TRADEMARKS: - Registration of trademark is not required for protection but recommended. - First-to-file system. - Unregistered trademark is not protected against infringement, but passing-off. PATENTS AND PRODUCT DESIGNS: - Registration of invention and product design is required for protection. - Novelty is required for registration. COPYRIGHTS: - No registration is required for protection. - Copyright work is protected upon creation. - Deposit of copyright is beneficial and recommended.

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KEY ISSUES AND CONSIDERATIONS FOR
IP IN THAILAND
Kowit Somwaiya
Managing Partner
www.lawplusltd.com

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Thailand
•source: http://www.operationworld.org/thai
Land Area: 513,115 sq km
Population: 68.13 million (2015)
Capital: Bangkok
Urbanites: 34%
GDP: US$397.475 billion (2015)
Per capita income: US$5,771 (2015)

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Intellectual Property Registration
• TRADEMARKS:
– Registration of trademark is not required for protection but recommended.
– First-to-file system.
– Unregistered trademark is not protected against infringement, but passing-
off.
• PATENTS AND PRODUCT DESIGNS:
– Registration of invention and product design is required for protection.
– Novelty is required for registration.
• COPYRIGHTS:
– No registration is required for protection.
– Copyright work is protected upon creation.
– Deposit of copyright is beneficial and recommended.

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Trademark Registration - Thailand
• Established Registration System
– Registration process is complicated and costly
– It takes around 18-24 months for an application to reach registration
• Pending Changes
– Accession to the Madrid Protocol (expected by the end of 2017)
– More trademark examiners in 2016-2018
• Suggestions and Strategies
– File at least one year before use
– Register trademark license

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Trademark Enforcement - Thailand
• Intellectual Property and International Trade Court (IPIT Court),
established in 1996
• Specialized Appeals Court, established in 2016
• Criminal actions work better than civil actions
• Police and customs enforcements prior to criminal actions
• No administrative action available
• Suggestions and Strategies:
– Compile evidence of use
– Take a swift and decisive action against infringement

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2016 Amendment to Trademark Act B.E. 2534
• Sound marks and three dimensional marks are allowed registration.
• Multiple-class applications are allowed.
• Single-class applications remain possible.
• Associated mark is not required and partial assignment is allowed.
• Shorter period of responses to TMO’s orders (from 90 days to 60 days).
• Renewal grace period of six months from the expiry date is allowed, subject
to a 20% surcharge on the official renewal fees.
• Increase of official fees (in most cases) to two times of the 1991 rates.
• Official fees for filing, registration and renewal are now fixed if
goods/services are more than 5 items in a class.
• Unauthorized refilling of genuine package is penalized.

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Registration of Patents and Product Designs
Patent Type Basic Requirements Protection Period
Invention Patent Invention or process which
has novelty, inventive step
and industrial application
20 years (non-renewable)
Petty Patent Invention or process which
has novelty and industrial
application but does not
have inventive step
6 years plus two allowable
extensions of 2 years each
(10 years in total)
Design Patent Ornamental aspects or
aesthetics of products
(shape, configuration,
pattern, etc.)
10 years (non-renewable)

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Registration of Patents and Product Designs
Requirements Invention Patent Petty Patent Design Patent
Novelty
Capability of
industrial
application
Inventive
step/ Non-
obviousness
Application
Types
- Local
- PCT National
Phase
Local Local
  
  
 X X

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Copyright Protection: Eligibility
• Expression of idea NOT idea itself
• Originality (≠ Novelty)
• Works of authorship
• Applied arts
• Performer’s rights
• Exclusions
– news
– unexpressed ideas
– discoveries, scientific or mathematical theories
– etc.

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Copyright Protection Term
• Works of authorship: the lifetime of author plus 50 years from his
death, or 50 years from the publication date if the author is a legal
entity or anonymous person
• Works of applied art (such as drawings, paintings, sculpture, prints,
architecture, photography, drafts, and models for utility or functional
use): 25 years from the date of publication
• After expiration of copyright term, work falls into public domain.

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TIPS for Your IP in Thailand 1
• Register your trademarks and patents early.
– A trademark application takes around 18-24 months to reach
registration.
– An invention patent application takes around 5-8 years to reach
registration.
– Thailand uses a ‘first-to-file’ system (the first person to register an IP
right (trade mark, patent, etc.), rather than use it, owns it).
• Record your copyright.
– Though copyright protection is automatically conferred to the
author, voluntarily recording/depositing your copyright is
recommended.

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TIPS for Your IP in Thailand 2
• Apply for a distinctive trademark to increase chances of registration.
• Descriptive or suggestive mark is normally rejected.
• Clearly identify all products and services to be associated with your
trademark to prevent the delay in registration process.
• Maintain secrecy of your patent through confidentiality agreements in
case disclosure is necessary before you file a patent application for it.
• Compile evidence of use and advertising materials.
• IP watching, especially trademark watching.
• Take a swift and decisive action against infringement.

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TIPS for Your IP in Thailand 3
• Use local investigators and investigate deeply and upfront before taking
legal action.
• Be proactive with market surveys.
• Be “on the ground” to enforce and litigate.
• Use border control measures.
• Record IP with Customs Department.
• Target major infringers / monitor repeat offenders.

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Unit 1401, 14th Floor
990 Abdulrahim Place
Rama IV Road, Bangkok 10500
Tel. +66 (0)2 636 0662
Fax+66 (0)2 636 0663
Room 517, Yangon International Hotel
No. 330 Corner of Ahlone and Pyay Roads
Dagon Township, Yangon, Myanmar
Tel. +95 9 505 6667
Tel. +95 92 6111 7006
•www.lawplusltd.com
kowit.somwaiya@lawplusltd.com