Hong Kong Trademark Registration
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.
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.
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.