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REGISTRATION AND ENFORCEMENT OF
INTELLECTUAL PROPERTY IN THAILAND
Kowit Somwaiya
LawPlus Ltd.
WEN Intellectual Property and Technology Transfer
International Forum
16 October 2018
Hefei, China
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Kowit Somwaiya
Founder and Managing Partner, LawPlus Ltd.
Founder and Managing Partner, LawPlus Myanmar Ltd.
Vice President, IPAT
Board Member, INTA
• B.A. (Education – English), Ubon Ratchathani Rajbhat University, Thailand
• LL.B., Thammasat University, Thailand
• LL.M., University of Illinois, USA
• Certificate of Instruction for Lawyers, Harvard Law School, USA
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Prasantaya Bantadtan
Partner, LawPlus Ltd.
Managing Partner, LawPlus Myanmar Ltd.
• LL.B., Thammasat University, Thailand
• LL.M., University of Warwick, UK
• LL.M., University of Exeter, UK
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www.lawplusltd.com
Established in 2003
Professional, Practical, Prompt, Pro-active
Major practices
● Banking and finance
● Corporate and M&A
● FDI and investment promotion
● IP and ICT
● Dispute resolution and litigation
Rankings:
6. 5
Thailand – Geography and Statistics
Registration of Intellectual Property in Thailand
Enforcement of Intellectual Property in Thailand
Tips for IP Protection in Thailand
Presentation Topics
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Thailand – Geography and Statistics
•source: http://www.operationworld.org/thai
Area: 513,115 sq km
Capital: Bangkok
Population: 69M
GDP (Nominal) 2018 estimate
- Total: US$514.700 billion
- Per capita: US$7,588
source: http://www.operationworld.org/thai
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Intellectual Property Registration
TRADEMARKS:
● Registration of trademark is not required for protection but recommended.
● First-to-file system.
● Unregistered trademark is not protected against infringement, but passing-
off.
PATENTS AND PRODUCT DESIGNS:
● Registration of invention and product design is required for protection.
● Novelty is required for registration.
COPYRIGHTS:
● No registration is required for protection.
● Copyright work is protected upon creation.
● Deposit of copyright is beneficial and recommended.
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Trademark Registration - Thailand
Trademark Act B.E. 2534 (A.D. 1991) as amended.
Trademark must
● be distinctive
● not be identical or confusingly similar to prior registered mark of other person
● not contain prohibited element or be prohibited by law.
Prior use in commerce before filing an application is not required.
Sound marks and three dimensional marks are allowed registration.
Both multiple-class application and single-class application are allowed.
It takes around 18-24 months for a smooth application to reach registration.
Registration is valid for 10 years, renewable for a period of 10 years each.
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Madrid Protocol – International Trademark System
Thailand is a member state of the Madrid Protocol, effective from 7th November 2017.
The Madrid System is administered by the International Bureau of the World Intellectual Property
Organization (“WIPO”) in Geneva, Switzerland.
Registration through the Madrid System does not create an 'international' registration; rather, it
creates a bundle of national rights capable of being administered centrally, facilitating the registration
of trademarks in multiple jurisdictions around the world.
The Madrid System does not prevent local trademark registration.
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Registration of Patents and Product Designs
Patent Type Basic Requirements Protection Period
Invention Patent Invention or process which
has novelty, inventive step
and industrial application
20 years (non-renewable)
Petty Patent Invention or process which
has novelty and industrial
application but does not have
inventive step
6 years plus two allowable
extensions of 2 years each
(10 years in total)
Design Patent Ornamental aspects or
aesthetics of products
(shape, configuration,
pattern, etc.)
10 years (non-renewable)
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Registration of Patents and Product Designs
Requirements Invention Patent Petty Patent Design Patent
Novelty
Capability of
industrial
application
Inventive
step/ Non-
obviousness
Application
Types
- Local
- PCT National
Phase
Local Local
X X
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•PATENT
Following inventions are not eligible for patent protection in Thailand:
● Microorganisms which would be found in nature or any substances extracted
from animals or plants;
● Scientific or mathematical rules and theories;
● Computer programs (which are protected under copyright);
● Processes of diagnosis, treatment, or remedy used in curing human or
animal diseases;
● Inventions which are contrary to public order or morality, public health, or
welfare.
