Design laws vary by country. Some countries classify designs as patents and some have separate “registered design” or “industrial design” systems. In some countries, designs of products must be whole products in order to be registrable and not parts of products. Some countries allow protection of only part or parts of the product but the […]
Publications
Thailand – When trade marks must be associated
Having a single-class system, a trade mark owner seeking registration in Thailand for the same mark in different classes will be required by the Trade Marks Registrar to “associate” its marks. Section 14 of the Thai Trade Marks Act states that the Registrar may order an applicant of similar or identical marks, relating to goods […]
Cancelling Bad Faith Registrations in Thailand
Ever so often, a trademark owner finds itself unpleasantly surprised when it discovers that its mark has been registered by unauthorized parties. Under Section 67 of the Trade Marks Act, a trademark owner may petition the Central Intellectual Property and International Trade Court (CIPITC) to have the unauthorized registration cancelled within five years from the […]
Thailand – Precedent On Descriptiveness And Suggestiveness
The issue of determining whether a mark is descriptive or merely suggestive of the goods sought to be protected has always been a debated area in Thailand. Though not many precedents are available, it was recently addressed by the Supreme Court in Liebherr-International v Department of Intellectual Property. The case before the Supreme Court required […]
Thailand – Distribution and Trade Mark Licensing Distinguished
The recordal of a license is mandatory under the Thai Trade Marks Act. However, in practice, parties are not aware of this requirement and so do not register the license. Such non-compliance is aggravated by the fact that the Act does not define the term “trade mark licence.” To compound the problem, not much jurisprudence […]
Thailand – Smell and Sound Marks to be Introduced
Thailand has several amendments in the pipeline for the Trade Marks Act. Amongst them is the introduction of smell and sound marks. The bill extends the meaning of a “mark” to include non-visual trade marks such as sounds and smells, which will bring Thai trade mark law in line with international standards. To be registered, […]
Thailand – Overcoming Trade Mark Refusals
Office Actions are issued by the Thai Department of Intellectual Property (DIP) on grounds of non-distinctiveness or identical/similar character to a well-known and/or registered mark. However, the procedure for evaluating the response is different from other jurisdictions, making Thailand a difficult territory for IP protection. For a non-distinctiveness objection, the trade mark owner will be […]
Thailand – Rights Of An Unregistered Trade Mark Owner
Thailand follows the first-to-file rule. To obtain protection of a mark in Thailand, a registration must be obtained from the Department of Intellectual Property (DIP) initiated by filing an application with the Trademark Office. Nevertheless, the “owner” of an unregistered mark or senior user is not without recourse. It cannot sue before the Thai courts […]
Thailand – Court Cases Cast Doubt On Well-Known Status
Despite guidelines from the Thai Courts on determining the identicalness and confusing similarity between trade marks seeking registration and prior marks: one statutory provision remains unclear. The Thai Trademarks Act’s prohibition of marks identical or confusingly similar to well-known marks, Section 8, read with Section 8 (10) provides that: “A mark registered or not, which […]
Thailand – Can You Register A Functional Design?
Registration of designs in Thailand is governed by the Department of Intellectual Property and the Thai Patent Act. There are lacunas in the Act design patents, especially where it proves difficult to draw the line between invention patents and design patents. Section 3 of the Act merely provides that a design is ‘…any configuration of […]