The document discusses trademark registration and enforcement in Thailand and Myanmar, providing an overview of ASEAN and details on the trademark processes in each country. It outlines the trademark registration systems, timelines and requirements, as well as enforcement methods such as police complaints, customs measures, and civil and criminal litigation options in Thailand and Myanmar. The presentation aims to help protect trademarks when expanding business across borders within ASEAN nations.

1. LAWPLUS
Trademark Registration and Enforcement in
Thailand and Myanmar
Kowit Somwaiya
Managing Partner
How to Protect Your Trademark Cross Border?
China Trademark Association
Trademark Festival 2017
Guilin, China, 2 September 2017
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 LawPlus Ltd. be liable for any direct or indirect, incidental or consequential loss or
damage that results from the use of or the reliance upon the information contained in this document. Copyright © 2017 LawPlus Ltd. www.lawplusltd.com

2. LAWPLUS 1
Presentation Topics
• ASEAN
• Geography and Economies
• Trademark Registration and Enforcement
• THAILAND
• Geography and Statistics
• Trademark Registration and Enforcement
• MYANMAR
• Geography and Statistics
• Trademark Registration and Enforcement

3. LAWPLUS 2
Association of Southeast Asian Nations (ASEAN)
source : http://www.matichon.co.th/online /2009/04/12390200461239020254l.jpg
Geography
Area: 4,435,618 sq km
Population: 639 M
Membership
- 10 states
- 2 observers (Papua New
Guinea and East Timor)
GDP (nominal)
2016 estimate
- Total: US$2.555 T

4. LAWPLUS 3
Association of Southeast Asian Nations (ASEAN)

5. LAWPLUS 4
Association of Southeast Asian Nations (ASEAN)

6. LAWPLUS 5
ASEAN Trademark Registration
• Generally adopt the ‘first-to-file’ system.
• Registration gives better protection.
• Territorial registration.
• No international or regional trademark registration system.
• Harmonization under the Madrid Protocol
• The Madrid Protocol will come into force for Thailand on 7th November 2017.
• Indonesia, Malaysia and Myanmar are the only 3 ASEAN countries yet to join the
Madrid system.
• Commercial use of a trademark is not required before it can be applied for or
registered.
• Applications for registration should be filed with existing use or intention to use in
commerce.

7. LAWPLUS 6
ASEAN Trademark Registration and Enforcement
Country
Time (months) to
Complete
Registration
Protection Term
(Years)
Documents for
Registration
Madrid
System
Brunei 15-18 10 Notarized POA Yes
Cambodia 6 10 Notarized POA Yes
Indonesia 24 10 Signed POA No
Laos 6-9 10 Notarized POA Yes
Malaysia 12-24 10 Signed Declaration No
Myanmar 1-2 No expiration Legalized POA
Notarized DTO
No
Philippines 6-18 10 Notarized POA Yes
Singapore 7-9 10 Signed
Authorization
Yes
Thailand 12-18 10 Notarized POA Yes
Vietnam 12-15 10 Signed POA Yes
Sources: The South-East Asia IPR SME Helpdesk, Intellectual Property Rights in South-East Asia: FAQ to the Helpdesk, May 2016;
LawPlus Ltd.; August 2017

8. LAWPLUS 7
ASEAN Trademark Enforcement
• In most countries, police or administrative raids are the most practical measure
against trademark infringement.
• Customs measures against counterfeits at port-or in transit are possible in most
countries.
• Some countries have police or enforcement offices specialized in IP enforcement.
• Panels of judges or courts specialized in IP cases are available in some countries.
• Criminal lawsuit is more practical than civil lawsuit.
• Punitive damages are rarely awarded.

9. LAWPLUS 8
Thailand – Geography and Statistics
•source: http://www.operationworld.org/thai
Area: 513,115 sq km
Capital: Bangkok
Population: 67,959,000
GDP (Nominal) 2017 estimate
- Total: US$432.898 billion
- Per capita: US$6,265
source: http://www.operationworld.org/thai

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Thailand – Trademark Registration
• Established registration system (first law on Trade Marks and Trade Names B.E.
2457 (A.D. 1914)).
• Both multiple-class application and single-class application are allowed.
• Sound mark registration is allowed from 28th July 2017.
• Pending changes
- Accession to the Madrid Protocol coming into force on 7th November 2017.
- Elimination of too strict requirements for specification of goods/services.
• Suggestions and strategies:
- File at least 18 months before use.
- Before filing, obtain advice on distinctiveness, registrability and
specifications of goods/services.
- Before filing, conduct a trademark search and obtain advice on availability.
- Keep evidence of use.

11. LAWPLUS 10
Thailand – Trademark Enforcement
• Four main routes for trademark enforcement:
(1) Police complaint.
(2) Customs measure.
(3) Criminal action in court by owner.
(4) Civil action in court by owner.
• The Intellectual Property and International Trade Court was established in 1996.
• Specialized Appeals Court was established in 2017.
• Court take-down order against online trademark infringement is available starting
May 2017.

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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.
Thailand – Trademark Enforcement

13. LAWPLUS 12
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.
Thailand – Trademark Enforcement

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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.
Thailand – Trademark Enforcement

15. LAWPLUS 14
Myanmar – Geography and Statistics
source: http://www.operationworld.org/myanmar
Area: 676,577 sq km
Capital: Naypyidaw
Population: 50,495,672
GDP (nominal) 2017 estimate
- Total: US$62.368 billion
- Per capita: US$1,374

16. LAWPLUS 15
Myanmar – Trademark Registration
• No trademark law.
• Current trademark registration by registration of a Declaration of
Trademark Ownership with Registry Office and publication of a
Cautionary Notice in a newspapers.
• Draft TML published for public consultation in August 2017.
• Trademark search possible but results not accurate.
• Suggestions and Strategies:
– Register before use
– Register now. Do not wait for TML.
– Publish first cautionary notice once trademark is registered.

17. LAWPLUS 16
Myanmar – Trademark Enforcement
• Criminal and civil actions are possible but slow.
• Criminal actions are more practical.
• Customs regulations are in place but implementation is rare.
• Suggestions and Strategies:
- Publish a cautionary notice every 3 years
- Closely monitor the market
- Take a swift and decisive action against infringement
- Cease-and-desist letter to infringer
- Public warning notice in newspapers.

18. LAWPLUS
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kowit.somwaiya@lawplusltd.com