Department of Intellectual Property of Thailand’s recent announcement

Effective as of 11 September 2023, the Department of Intellectual Property of Thailand (“DIP”) has simultaneously promulgated four announcements, the objectives of which are to facilitate both the private and public sectors with filing and registering trademark applications in Thailand, as well as to provide a more straightforward procedure for their service provisions. All of the said announcements provide improvements to the procedure of trademark registration in Thailand, which can be summarized as follows:

1. Announcement on the criteria, methods and conditions for filing trademark applications, other applications and documents through the electronic intellectual property registration system (e-filing) dated 7 September 2023 (“Announcement on E-filing”)

This Announcement on E-filing has been made in order to revise and update the criteria, methods and conditions for filing trademark applications, other applications and documents through the electronic intellectual property registration system, as well as to facilitate both the private and public sectors with trademark registration in Thailand. Consequently, the previous announcement by the DIP dated 5 March 2017 (“Previous Announcement”) has been cancelled and replaced by the Announcement on E-filing dated 7 September 2023.

The following are some of the provisions that have been introduced in the Announcement on E-filing in order to resolve various unclear issues from the Previous Announcement, such as:

Under Clause 5, it is clearly specified that, by submitting documents through the DIP’s e-filing system, such documents shall be regarded as properly certified.
Under Clause 14, paragraph 2, late submission of supporting evidence in trademark cancellation is not allowed. All supporting evidence is required to be submitted to the DIP at the time of filing the trademark cancellation, and the Board of Trademarks will not consider any documents or evidence submitted later.
Clause 20 states that the payment of official fees for filing any applications through the DIP’s e-filing system must be made through the Thai Government’s e-payment portal by 11:00 pm on the day following the filing.
Under Clause 21, paragraph 1, the DIP’s notifications on trademark applications are made through transmission by: a) registered mail by Thailand Post; or b) e-mail.
Under Clause 21, paragraph 3, if the DIP’s notifications are sent to the applicants’ e-mail, it shall be deemed that the applicant has received such notifications after a period of seven days from the date of the sending of the notifications.
Under Clause 21, paragraph 4, if the DIP’s notifications cannot be sent to the applicant’s e-mail due to technical problems or other reasons, the DIP’s notifications shall be sent to the applicant through registered mail by Thailand Post.
Under Clause 22, all documents submitted though the DIP’s e-filing system before the issuance of this Announcement on E-filing shall be deemed to have been retroactively and properly certified in accordance with this Announcement on E-filing.

2. Announcement on the forms of trademark, service mark, certification mark and collective mark applications, other applications, documents and letters dated 7 September 2023 (“Announcement on Forms”)

The DIP has cancelled its prior announcements relating to the adaptation of previous trademark-related forms, and has adapted and updated the forms for such documents, which includes important documents such as the trademark application, opposition, appeal, assignment, licence, amendment, cancellation and priority claim forms, as well as supporting documents such as the notification of ongoing or completed court case(s), power of attorney, assignment agreement, request for an extension to the deadline to submit evidence, and supporting evidence submission forms. Notable changes to such forms can be summarized as follows:

Addition of options to receive notifications from the DIP on trademark application-related matters, either through e-mail or registered post.
Addition of trademark application forms to include the text “…specimens of trademarks must not be larger than 5x5 centimeters; however, applicants may pay extra fees for larger marks at the rate of Baht 200 per 1 centimeter”.
Addition of predetermined grounds for initiating trademark cancellation actions in trademark cancellation petitions.
Addition of clarifications required for notifying the DIP of ongoing or completed court cases.
Addition of predetermined categories of supporting documents for trademark cancellation petitions, trademark license cancellation petitions and responses to cancellation petition forms.

The Announcement on Forms also states that, while the updated trademark assignment agreement and power of attorney forms are provided with this announcement, such forms are merely to facilitate applicants by providing a preferred form, and it is not compulsory to file the relevant applications. The DIP will still accept trademark assignment agreements and power of attorneys prepared by applicants in their own respective formats, provided that all necessary information required in the updated forms, such as the applicants’ names and addresses, are present in the respective documents prepared by the applicants.

3. Announcement on notification of orders or decisions of the Registrar or Trademark Board by e-mail dated 7 September 2023 (“Announcement on Orders”)

With the aim to streamline and improve the provision of government services through electronic means (e-service) as well as to further facilitate and simplify the process of notifying business entities and ordinary citizens, the following DIP notifications can now alternatively be made through e-mail.

Trademark Registrar’s orders.
Notifications issued by a Trademark Registrar or the Trademark Board.
Trademark Board’s decisions.
Trademark Registration Certificates.

