The Department of Intellectual Property (DIP) within the Ministry of Commerce has, for a number of years, discussed planned revisions to the country’s Trademark Act, along with provisions on Thailand’s accession to the Madrid Protocol. These aspirations soon look to become reality.
The Madrid Protocol, administered by the World Intellectual Property Organization (WIPO), allows a trademark owner to seek protection of a trademark in several countries simultaneously by filing one application and by paying one fee.
The long-awaited ‘Bill for Amendment to the Trademark Act’, (“the Bill”) passed its third reading by the National Legislative Assembly (NLA) and was subsequently presented to His Majesty the King for endorsement. An announcement was later published in the Royal Gazette on 29 April 2016, with the law due to come into effect 90 days thereafter.
With reference to the Madrid Protocol, it is also necessary for Thailand’s Ministry of Foreign Affairs to formally submit a proposal of accession and have the application approved by WIPO. Furthermore, the DIP must complete the relevant Ministerial Regulations, which it is now in the process of drafting.
In addition to accession to the Madrid Protocol, the Bill contains other significant features as follows:
Definition of “mark” and distinctiveness
In addition to the definition of “mark” under the current Act (the Trademark Act of 1991 as amended by the Trademark Act of 2000), the Bill extends the definition by introducing “sound mark”. Further, “smell mark”, which was in a previous draft, was removed because distinctiveness was considered difficult to determine.
Characteristics essential to distinctiveness of sound marks have also been included in the Bill.
Submission of evidence to prove distinctiveness
Under the current Act, it is possible to submit evidence to prove that a mark is distinctive through use only of certain types of marks, such as personal names, surnames and names of juristic persons, among others. The Bill expands this to cover all types of marks, including combinations of colors, non-stylized letters and non-stylized numerals.
Multiple class applications
For the first time, the Bill introduces multiple class applications. This is necessary to bring Thailand into conformity with the International Registration system under the Madrid Protocol.
Process of registration
The period for responding to the registrar’s notices/demands has been shortened from 90 to 60 days from the date of receiving them. Also, a notice of opposition against published trademarks of others is required to be filed within 60 days (reduced from 90 days) from the date of publication.
Under the current trademark regime, marks of the same owner covering goods of the same class or different classes but of the same character, and which are similar to one another, are required to be registered as associated marks. This means that associated marks cannot be separately assigned to others.
The Bill does away with this requirement and allows for the separate assignment of similar trademarks of the same owner, even if they are for related goods.
Protection of packaging and wrapping
The Bill prohibits the representation of forged or imitated trademarks on the covering or packaging of goods with the intention of causing the public to believe that they are goods of another person.
In addition, it prohibits any person from using packaging that displays another person’s trademark for their own goods or a third party’s goods to make the public believe that they are the goods of the registered trademark’s owner. This technically bars the refilling of packaging with other products.
International registration under Madrid Protocol
Once a trademark is successfully registered under the Madrid Protocol system, the date on which the application was filed with the office of origin is the registration date.
Central Attack System
Within the period prescribed by the upcoming Ministerial Regulations from the date of registration of an application filed under the Madrid Protocol system, any whole or partial withdrawal, abandonment, refusal or cancellation of the basic application or basic registration, which is first filed or registered in the country of origin, and is used as a base for such Madrid Protocol application, will lead to the withdrawal, abandonment, refusal or cancellation of the registration of the Madrid Protocol application to the same extent.
Conversion of application under the Madrid Protocol system to Conventional Application system
Within the period prescribed by the upcoming Ministerial Regulations for revocation of a trademark application filed under the Madrid Protocol, the applicant may convert the application to a national application. The filing date under the Madrid Protocol system will be deemed as the filing date of the national application.
The new trademark law seems to support applicants more than the current regime. For example, the shortening of the time frame (from 90 to 60 days), multiple class applications, removing of association requirements and International Registration under the Madrid Protocol will be effective soon. Moreover, the addition of protection of packaging and wrapping will help protect consumers as well.
The enactment of the Bill and accession to the Madrid Protocol should benefit Thai businesses, especially those involved in exporting their own branded goods not only within ASEAN but globally. The Madrid Protocol will make it much easier for them to file for protection of their marks, as rather than filing separate applications through many agents around the world, they will be able to file single applications with the Thai Trademark Office and designate the Madrid Protocol member countries in which they also wish to protect their marks.