Navigating intellectual property laws and regulations in Thailand can seem like a maze. This user-friendly guide demystifies the complex legal framework to help companies safeguard their creations effectively.
Our IP team in Thailand has authored this overview of patents, utility models (petty patents), trademarks, copyrights and registered and unregistered designs for Practical Law, Thomson Reuters’ global legal publishing brand.
Patents
Patents provide a set of exclusive rights to the inventor, including the right to make, use, sell or offer for sale the patented product or process. In addition, the owner of a patent has the right to prevent others from making or using the invention without permission.
The law requires that the person filing a patent application be the true inventor of the claimed invention. If not, the patent application may be rejected or found invalid.
A patent can be challenged post-grant only in the Central Intellectual Property and International Trade Court. The grounds for challenging a patent include lack of unity, lack of enablement and improper prosecution.
The only party that can sue for patent infringement in Thailand is the patent owner. However, a non-exclusive licensee may bring an action if the registered patent licence expressly allows for it. In general, foreign patents are valid in Thailand, but only if the patent was filed in an official office of the government of a country that is a member of a convention or treaty for patent protection to which Thailand is also a party.
Trademarks
Trademarks, registrable under the Department of Intellectual Property of Thailand (DIP), protect the identity and reputation of a brand. Trademarks may be used for goods or services and can include both words, designs, or figurative marks. The Department of Intellectual Property examines all trademark applications and tries to prevent the registration of descriptive and generic marks, requiring them to have distinctiveness.
Broad product or service descriptions are not registrable, and the applicant must also submit a Thai classification of the goods or services for which the mark is to be registered. In addition, trademarks containing common words that are descriptive or generic, or otherwise ineligible for registration due to public policy, will require disclaimers to be filed with the application.
The enforcement of intellectual property in Thailand is complex, but it is possible to take steps to protect your creations. Penalties for infringement of intellectual property laws are stiff, and trademark squatting by third parties is a significant problem, especially in the e-commerce sector. The Department of Intellectual Property has a Memorandum of Understanding with major e-commerce platforms to combat this issue.
Copyrights
The Department of Intellectual Property (DIP) administers Thailand’s patent, industrial design, trademark and copyright systems. It is a signatory of the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights and is part of the Madrid System for International Registration of Trademarks.
DIP is a major player in the fight against IPR infringement in Thailand. Its agencies conduct numerous raids throughout the country and seize millions of dollars worth of unauthorized goods. It is also a leading participant in the annual destruction ceremony where seized counterfeits are publicly burned and crushed to discourage IP violators.
The DIP is also a leading participant in the National IPR Center of Enforcement, which helps improve coordination among Thai law enforcement agencies and major e-commerce platforms. Despite these efforts, the quantity of counterfeits and pirated goods on Thai online marketplaces continues to be an ongoing concern for many brand owners. In an effort to curb this, the DIP has recently launched a Memorandum of Understanding on Protection of IPR on the Internet. This will improve cooperation and joint action against on-line IPR violations.
Geographical Indications
A product’s geographical indication (GI) refers to its unique qualities, reputation and origin that are identified with a specific place. GI products are safeguarded by various international agreements, such as the 1883 Paris Convention for the Protection of Industrial Property and the 1958 Madrid Agreement Concerning the International Registration of Marks.
The Department of Intellectual Property (DIP) oversees and administers Thailand’s IP system. The DIP has a number of e-services and fast-track programs for patent and trademark applications. Foreign applicants must file a national application directly in Thailand or within 12 months of a priority application filed overseas.
DIP has a dedicated team to deal with IP infringements. Thai Customs can search, inspect and seize trade mark and copyright infringing goods entering or exiting the country proactively or upon receiving notification from an IP rights holder. Infringement disputes can also be adjudicated through specialized courts or civil litigation. However, private mediation is usually the most cost-effective and efficient way to resolve disputes. The Central Intellectual Property and International Trade Court (CIPITC) is a specialized court that handles IP related disputes.
Trade Secrets
The nuances of IP protection in Thailand can be complex, but planning is essential to ensure your business’s rights are protected. Patent, trademark, and copyright registration are crucial to enforcing your intellectual property rights. In addition, registering geographical indications (GI) can amplify the strength of your contracts and agreements with other businesses.
Patents protect new and undisclosed inventions, while trademarks protect distinctive names for products or services. Copyrights protect original creative works such as literature, music, software, photography, and artwork. Geographical Indications are a unique type of intellectual property right, protecting the reputation and quality associated with certain goods that are sourced from a specific region.
Although trademark and patent enforcement in Thailand is strong, a growing number of counterfeiting and pirated products are entering the country’s marketplace. In addition, the country’s laws on trade secrets are nebulous and may leave companies vulnerable to competitors seeking commercial advantage through industrial espionage. This is especially true since the trade secret law in Thailand was enacted in 2002 and has only been amended once. Damages for trade secret infringement can be assessed on the basis of profits made by the infringer or as the court “deems appropriate.” Theft of trade secrets is also punishable by up to five years in prison.