Upon the filing of trademark applications in Thailand, applicants may provide their e-mail addresses in trademark application forms if they wish to receive the DIP notifications through their e-mails. The owners of previous filed trademarks, prior to this Announcement on Orders, are entitled to notify the DIP of their respective e-mail addresses for the above purpose as well.

The DIP deems all notifications it makes through e-mails to be fully valid and will consider all notifications to applicants through e-mail to be received after a period of seven days from the respective dates in which notifications are received by the applicants’ e-mail systems. In the event the DIP is unable to make such notifications to trademark applicants or owners through e-mails for any reason, it will make such notifications to the owners or applicants through registered mail addressed to the respective addresses of the representatives of the mark’s applicants or owners.

The Announcement on Orders effectively allows the DIP to send notifications to trademark applicants and owners through e-mail as an alternative legal means of communication, and enables trademark owners to be informed of any potential notifications in a more timely and efficient manner.

4. Announcement on the new forms of trademark registration certificates and substitutes dated 7 September 2023 (“Announcement on Certificates”)

To fully support the provision of governmental services through electronic means (e-service), the DIP has generated new forms of trademark registration certificates and substitutes with unique scannable QR codes thereon. Such unique QR codes that appear on trademark certificates will be machine-scannable images which can be scanned by mobile phone cameras and will be interpreted as URLs directing applicants to web pages on the DIP’s trademark database website, and they will display the registration information of each respective trademark registration. Following the promulgation of the Announcement on Certificates (as of 11 September 2023), owners of registered trademarks will receive trademark registration certificates in both physical (paper) and electronic forms, with both bearing the unique readable QR codes as well as additional security features, namely the certification of e-certificates with secured digital signatures and the presence of physical security features on paper certificates. For the electronic trademark registration certificates (“e-certificate”), it shall be deemed to be fully valid and provide the same degree of validation as physical trademark registration certificates in every aspect. The DIP views that the inclusion of such QR codes will further advance the transparency and public trust in trademark registrations in Thailand.

The new forms of trademark registration certificates and substitutes were also generated by the DIP in order to support the registrations of international trademarks under the Madrid Protocol, which will enable the DIP to begin issuing registration certificates for trademarks registered in Thailand through the Madrid System.

UPDATE: Announcement on Postponement of the Implementation of four Department of Intellectual Property Announcements

The above-discussed four announcements dated 7 September 2023 were initially planned to take effect as of 11 September 2023. However, the DIP later announced on 14 September 2023 that the implementation of such recent announcements will be indefinitely postponed and the DIP’s prior announcements dated 23 June 2017 and 5 March 2018 on trademark application forms and other related application forms, respectively, will take effect until further announcements are made by the DIP. The DIP cited technical issues which affect the Department’s ability to operate the e-filing system as the main cause of such postponement.

Authors

Pavinee BUNYAMISSARA

Partner
Bangkok

Pavinee is a leading expert in intellectual property (IP) law. She joined the Intellectual Property Practice Group of SCL Law Group (currently known as SCL Nishimura & Asahi) as an associate upon its formation in 2005. Prior to that, Pavinee was an in-house legal counsel at many companies where she gained extensive hands-on experience within general law practice, IP and e-commerce related matters. She also gained comprehensive knowledge of contracts and telecommunications working with government agencies while she was an in-house legal counsel. Pavinee was a guest lecturer and speaker on IP and information law at various forums. Currently, Pavinee routinely advises major clients on matters relating to trademark and patent registrations, copyright recordation, license agreements, as well as trademark, patent and copyright infringement. Versatile and keen, she also assists with overseas trademark and patent registration applications and acts as counsel providing expert guidance to clients throughout IP enforcement process and litigation proceedings. She has been consistently consulted with on cases involving electronic trade and commerce, domain name registrations and personal data and privacy protection. Representing numerous international and domestic organizations in both public and private organizations, Pavinee takes advantage of a refined understanding of IP prosecutions and commercial risk to deliver to the clients borderless and practical legal advice based upon reliable and comprehensive understanding of the laws, regulations and best practices in Thailand. With her comprehensive knowledge and extensive experience, she is well-equipped to meet the clients’ diverse needs whereby she tailors her legal service and professional advice to suit the particular needs of each client. Pavinee was also named an IP expert by magazines[Ed: I suggest listing which magazines, or listing only a couple if there are many.]. AsiaIP Informed Analysis and the 2022 edition of World Trademark Review 1000 are publishing the recent list.

More Details