations and staff, there is a very pronounced change in attitude towards IP Enforcement in Thailand. The current government is taking it very seriously and never in Thailand’s history has the environment been more conducive to enforcement of IP rights.

As always if you have any further questions regarding the changes, assistance with new applications under the Madrid Protocol or National Phase PCT, or any other matter related to Intellectual Property in Thailand, Cambodia, Laos, Myanmar or Vietnam, please do not hesitate to contact us directly at satyapon@satyapon.com

The full press release from the USTR:
USTR Lighthizer Announces Results of Special 301 Out-of-Cycle Review of Thailand
Washington, D.C. – U.S. Trade Representative Robert Lighthizer today announced the conclusion and results of the Special 301 Out-of-Cycle Review (OCR) of Thailand, including moving Thailand from the Priority Watch List to the Watch List.

“A key objective of the Trump Administration’s trade policy is ensuring that U.S. owners of intellectual property (IP) have a full and fair opportunity to use and profit from their IP around the globe,” said Ambassador Lighthizer.  “The key to promoting innovation is protecting intellectual property. We welcome the corrective actions that Thailand has taken and look forward to continuing to work with Thailand to resolve our remaining IP concerns.”

The Trump Administration has been closely engaging with Thailand on improving IP protection and enforcement as part of the bilateral U.S.-Thailand Trade and Investment Framework Agreement.  This engagement has yielded results on resolving U.S. IP concerns across a range of issues, including on enforcement, patents and pharmaceuticals, trademarks, and copyright.

For example, Thailand established an interagency National Committee on Intellectual Property Policy and a subcommittee on enforcement against intellectual property infringement, led by the Prime Minister and a Deputy Prime Minister, respectively.  This strong level of interest from the highest levels of the government led to improved coordination among government entities, as well as enhanced and sustained enforcement efforts to combat counterfeit and pirated goods throughout the country.

Thailand also has been taking steps to address backlogs for patent and trademark applications, including significantly increasing the number of examiners and streamlining regulations.  In addition, Thailand joined the Madrid Protocol, making it easier for U.S. companies to apply for trademarks, and took steps to address concerns regarding online piracy affecting the U.S. content industry.

Other results include a commitment from Thailand to improve transparency related to pharmaceutical issues, such as taking stakeholder input into account as it considers amendments to its Drug Act and providing interested stakeholders with regular consultation opportunities with the Thai Food and Drug Administration.

In light of Thailand’s progress, USTR is closing the OCR that was initiated on September 15, 2017, and is moving Thailand from the Special 301 Priority Watch List to the Watch List.  The United States will continue to engage bilaterally with Thailand to address other remaining IP concerns, which are highlighted in the 2017 Special 301 Report.

Background

The Special 301 Report is the result of an annual review of the state of intellectual property (IP) protection and enforcement in U.S. trading partners around the world, which the Office of the United States Trade Representative (USTR) conducts pursuant to Section 182 of the Trade Act of 1974, as amended by the Omnibus Trade and Competitiveness Act of 1988, the Uruguay Round Agreements Act, and the Trade Facilitation and Trade Enforcement Act of 2015 (19 U.S.C. § 2242).

USTR uses Out-of-Cycle Reviews (OCRs) to encourage progress on IP issues.  Successful resolution of specific IP issues of concern can lead to a change in a trading partner's Special 301 status outside of the typical period for the annual Special 301 Report.  Conversely, failure to address identified IP concerns, or further deterioration as to an IP-related concern within the specified OCR period, can lead to an adverse change in status.  USTR may conduct OCRs with trading partners as circumstances warrant. 
Great news for European Patent holders and companies considering investment in Cambodia as of March 1st, 2018, for a nominal additional fee of 180 EUR, it will be possible to validate European patent applications and patents in Cambodia. This will grant essentially the same protection in Cambodia as anywhere else in the EU, bringing the total number of countries a European Patent has force in to 44. The sole exception to this new law is patents for pharmaceutical products. Cambodia currently benefits from the World Trade Organization’s waiver for Least Developed Countries to avoid grant and enforcement of IP rights related to pharmaceuticals until 2033. 
Validation requires the applicant’s request for current applications, however for all new applications filed after the effective date validation shall be deemed requested.