Registration of Patents: Exclusions
PATENT
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Copyright Protection: Eligibility
Expression of idea NOT idea itself
Originality (≠ Novelty)
Works of authorship
Applied arts
Performer’s rights
Exclusions
● news
● unexpressed ideas
● discoveries, scientific or mathematical theories
● etc.
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Copyright Protection Term
Works of authorship: the lifetime of author plus 50 years from his death, or 50
years from the publication date if the author is a legal entity or anonymous
person
Works of applied art (such as drawings, paintings, sculpture, prints,
architecture, photography, drafts, and models for utility or functional use): 25
years from the date of publication
After expiration of copyright term, work falls into public domain.
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Warning notice
Cease and desist letter
Negotiation
Cancellation action
Lawsuit against infringers (file for injunction order or/and compensation)
● Criminal Prosecution
● Civil Enforcement
Border Measures
Preventive Measures
● E.g. build awareness, monitor the market, cooperate with national anti-
counterfeiting agencies, make use of technology to help to identify fake
products
Intellectual Property Enforcement - Thailand
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Intellectual Property Enforcement - Thailand
Intellectual Property and International Trade Court (IPIT Court), established in 1996
Specialized Appeals Court, established in 2016
Criminal actions work better than civil actions
Police and customs enforcements prior to criminal actions
No administrative action available
Suggestions and Strategies:
● Compile evidence of use
● Take a swift and decisive action against infringement
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Police Complaint
Police asks for a court
search and/or arrest
warrant.
Police searches or raids
premises of infringer, seizes
counterfeits and arrests
infringer.
Police interrogates
infringer and sends case to
public prosecutor.
Trademark owner joins
case as co-plaintiff
(optional).
Public prosecutor files a
criminal case against
infringer.
Trademark agent files a
police complaint.
Intellectual Property Enforcement - Thailand
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Customs Measure
DIP records trademark
details for CD to access
online.
CD records details of
trademark in CD database
accessible to CD offices
throughout Thailand.
Customs officers watch
and seize suspected
counterfeits and contact
appointed agent of
trademark owner.
CD confiscates
counterfeits and sends
case to public prosecutor
or settles the case and
destroy counterfeits.
Agent files action
request with CD within
24 hours.
Public prosecutor files
criminal case against
infringer.
Trademark owner files
request with DIP to record
trademark for customs
measure protection.
Trademark Enforcement - Thailand
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Action against Online Infringement
Dissemination of computer data which is a criminal offense against trademark.
Officer obtains approval from the Minister of Digital Economy and Society and files a
motion with court for a take-down order.
Court issues a take-down order for ISP to take-down trademark infringement computer
data from the computer system.
IP owner notifies an
officer of the MDES
Ministry.
The officer asks for
approval from the
Minister.
Minister approves.
The officer files a
motion to the court.
The court grants an
order
The officer orders
the services
provider to remove
or delete the
infringing data.
Trademark Enforcement - Thailand
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TIPS for Your IP in Thailand 1
Register your trademarks and patents early.
● A smooth trademark application takes around 18-24 months to reach
registration.
● An invention patent application takes around 5-8 years to reach registration.
● Thailand uses a ‘first-to-file’ system (the first person to register an IP right
(trade mark, patent, etc.), rather than use it, owns it).
Record your copyright.
● Copyright protection is automatically conferred to the author.
● Voluntary deposit of copyright is recommended.
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Apply for a distinctive trademark to increase chances of registration.
Avoid filing a descriptive or suggestive mark as it is normally rejected.
Clearly identify all goods and services to be associated with your trademark to
prevent the delay in registration process.
Sign a confidentiality agreement for a patent in case disclosure is necessary
before you file a patent application for it.
Register your trademark and patent license.
Compile evidence of use and advertising materials.
Use trademark watching service.
Take a swift and decisive action against infringement.
TIPS for Your IP in Thailand 2
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Use local investigators to investigate intensively before taking legal action.
Do market surveys regularly.
Be “on the ground” to enforce and litigate.
Use border control measures.
Record trademarks and copyrights with Customs Department.
Target major infringers.
Monitor repeat offenders.
TIPS for Your IP in Thailand 3
