The 2016 Amendment to Thailand’s Trademark Act – Its Changes, Significance, and Consequences

The widely forecasted amendment to Thailand’s Trademark Act of B.E. 2534 (1991 A.D) will, if the forecasters are correct, be passed in 2016. Experts believe that the National Legislative Assembly (NLA) will put the 2016 amendment (Amendment) into force within the calendar year. Significant structural policy changes will include Thailand’s ratification of the Madrid Protocol and acceptance of sound marks for registration. Several other changes to be introduced via the Amendment will affect the mechanics of trademark registration and prosecution, and, thus, intellectual property (IP) strategy. Anticipated changes to the registration and prosecution process are discussed below.

1. Multiple Class Applications Allowed

Currently, Thailand does not accept multiple-class filings in a single application, and multiple applications of single-class filings are used instead. The Amendment will change the current process rules to allow for multiple-class filings in a single application. Single class filing applications will still be accepted.

Multiple class filings present both advantages and disadvantages. The main advantage is ease of preparation and filing – a single application can be used to file for protection in multiple classes, resulting in less paperwork, fees, and a more streamlined process. The most prominent disadvantage is the possibility that complications related to one of the multiple classes applied for could affect the approval process for the entire application. This is because an application containing multiple class filings would be treated as a single whole, with each of the classes being only component parts. In a worst-case scenario, an objection or other delay in one class could causes the entire application to lapse altogether.

Because of the obvious benefit to filing multiple-class applications and its possible complications, devising a well-assessed strategy for selecting the type of application to use. Certain trademarks may benefit from the likely shorter process of single-class filings if the key objective is priority dating or timeliness of registration, or if the business’s plans do not include future IP portfolio expansion. Other trademarks with the potential for growth into other business opportunities, expansion to other industries, or portfolio-building goals would benefit from the wider net cast with multiple-class filings. A mix of interests, such as timeliness and portfolio-building, may yet prompt IP owners to submit one multiple-class application for the portfolio-building interest, and a single-class application to satisfy the timeliness interest. Experienced IP professionals can advise IP stakeholders on the best filing strategy for their interests.

2. Associated Marks Not Required

Under the current single-class filing system, the Department of Intellectual Property (DIP) may sometimes require an IP owner to “associate” similar marks filed across different classes. The provision in Section 14 of the Trademark Acts allows the Trademark Registrar to order an applicant of similar or identical marks that relate to goods in the same class or in related classes to associate such marks. The intent of such a requirement is to avoid public misunderstanding that marks belong to different IP owners if marks judged by the Registrar to be sufficiently similar or related, in fact, belong to the same IP owner. For IP owners, the main disadvantage to this requirement is that associated marks cannot be assigned or transferred separately, and instead must be assigned or transferred as a group of registered “associated” marks. Orders to “associate” marks also incur additional fees.

The Amendment is expected to nullify the associated mark requirement altogether. The provision will automatically, retroactively disassociate current registered associated marks. After the Amendment comes into effect, owners of associated marks will be able to assign and transfer each mark singly.

3. From 90 and 30 Days to 60 Days

The Amendment will adjust two important timeframes, by decreasing one and increasing the other, so that important dates are more likely to correspond. The increase and decrease in timeframes are as follows.

Currently, the timeframe for filing Amended Lists of Goods/Services, Disclaimers, Appeals, Notices of Opposition, or responses to Office Action notices is 90 days after the date of pertinent preceding action – the application date, judgment date, publication date, or receipt of notice date. The Amendment will reduce the timeframe for all such actions and responses from 90 days to 60 days. This means that applicants will have 60 days after the date of filing an application to file Amended Lists and Disclaimers. Applicants would likewise have 60 days to file an Appeal to a DIP decision or respond to an Office Action. The timeframe for filing Notices of Opposition to pending trademark applications would change to 60 days after publication of the applied-for mark in the Trademark  Gazette.

Fortunately, the decreased timeframe for submission of documents will be accompanied by the Amendment’s increase to the timeframe for submitting fees. Currently, registration fees are due within 30 days of receipt of the payment of fee notifications. The Amendment replaces this 30 days’ timeframe with a 60 days’ timeframe.

4. Official Fees Increased

When the Amendment comes into effect, the rates for most of government and official fees payable to the DIP, in relation to trademark applications and registrations, will change. The basis on which rates are charged will change from pro-rata, per-item fees to a simplified sliding scale, depending on the number of items to be processed. The fees will be doubled for filings of single products or items in one class. However, filings for more than one product or service in a class would incur a lower average fee per product/service.

Although the new fees to be affected by the Amendment do increase the rates for single filings, the new rates will also reflect a “bulk discount” by which filings for more products/services in a class will actually cost less, per product/service, the more products/services are included with the class. The table below shows how, with the new rates, the average cost per product/service is lower if the application includes five products/services instead of one. Please compare columns (A), (B), and (C).

Although the new rates, when averaged per product/service can be markedly lower when five products/services are applied for, the savings are lost when an application includes more than five products/services because the rate for six or more products (column D) is significantly higher. As shown in column (E), the average per-item rate for 10 products/services, which is subject to the rate listed (D) is significantly higher than the five-item rate average shown in column (C).

The six or more item rate in column (D) becomes as low as that of column (C) only when the filing is for 45 or more products/services in a class

The Amendment will also increase the fees for other procedural actions and filings as listed below.

5. Grace Period for Renewals

Currently, registered trademarks must be renewed within 90 days prior to the expiration date. Failure to renew the registration within the prescribed period causes the trademark to lapse.

The Amendment will not change the current rule described above, but instead adds a grace period for renewals. After the Amendment comes into effect, the Trademark Office will allow for late renewals of registration, for up to six months from the trademark’s expiry date, for a surcharge of 20 percent of the official fees due.

As illustrated above, the Amendment’s changes to trademark prosecution and registration in Thailand includes both advantageous and disadvantageous provisions. We encourage IP owners to timely plan their trademark strategies in light of the pending changes by speaking with trusted, experienced IP professionals.

* Amendment Rates as provided herein are anticipated, but unconfirmed rates, gathered from the most recent data available.

Disclaimer: Every effort has been made to ensure that the information contained herein is as accurate as possible. However, the authors and Ananda Intellectual Property shall not be held responsible for any actions or inactions of any party taken or not taken in relation to the contents herein. The information contained herein does not, and shall not be deemed to, constitute legal advice.

By Franck FOUGERE, Orbis partner