For the official journal article from the European Patent office please see their website:

As always if you need assistance with any Intellectual Property matter in Thailand, Cambodia, Laos, Myanmar or Vietnam you can contact us directly at satyapon@satyapon.com
On Monday, April 23rd, 2018 Francis Gurry, Director General of the World Intellectual Property Organization (WIPO), visited Bangkok, Thailand and met with Prime Minister Prayut Chan-o-cha to congratulate him on the improvements to intellectual property protection in Thailand, as well as discuss further collaboration between the organization and Thailand.

Satyapon Sachdecha, Managing Director of Satyapon & Partners was honored to be invited to the executive luncheon where he had the opportunity to meet Francis Gurry and other prominent members of the Thai legal community and current government.
We are very pleased to announce that Satyapon & Partners is the first law firm in Thailand to partner with the Asian Law Students' Association (ALSA)’s STEP internship program. The Student Trainee Exchange Program offers internship opportunities for Asian law students in foreign jurisdictions.

ALSA is a non-political, non-profit organization established in 2002 that brings together ambitious young future legal professionals from across Asia giving them a platform to build regional professional networks and hone leadership skills, it currently has over 12,000 members and alumni from 16 countries across Asia.

The program, brought to our BDM, Nathan Wood, by Rachthep Bhatia, the former President of ALSA, fits perfectly with Satyapon & Partners long history of support and promotion of legal education.

Arif Azhan bin Awang Besar, Wipavee Anantasak, Wongwiwat Kunwongse, and Chinapat Chokwitayarat all assisted in developing the partnership between ALSA and our firm.

Our Managing Partner Satyapon Sachdecha on the program:

"From inception our firm has participated heavily in local internship programs. The partnership with ALSA gives us a new opportunity to have an impact on youth beyond our borders by assisting interns from other jurisdictions."
The current Thai government continues its relentless pursuit of improving the intellectual property landscape for rights holders in Thailand. On the heels of accession to the Madrid Protocol, amendment of the Trademark Act, and draft amendment of the Patent Act, copyright changes are coming. The Cabinet approved accession to the WIPO Copyright Treaty in its weekly session yesterday. The next stage is review and deliberation before the National Legislative Assembly.

In addition, a draft amendment to the Copyright Act itself, to address concerns from major trade partners and strengthen protection for copyright owners in the Kingdom, was also approved and will head to the Council of State who will seek the opinions of the Ministry of Digital Economy and Society, Ministry of Culture and the Office of the Attorney General before sending the draft to the National Legislative Assembly. 

We will keep the community informed as further progress is announced.
The amended Copyright Act (No.4) B.E. 2561 (2018) has been officially published in the Royal Gazette and will go into force 120 days from November 11, 2018.

The act improves wording in order to comply with the Marrakesh Treaty with the intent to accede to the treaty in the near future. 

The Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled was adopted on June 27, 2013, is in the words of WIPO:

“It has a clear humanitarian and social development dimension and its main goal is to create a set of mandatory limitations and exceptions for the benefit of the blind, visually impaired, and otherwise print disabled (VIPs).” – WIPO

Its main goal is to increase access to printed materials for the millions of people around the world who are blind or visually impaired.  

In recent years Thailand has fully embraced changing the IP landscape to meet international standards in order to woo foreign investment. It is great to see that the government is also improving IP for humanitarian purposes not just economic concerns.
On behalf of our Managing Partner, Satyapon Sachdecha, the partners, Sukhprem Sachdecha, Kritsana Mingtongkhum, and Kritchawat Chainapasak, our associates and staff we wish to humbly thank all our clients, esteemed colleagues, friends and family whose continued support over the years has resulted in our firm taking home the Trademark Firm of the Year Award 2018 from AsiaIP.

We especially want to thank all our loyal clients who sent us their work over the years without you we could never have achieved this, and our strong team of associates whose execution and dedication make it all happen in the background while our partners shine in the spotlight.   

