In our last article, we identified the relevant Thai laws for the protection of copyrights. This week we continue our expedition into the realm of intellectual property rights by looking at trademarks and how they are protected under the Thai legal system.
A quick wander in one of the touristy areas in Thailand will expose you to hundreds and hundreds of trademark infringements, from knock-off headphones, phones and clothing to fake medicines, electronics and watches; it seems Thailand’s trademark counterfeit industry is still booming.
In Thailand, trademarks and other marks are governed by the Trademark Act BE 2534 (AD 1991) as amended by the Trademark Act BE 2543. The relevant authority for registering marks in Thailand is the Department of Intellectual Property.
A mark is defined as a word, phrase, logo or sign used by a manufacturer to distinguish and identify its products from those of its competitors. There exist several different types of marks which are currently recognised under Thai law, ie trademarks, service marks, certification marks and collective marks. As a rule of thumb the purpose of trademarks is to guarantee the product’s genuineness. A trademark is used in relation to products as is usually indicated with the symbol: R and TM (ie R is an indicator for registered mark and TM is for an unregistered mark). A service mark is used for services and is indicated with the symbol: SM. Thailand’s recognition of trademarks, service marks, certification marks and collective marks is subject to the mark being comprised of either a brand, name, word, letter, photograph, drawing, device, manual, signature, combination of colours, shapes or configuration of an object or any combinations of the above.
We as consumers gain comfort in the fact that the goods and services we are acquiring are genuine and to the quality and standards of a particular brand. In Thailand one is accustomed to seeing an abundance of trademark infringements taking place; counterfeiting a marked item would involve the practice of manufacturing goods, generally of inferior quality, and selling them under a brand name without the approval of the brand owner. For example, if I was to purchase a new phone, I am aware that Apple is a respected manufacturer of phones and as a consumer I can be assured that the quality of phone I purchase will be up to their standards. With trademark infringements, the phone I would like to purchase would look exactly like the Apple product and would also consist of the famous Apple logo; the difference would be a 10,000 baht reduction in price and the materials used in its manufacture would be of inferior quality. In such a case, the fake phone is being “passed off” as a genuine Apple product to give consumers a false sense of security that the product is of the same standards as Apple.
The purchase of counterfeits can have far-reaching consequences for the consumer as well as the company whose mark is being infringed. Depending on the product being sold, for example pharmaceutical goods, there can be detrimental health and safety concerns for the consumer.
For companies, registering marks is one of the first assets of a company to be protected. Not having control over trademarks can result in less control over the company’s brand image. Going back to the phone example, should enough knock-off phones be sold being passed on as real products, it could potentially result in consumers losing confidence in the brand which would inevitably have negative effects on the company’s profits.
The most common way to ensure a mark’s protection in Thailand is to have the said mark registered. In order to register a mark in Thailand, Section 6 of the Trademark Act requires the mark to be (i) distinctive; (ii) not consist of any prohibitory characteristics; and (iii) bear no similarities with other registered marks.
Should the owner of a mark be satisfied that their mark meets the requirements under the Trademark Act, they may make an application to the Department of Intellectual Property with supporting documentation and the payment of an official application fee and a subsequent registration fee. In terms of registration of marks, Thailand has adopted a first-to-file system under Section 20 of the Trademark Act, whereby should several applications for registration of marks that bear similarity to each other be lodged around the same time, the first one to have had filed an application is the one which will get adopted.
Upon submission of the application to the Department of Intellectual Property, the Trademark Registrar will then examine the mark to determine whether the mark is distinctive enough to be registered and whether or not the mark is similar to any other registered marks. This process generally requires that the applicant wait for a period between six to nine months. Upon the Trademark Registrar’s determination, the decision is published in the official Trademark Gazette for a period of 90 days during which any objections in regard to the application can be made by the public. Should no objections be filed during the 90-day period, a certificate of registration will be issued to the applicant.
The process in Thailand lacks the efficiency that is seen in other legal systems and as such obtaining a certificate of registration can take up to two years depending on whether objections or other obstacles have arisen during the registration process. Once registered, a mark is protected for a period of 10 years which can be renewed for an additional 10-year period.
So what rights do holders of registered marks have? The Trademark Act provides the owners of marks certain benefits such as (i) the exclusive right to use the mark; (ii) protection against trademark squatting (occurs when a person who does not rightfully own a trademark, registers the mark prior to the legitimate owner in a particular country); (iii) providing evidence of ownership of the mark; (iv) exclusive right to license the mark; (v) exclusive right to assign the mark to third parties; (vi) the ability to use the ® sign next to their registered trademark; and (vii) the right to seek recourse/stop counterfeiting of trademarks.
The Trademark Act imposes various criminal penalties for acts which forge or imitate registered trademarks, including fines of up to 400,000 baht and a maximum prison sentence of four years. The act, by virtue of sections 110 and 111, also penalises those who engage in commercial dealing of forged or imitated registered marks.
Section 116 of the Trademark Act provides recourse to holders of registered marks by permitting them to seek a permanent injunction to stop any person from committing forgery or imitation of registered marks. Such an injunction would also stop any commercial activities being done in forged or imitated marks.
Owners of registered marks can seek compensatory damages for any harm suffered as a result of the counterfeit of the mark provided that they are able to prove the actual amount of damaged suffered as a direct result of the infringement.
From the above we can see that Thailand’s current legal framework for protecting marks is one which is comprehensive; it contains the necessary fundamentals of trademark law as seen in more developed countries such as providing effective means for conveying what rights are prescribed to owners, registration and enforcement. The weakness of the trademark system in Thailand is that the text of the law is applied differently in practice than it is stated in theory. To address this, the coming years will hopefully see Thailand’s mark system develop further to address the issues of effective implementation and enforcement.
Stay tuned for our next article which will look at patent law in Thailand.
Angus Mitchell (firstname.lastname@example.org)
Kunal Sachdev (email@example.com)
Originally published in the Bangkok Post: