All you need to know to protect your IP rights in Thailand.

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Intellectual Property for SMEs and Startups
Kowit Somwaiya
Managing Partner
14th
March 2017
Rembrandt Hotel, Bangkok
www.lawplusltd.com

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Intellectual Property: A Tool for Development
• In today’s knowledge-driven world, proper use and protection of intellectual
property (IP) assets is the key to success for businesses, both large and small.
• Business owners rely on ideas, know-how, and innovations to create and
improve products and services that distinguish them from their competitors.
• IPRs not only help businesses to prevent imitators from copying their
innovations or brand names but also help them to gain revenue through licensin
g, franchising, and other IP transactions.

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Intellectual Property and Thailand 4.0
Efficiency-
Driven
Economy
Efficiency-
Driven
Economy
Innovation-
Driven
Economy
Innovation-
Driven
Economy

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TRADEMARK

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Trademark Registration: Registrability
• To be registrable, a trademark must
– be distinctive;
– not be prohibited under Trademark Act of Thailand (e.g.
national flags, royal names and mark confusingly similar to well
-known mark); and
– not be the same as or similar to a trademark registered by
another person.

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• Inherent distinctiveness
– invented word, e.g.
– signature of applicant, e.g.
– stylized letters or numerals, e.g.
– word(s) which is non-descriptive of character or quality of the goods or
services, e.g.
– invented device, e.g.
– etc.
Trademark Registration: Distinctiveness 1

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Trademark Registration: Distinctiveness 2
• Acquired distinctiveness
– A non-distinctive trademark is registrable if it has acquired distinctiveness by
use, e.g.

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Trademark Registration: Not Prohibited by
Law
• These are some examples of the marks that are prohibited by law.

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Trademark Registration: Process
Filing of trademark
application and
required documents
Objection
(Response to
be filed within
60 days)
Acceptance for
Publication Examination by
Trademark Registrar
10 to 12 months
Publication of application in Trademark Gazette
(Opposition period 60 days)
Transmission of certificate of registration

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Trademark Registration: Term of Protection
• Term of Protection
– Registration is effective for ten years from filing date (which is
considered to be registration date).
• Renewal
– A trademark registration is allowed renewal within three months prior
to its expiry date and during a grace period of six months from its exp
iry date. A surcharge of 20 percent of the official renewal fees will be
payable for renewal during the grace period.

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Trademark Registration Remarks
• Established Registration System
– It takes around 18-24 months for an application to reach registration.
• Pending Changes
– Accession to the Madrid Protocol (expected by the end of 2017)
– More trademark examiners in 2016-2018
• Suggestions and Strategies
– File at least one year before use
– Register trademark license

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Utilization of Trademark: Do’s and Don’ts
• Do’s
– DO use your trademark directly on the subject goods, or on the container or
packaging in which the goods are sold.
– DO (at least) use your trademark with goods as registered
– DO use all capitals, italics, different fonts or colors, or at least initial caps to
distinguish a trademark from other text in advertising material.
– DO compile and keep full evidence of use and advertising materials
– DO trademark watching

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Utilization of Trademark: Do’s and Don’ts
• Don’ts
– DO NOT use a trademark as a noun. Always use a trademark as an adjective
followed by a noun. For example, KLEENEX tissue.
– DO NOT use a trademark in a possessive form, unless the trademark itself is
possessive. For example, JOHNSON'S baby oil.
– DO NOT pluralize a trademark. Instead, the common noun should be
pluralized. For example, two SCHWINN bicycles rather than two SCHWINNS
.
– DO NOT use trademarks as verbs. Xerox, for example, runs ads pointing out
that even Xerox can't xerox, it can only photocopy.

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Utilization of Trademark: Trademark Licensing
Agreement
• The owner of the trademark allows the licensee to use that mark in
exchange for certain fees and/or royalties.
• No ownership rights are transferred in this exchange.
• Trademark license agreements shall be in writing and registered with
the Trademark Registrar.
• Agreement must show at least:-
– conditions or terms between the trademark owner and licensee to insure effective
control by the registered owner of the trademark over the quality of the goods of the lic
ensee;
– the goods for which the trademark is to be used.
• Exclusive/ Non-Exclusive

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Utilization of Trademark: Trademark Licensing and Franchising
Source: www.thaifranchisecenter.com
Source: www.japantimes.co.jp
Source: www.b-quik.com
Source: www.arcadia-engineering.com
Source: www.panphol.com

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Utilization of Trademark: Debt Collateral
• Using IP as business collateral is allowed under the Business Collateral Act B.E. 2558
(A.D. 2015) (“BCA”), effective on and from 2nd
July 2016.
• A collateral provider
– an individual
– a juristic person
• A collateral receiver
– a financial institution
– a person prescribed in a ministerial regulation
• e.g. trustees, securities companies, mutual funds, or factoring businesses
• No requirement to deliver a collateral property
• A collateral agreement must be made in writing as a contract and registered online with the
Business Collateral Registration Office (“BCRO”), Department of Business Development, t
he Ministry of Commerce.

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Trademark Enforcement
• 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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Trademark Enforcement: How to stop infringement?
• Warning notice
• Cease and desist letter
• Negotiation
• Cancellation action Lawsuit against infringers (file for injunction order or/and
compensation)
− Criminal Prosecution
− Civil Enforcement
• Border (Customs) Measures
• Preventive Measures
− E.g. build awareness, cooperate with national anti-counterfeiting agencies, make use
of technology to help to identify fake products

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PATENT

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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
Requiremen
ts
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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COPYRIGHT

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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 us
e): 25 years from the date of publication
• After expiration of copyright term, work falls into public domain.

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Q&A

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Unit 1401, 14th
Floor
990 Abdulrahim Place
Rama IV Road, Bangkok 10500
Tel. +66 (0)2 636 0662
Fax+66 (0)2 636 0663
Room 517, Yangon International Hotel
No. 330 Corner of Ahlone and Pyay Roads
Dagon Township, Yangon, Myanmar
Tel. +95 9 505 6667
Tel. +95 92 6111 7006
Kowit Somwaiya
Managing Partner
kowit.somwaiya@lawplusltd.com
www.lawplusltd.com

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The information provided in this Document is general in nature and may not
apply to any specific situation. Specific advice should be sought before taking
any action based on the information provided. Under no circumstances shall L
awPlus Ltd. and LawPlus Myanmar Ltd. be liable for any direct or indirect, incid
ental or consequential loss or damage that results from the use of or the relianc
e upon the information contained in this Document. Copyright © 2017 LawPlus
Ltd. and LawPlus Myanmar Ltd. www.lawplusltd.com
Contact: Kowit Somwaiya, Email: kowit.somwaiya@lawplusltd.com
Disclaimer