With sincerest thanks to all, we wish everyone continued success in 2019. 

The team at,
It is with great pleasure that we announce our newly approved membership at the Australian-Thai Chamber of Commerce, AustCham.

We had the pleasure of meeting Mr. Brenton Mauriello, President of the Board of Directors at a Sundowners event, and subsequently Mr. Brendan Cunningham, the Executive Director of AustCham. After several engaging conversations it was quite clear our interests and goals align. 

Our firm has a great many ties to Australia, having the privilege of representing a number of large Australian business interests in the Kingdom through leading Australian law firms. And also through registration of our Thai client’s rights in Australia, which is a key market for many multinational Thai businesses. Our partners have been regular guest speakers at Australian National Institutions and events, most recently Sukhprem Sachdecha spoke at the Institute of Patent and Trademark Attorneys of Australia. 

We are very proud to join the AustCham community and look forward to developing relations with the other members, and strengthening our ties with Australia. 

Special thanks to Ms. Kattika Songkrasin for her hard work facilitating our membership.
We are very pleased to inform you that we are starting to see some real progress at the Thai Patent Office. The changes in internal procedures and quadrupling of patent examiners are starting to have an impact.

Last week we received notification to pay grant fees on a National Phase Entry application filed in January of 2017, using the PPH route, in cooperation with the Japanese Patent Office, to accelerate examination. Less than two years to grant was absolutely unheard of even a few years back, by any entry method in Thailand.

Further changes are coming, our head of Patent & Litigation Sukhprem Sachdecha, is currently a Committee Member on the Patent Reform Development Committee for the Thai Ministry of Commerce and a draft amendment to streamline the law, clarify ambiguities and bring the law in line with international standards is undergoing the final stages of review, and should be enacted early-to-mid 2019. We hope to see a further reduction in application times as a direct result of the amendments. 

If you have questions related to patent acceleration strategies in Thailand, please contact us we would be happy to review your patent prosecution strategy.
Another step in the right direction for genuine rights holders in the Kingdom. 

Earlier this year Prime Minister Prayut-o-chan, as the Chairman of the National Intellectual Property Policy Committee, and Deputy Prime Minister Prawit Wongsuwan, as Chairman of the sub-committee on Law Enforcement of IP Infringement ordered the Royal Thai Police, NBTC and the Department of Intellectual Property to speed up the process for blocking illegal websites related to IP violations from the previously lengthy 6-8month court process to less than 3 days. 

This ambitious order has resulted in the opening of the Center of Operational Policing of Thailand Against Intellectual Property Violations and Crimes on the Internet Suppression (COPTICS). 

The opening ceremony on Tuesday was attended by the national police chief Pol Gen Chakthip Chajinda, Pol Maj Gen Surachate Hakparn, representatives from the US Embassy and our own Managing Partner, Satyapon Sachdecha. Three companies and the Thai Motion Picture Industry Association immediately filed complaints against violating websites.

UPDATE: We checked with our friends at the Thai Motion Picture Association and were informed that they did not lodge a complaint themselves, as reported by Thai media outlets, although they are monitoring a complaint on behalf of a client. As of today (4 days later) the site has not been blocked and they have also informed us of some limitations that would be of interest to the community.

The most significant limitations to the system being:

1) They can only block on a per url basis, meaning they do not block an entire site just the url that contains the infringing content. 
2) They cannot block secured websites, therefore any site that is https cannot be blocked
3) Facebook and YouTube urls cannot be blocked, no explanation on this other than perhaps pressure from the industry giants Facebook and Google (who owns YouTube).
4) As it is a blocking action only which only affects users in the Kingdom, court proceedings for actual takedown will still need to be taken for permanent resolution

Despite these limitations we believe it is still a very positive step in the right direction as the damages that can occur within a 6-8month period can be extensive and the ease and speed in which a new site can be put up is currently unaddressed by the court system.
Over the last three years there have been sweeping changes to Intellectual Property Law in Thailand but what does that mean for business? 

