Amendment to the Trademark Act

For a number of years, the Intellectual Property Department at the Commerce Ministry has been talking about accession to the Madrid Protocol, which allows for the protection of trademarks in member countries through a central filing system for International Registration of trademarks. These aspirations are soon to become a reality. The Bill for Amendment to the Trademark Act, ("the Bill"), which includes specific provisions on accession to the Madrid Protocol, passed its third reading by the National Legislative Assembly (NLA) and has been presented to His Majesty the King for endorsement and subsequent announcement in the Royal Gazette -- coming into force 90 days after the official announcement date.

It will also be necessary for the Foreign Affairs Ministry to formally submit papers of accession and have the application approved, and for the Intellectual Property Department to complete the relevant Ministerial Regulations, which it is now in the process of drafting.

In addition to accession to the Madrid Protocol, the Bill contains other interesting features:

Definition of "mark" and Distinctiveness:

In addition to the definition of "mark" under the current Act (the Trademark Act of 1991 as amended by the Trademark Act of 2000), the Bill extends the definition by introducing "Sound Mark". "Smell Mark", which was in a previous draft, was removed because distinctiveness was considered difficult to determine.

Characteristics essential to distinctiveness of Sound Marks have also been included in the Bill.

Submission of the evidence to prove distinctiveness:

Under the current Act, it is possible to submit evidence to prove that a mark is distinctive through use only of certain types of marks, such as personal names, surnames and names of juristic persons, among others. The Bill expands this to cover all types of marks, including combinations of colours, non-stylised letters, non-stylised numerals, etc.

Multiple Class Application:

For the first time, the Bill introduces multiple class applications. This is necessary to bring Thailand into conformity with the International Registration system under the Madrid Protocol.

Process of registration (Time frame):

The period for responding to the registrar's notices/demands has been shortened from 90 to 60 days from the date of receiving them. Also, a notice of opposition against published trademarks of others is required to be filed within 60 days (reduced from 90 days) from the date of publication.

Associated marks:

Under the current trademark regime, marks of the same owner covering goods of the same class or different classes but of the same character, and which are similar to one another, are required to be registered as associated marks. Meaning that associated marks cannot be separately assigned to others.

The Bill does away with this requirement and allows for the separate assignment of similar trademarks of the same owner, even if they are for related goods.

Protection of packaging and wrapping:

The Bill prohibits the representation of forged or imitated trademarks on the covering or packaging of goods with the intention of causing the public to believe that they are goods of another person.

In addition, it prohibits any person from using packaging that displays another person's trademark for their own goods or a third party's goods to make the public believe that they are the goods of the registered trademark's owner. This technically bars the refilling of packaging with other products.

International Registration under Madrid Protocol:

7.1 Registration date

Once a trademark is successfully registered under the Madrid Protocol system, the date on which the application was filed with the office of origin is the registration date.

7.2 Central Attack System

Within the period prescribed by the upcoming Ministerial Regulations from the date of registration of an application filed under the Madrid Protocol system, any whole or partial withdrawal, abandonment, refusal or cancellation of the basic application or basic registration, which is first filed or registered in the country of origin, and is used as a base for such Madrid Protocol application, will lead to the withdrawal, abandonment, refusal or cancellation of the registration of the Madrid Protocol application to the same extent.

7.3 Conversion of application under the Madrid Protocol system to Conventional Application system

Within the period prescribed by the upcoming Ministerial Regulations for revocation of a trademark application filed under the Madrid Protocol, the applicant may convert the application to a national application. The filing date under the Madrid Protocol system will be deemed as the filing date of the national application.

The new trademark law seems to support applicants more than the current one. For example, the shortening of the time frame (from 90 to 60 days), multiple class applications, removing of association requirements and International Registration under the Madrid Protocol will be effective soon. Moreover, the addition of protection of packaging and wrapping will help protect consumers as well.

The enactment of the Bill and accession to the Madrid Protocol should benefit Thai businesses, especially those involved in exporting their own branded goods not only within Asean but globally. The Madrid Protocol will make it much easier for them to file for protection of their marks, as rather than filing separate applications through many agents around the world, they will be able to file single applications with the Thai Trademark Office and designate the Madrid Protocol member countries in which they also wish to protect their marks.