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Filing
a New Application
The
Thai Trademark Office uses the Eighth Edition of the International
Classification of Goods and Services under the Nice Agreement
(International Classes 1-45). However, the Examiners have
the discretion to deviate from those guidelines. And, all
goods and services must be specifically described and listed
separately. Broad descriptions and the designation “all
goods in this class” are not allowed. The Registrar
always requires a very clear description of each specific
item for each of the goods and services in each class. You
may send us a description of the goods or services with your
instructions for filing. We will let you know if any term
is too broad and must be further itemized, based on our recent
experiences. Multi-class applications and series of mark applications
are not allowed. We must file a separate application for each
mark in each class.
To
file an application, we need the following:
1. A Power of Attorney signed by the client and notarized
by a Notary Public. We
have to file the Power of Attorney along
with the application. We are not allowed to file it
later. One Power of Attorney
form is sufficient for multiple
applications. We can keep the
Power of Attorney on file for
future applications. Legalization
by a Royal Thai Embassy or
Consulate is not required (except
for Taiwanese applicants).
2. A very clear and specific description of the goods or services.
3. A sample of mark, if not in plain block letters.
4. If there is priority claim, please fax the priority
application
together with your instructions.
We need to match typeface
in the mark exactly, even if
it is just a word mark in block
letters. If the mark in our
application does not match the
mark in the priority claim
exactly, the Registrar may disallow
the priority claim without
leave to amend. We must file a
certified copy within 90 days
after the Thai filing date.
Trademark Renewal Applications
The
requirements are the same as a new application, except we
do not need a new print of the mark. We will follow the list
of goods or services as in the present registration unless
you instruct us otherwise. If there are any complications,
such as re-classification of goods or services, we will consult
with you before we file the renewal.
Recording
an Assignment
To
record an assignment, we need the following:
1. A signed and notarized Power of Attorney from the Assignee.
2. An original of the Deed of Assignment signed by
authorized
signatory of each party, notarized
by a Notary Public. We
would prefer that you send
us an original of the Deed of
Assignment. If you do not send
us an original, we may use a
photocopy, provided that a
Notary Public has certified it to be
true and correct.
3. If the mark has been registered, we will also require the
original Trademark Registration
Certificate. If the certificate
is not available, we can obtain
a replacement.
Recording
a License
Our
law requires that a license agreement must be in writing and
recorded with the Trademark Office to be considered valid
and enforceable. The Trademark Office requires that the license
agreement must be translated into the Thai language. The Registrar
then examines the license agreement to see that it conforms
to the law. At the very least, the agreement must set forth:
1. The list of goods and services for which the mark is to
be
licensed
and,
2. Terms and conditions which insure effective quality
control by
the Licensor
The
agreement must not be contrary to public policy nor mislead
the public as to the origin of goods or services or the proprietor
of the marks. Note that the applicant does not need to disclose
confidential business terms, such as compensation. These may
be struck through or “whited out”, as long as
the essential terms described above remain.
Note:
A license will be deemed to be non-exclusive unless the license
agreement expressly provides otherwise. Our law makes no provision
for “registered user” status. If no licensing
is involved, a proprietor does not need to record its subsidiary
as a “registered user”.
To
record a license, we need the following:
1. A Power of Attorney executed by the Licensor, and notarized
by a Notary Public.
2. A Power of Attorney executed by the Licensee, and
notarized
by a Notary Public.
3. An original of the License Agreement signed by both
parties
and notarized by a Notary Public.
4. A certified Thai translation of the agreement. (We
provide
this translation.)
Please
note that if either individual signatory of the Licensor or
Licensee in the License Agreement is the same signatory as
in the Power of Attorney, that individual’s signature
in the License Agreement does not need to be notarized. Also,
if the Licensee is not the same signatory as in the Power
of Attorney and executes in Thailand, that signature must
be witnessed by 2 persons. The original you send us will be
shown to the Registrar, along with our photocopy of the same.
The Registrar will then accept the photocopy for submission
and we will return the original to you.
Recording
a Client's Change of Name or Change of Address
To
record a client's name change, we will need the following:
1. A signed and notarized Power of Attorney from the client
in
their new name.
2. An original of the certificate or amendment of Name
Change
recorded with and issued by
the business registration
authorities in the client’s
jurisdiction or, a photocopy certified
to
be true and correct by a Notary Public.
To
record a client’s change of address only:
1. A signed and notarized Power of Attorney from the client
reflecting
their new address.
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