Never in the history of Thailand have the conditions been more favorable for genuine rights holders. The current government has fully embraced intellectual property as a key economic driver, and has formulated its policies to improve the IP landscape from end to end in the Kingdom to woo foreign investment by promoting Thailand as a safe market for IP. These efforts are championed by the Prime Minister and Deputy Prime Ministers themselves, who chair the intellectual property committees, so the initiatives and impetus are coming from the top of the country’s executive branch. Which carries an enormous amount of weight in Thailand. We hope the momentum will continue once democracy returns to the Kingdom. Highlights include:
- The Business Security Act is enacted – Effective July 2, 2016
- Amendments to the Trademark Act – Effective July 28, 2016
- Accession to the Madrid Protocol – Effective Nov. 7, 2017
- Thailand Removed from US Priority Watch List for IP, Dec. 15, 2017
- Thai Patent Office quadruples its permanent staff from 25 to 95 examiners, and hires many temporary examiners to speed up examination times and reduce backlogs
- The Trademark Office also greatly increased staff at the same time although trademark timelines are not really an issue in the Kingdom, there are some backlogs in the appeals process
- Sweeping changes in internal regulations at both the Thai Trademark and Patent Offices in direct response to Prime Ministers direction to speed up application times through more efficient internal processes, 2017
- Amendments to the Patent Act – Ongoing, expected to take effect early 2019
- Amendments to the Copyright Act –takes effect 120 days from Nov. 11, 2018.
Changes were made with the intent that the Kingdom will accede to the Marrakesh Treaty in the near future
- Cabinet has approved accession to the WIPO Copyright Treaty, it is now before the legislative assembly
- COPTICS opens giving a route for rapid blocking of infringing websites
Most larger companies have already registered their rights as a simple preventative measure but many leave it at that considering the market too problematic to pursue enforcement of all but the most blatant infringement. We need more companies to reconsider their position on this to truly stamp out infringement in Thailand or at least relegate it to the back alleys not blatantly condoned in full public view. The time to enforce is now, the government is fully behind it and never has been as easy to enforce. 

SMEs on the other hand often leave it until they have a problem which is absolutely the wrong way to do things. The registration of rights in the Kingdom is very cost effective and greatly reduces legal costs should legal issues arise. Coming to us after the cow has been stolen from the farm and asking us to chase it down and recover it will cost vastly more than if you built a fence in the first place.

Trademark and Patent infringement are criminal offences in the Kingdom. Trademark enforcement is very easy, patent is a little trickier as local enforcement may have difficulty understanding the differences or similarities in highly complex patent matters, however Trademark law can sometimes be relied upon to bridge the gap. Trademark is integral to your overall enforcement strategy. 

If you have any questions related to any intellectual property matter in Thailand or the surrounding countries of Cambodia, Laos, Myanmar, and Vietnam or think it’s time to rethink your IP strategy in the Kingdom please do not hesitate to reach out to us.
It is good to see Intellectual Property continuing to be a hot topic in Thailand. The fact that the day after the election in Thailand, with no new government formally announced, one of the country’s leading newspapers is running an article on the front page of its business section calling for whatever new government is formed to continue the good work in the area of IP sends a clear message that Thailand is taking IP very seriously these days.

As we have reported before, the last 3 years have been very important for genuine rights holders and the IP framework in Thailand. With the new Trademark Amendment already in force which led to accession to the Madrid Protocol, the Copyright Amendments now officially in force only 15 days ago paving the way for accession to the Marrakesh Treaty, and Patent Amendments being in their final stages of legislative approval, it has been a very important period for IP in the Kingdom.

Economics is the key driving force as Ellen Szymanski, Executive Director of the US Chamber of Commerce’s Global Innovative Policy Centre, elucidated in the article by the Nation:

“Continued efforts from the government are what foreign investors see as most important when investing in a country's IP assets”

Trademark registration in Thailand is a little more difficult than you would expect, the conservative Trademark Registrars and Trademark Board often issue disclaimers and outright rejections for marks that leave business operators from other jurisdictions scratching their heads in puzzlement as their mark is globally recognized and registered in many countries around the world. Some firms simply advise to forget it but these office actions can be overcome. Thailand is an important market that has vastly improved their IP enforcement efforts and registration process in recent years to align with global standards, it should be part of your global protection strategy.

Thankfully the courts are much more forward thinking, but still these conservative views add undue burden on many clients as the cost to register goes from the very cost effective simple registration to an extended legal battle as you work through the appeal process then the courts. 

Our client DTSWISS, an international recognized premium bike parts supplier, ran afoul of these conservative views, something we advised them in advance would happen based on our lengthy experience.

One of the key factors that comes into play in Thailand is the current practice of the Registrars and Trademark Board is to split a mark into its components and examine them individually for inherent registrability. This flies completely against the world wide recognized Anti-Dissection Principle which basically states that trademarks should be looked at as a whole as they would appear to the general public, as a combination of indistinct elements can, in fact, create a recognizable mark that can distinguish the owner’s goods from competing goods in their market. 

When you break our clients mark into its obvious component elements “DT” and “SWISS” it runs afoul of two other reasons for rejection. While it does not specifically state it in the Trademark Act, the current practice at the Trademark Office is that unpronounceable acronyms or alphanumerics are considered not distinctive. Additionally, the names of foreign countries are expressly prohibited from use as a mark in Thailand, and while “SWISS” is not Switzerland the Registrars and the Trademark Board feel that terms that refer to the people or language of a country are closely related enough to also need to be rejected under the same provision of law, even though it does not expressly prohibit such terms. 

In light of the above you can see why we advised our client they would have a fight on their hands despite being a world renowned brand and trademark.
 
In the end our arguments, as they almost always are, were listened to by the IPIT Court who ruled in our client’s favor against the Trademark Board’s decision allowing their mark to proceed in the registration process. The court decided that not only was our client’s mark inherently distinctive but it has also acquired distinctiveness through use. If you are experiencing similar difficulties or have been advised by other counsel that your mark is not registrable in Thailand for similar reasons we invite you to let us have a look. We have a long and highly successful trach record of overcoming rejections where others have failed.
The Thailand Department of Intellectual Property is carrying out a publication consultation on the Patent Act Amendment Bill and Copyright Act Amendment Bill until February 28, 2018.

The drafts, in Thai language, are available on www.ipthailand.go.th
Roughly a week ago, in the early evening hours, members of the Economic Crime Division of the Royal Thai Police, and the Department of Intellectual Property executed a blitz raid exercising warrants against 5 infringing shops both openly selling, and selling goods in either hidden back rooms or concealed spaces in Bangkok’s infamous Patpong tourist area.

The highly successful raid confiscated roughly 2,000 pieces of both fake and imitation goods on behalf of the clients of Satyapon and Partners. The street value of the goods seized is estimated at USD 350,000 with goods seized selling between USD 50 to USD 300 per item, however the monetary impact against the clients is harder to ascertain as the goods seized represent anywhere between USD 3,500,000 to USD 7,000,000 in potential revenue lost, as the genuine goods sell between USD 1000 – USD 6000 with some items exceeding USD 10,000. The removal of these goods from the Thai marketplace is a major win for all genuine brand owners in the Kingdom, and reinforces Thailand’s commitment to cleaning up IP infringement.

The Satyapon and Partners enforcement team is particularly proud of the execution against one highly sophisticated infringer whose hidden sales room was very professional, one could call it a shop within a shop. Ducking through a small door at the back of the shop to see “the good stuff”, investigators arrived in a well-appointed room with built in shelving and recessed lighting displaying shelf after shelf of counterfeit high-end lady’s hand bags and luggage from almost every famous, high-end fashion house on the planet. 

We would like to take this opportunity to thank the hard working members of the Economic Crime Division and the Department of Intellectual Property for their professionalism and dedication to IP enforcement in the Kingdom.

Contact Satyapon & Partners today to learn how our market leading team can assist you in effectively enforcing your IP rights in Thailand.
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