Amendment to the Trademark Act

Under the AEC timeframe, members must accede to the Madrid Protocol by 2015. As a result, the Department of Intellectual Property has started drafting an amendment to the Trademark Act, which will become effective on 28 July 2016.

Keywords: Mazars, Thailand, Legal, AEC, Department of Intellectual Property, Trademark Act, Madrid Protocol

03 June 2016

The key amendments relate to the following:

1.      Definition of a mark

The amendment has added the definition of a mark to include a “sound trademark” that can be registered in Thailand. The ability to register a sound trademark will depend on whether the sound is capable of indentifying goods or services, thus distinguishing it from others. Common music (such as the “Happy Birthday” melody) cannot be registered.

2.      Applications for multiple classes allowed

Currently, Thailand does not accept applications for multiple-class trademarks. However, the amendment allows one application for several classes of products and/or services. It will be possible to file a single-class or multiple-class application.

3.      Timeframe for registration

The timeframe for registering a disclaimer, appeal, notice, or response to the Department of Intellectual Property is currently 90 days. The amendment reduces the timeframe from 90 days to 60 days. This includes filing notice of an objection to a published trademark.

4.      Grace period for renewal

Currently, a trademark must be renewed within the 90-day period prior to the expiration date. The amendment does not change the period, but also allows for late renewal. The application for renewal can be submitted up to six months after the expiration date of the trademark. However, in addition to the renewal fee, an applicant filing late must also pay a surcharge of 20 per cent of the renewal fee.

5.      Increase in fees

The official fees for filing applications, objections, appeals, and renewals will be increased.

6.      Licence agreements to remain valid

A licence agreement will not be invalidated as a result of the transfer or inheritance of a licensed trademark.

7.      Registration under the Madrid Protocol

Once a trademark is successfully registered under the Madrid Protocol, the date on which the application is filed with the respective office in the country of origin will be the date that the trademark becomes valid. This will make it possible for a single registration to cover a wide range of countries, and to maintain trademark rights in more than one jurisdiction, provided that the jurisdiction is a party to the Madrid Protocol.

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