TRADEMARK LAW OF HONG KONG

Thailand has a standard system of trademark registration. It is currently implementing the Trademark Act BE 2534 (AD 1991) as amended by the Trademark Act (No 2) BE 2543 (AD 2000), which became effective on June 30 2000. The amendment broadened the types of mark that can be registered, in addition to extending priority rights to nationals of all contracting states to treaties to which Thailand is also a signatory.

 

UNREGISTERED TRADEMARK 

Although trademarks in Thailand may be used without registration, the proprietor of an unregistered mark will face greater difficulty in seeking to enforce its rights in the face of infringement.

 

The most effective remedies against trademark infringers are found in the Trademark Act, but are specifically reserved for registered mark proprietors.

 

Nevertheless, Section 46 of the act does recognize that the proprietor of an unregistered mark may take a civil action for passing off under the Civil and Commercial Code. Section 420 of the code sets out a tort-like provision that is worded sufficiently broadly to
enable an unregistered mark proprietor to construct a civil case.

 

However, for such a civil case to succeed, the unregistered mark owner will have to establish either its reputation or some other property right that it claims has been harmed by the infringer’s actions.

 

 

REGISTRABLE MARKS

In theory, photographs, drawings,invented pictures, brands, names, words, text,letters, numerals, signatures, groups of colours orthree-dimensional objects, or any combinationsof these items, may be registered, provided that the mark:

• is distinctive;

• is not forbidden under the Trademark Act; and

• is not identical or similar to trademarks thathave already been registered by other persons.

 

Adistinctive trademark is one that distinguishesthe goods in relation to which it is used fromother goods in the eye of the general public orconsumers.

 

‘Distinctiveness’, under the TrademarkAct, means that the mark possesses or consists ofat least one of the following essential particulars:

• a person’s name, such as a first name orsurname that is not ordinarily understood, the full name of a legal person under relatedlaws or a trade name represented in aspecial or particular manner and having nodirect reference to the character or qualityof the goods;

• a word or clause that has no direct referenceto the character or quality of the goodsand that is not a geographical name asrecognized by the minister of commerce;

• a group of colours represented in a special orparticular manner, or an invented letter,numeral or word;

• the signature of the applicant for registrationor that of some predecessor in his business,or of another with his permission;

• the photograph of the applicant or thatof another with his permission, or withthe consent of his ascendants, descendantsand spouse in the case of a deceasedperson; and

• an invented picture.

 

TERM OF PROTECTION

The initial registration is effective for 10 years from the filing date of the application for registration.

 

Each renewal is effective for 10 years from the expiration of the last registration. Application for renewal can be made in the 90 days before the registration expires.

 

PROCEDURE OF REGISTRATION

To register a trademark in Thailand, an applicant must lodge a written application with the DIP. The Register of Marks is open to
public inspection. The application must be completed on an official form in the Thai language, with specimens of the mark  attached.

All documents and marks that are not in Thai must be translated.

 

The registrar reviews the application for compliance with the laws and rules, and searches the Register of Marks and pending applications for identical and similar trademarks related to the same goods. It is generally advisable for applicants to conduct a search of the trademark register in advance of any applications.

 

When considering an application the registrar may request the applicant to give verbal statements, or to invite any person to give facts, explanations, advice or opinions or to send any documentary evidence connected with the application. If the applicant fails to comply with such an order without an appropriate reason, the application will be deemed abandoned. The registrar may accept the application, with or without conditions, or object to it. If, on examination, the registrar refuses to accept an application, he must submit his reason in writing. The applicant can file an appeal to the Board of Trademarks within 90 days of receipt of the registrar’s notice of refusal; the appeal application must state that the decision was “unlawful”.

 

When the registrar is of the opinion that a trademark deserves to be accepted for registration, he will order the advertisement of the application in the Trademark Journal.