Trademarks, Service Marks, Certification Marks, and Collective Marks can be protected in Thailand under Trademark Act B.E.2543 (1991) as amended by the Trademark Act (No.3) B.E.2559 (2017).

Three requirements must be met for a mark to be accepted for registration in Thailand. The mark must be distinctive, not prohibited by law, and be available (ie, not similar or identical to an already registered mark).

Distinctive Character

Pursuant to the Trademark Act, a mark possessing one or more of the following characteristics is deemed distinctive in Thailand:

A mark that has been extensively used in Thailand for a long period of time may be deemed distinctive even if it does not comply with the above requirements. For a trademark to be recognized as distinctive by virtue of usage, the applicant must provide evidence of use of the trademark, such as copies of advertisements, invoices, catalogues etc.

For marks that may otherwise not pass scrutiny of the distinctiveness requirement, disclaimers can be filed to disclaim non-distinctive elements as part of the trademark. Commonly disclaimed elements include generic, descriptive words, such as “company”, and geographical names. such as “Bangkok”.

Part of Ananda Intellectual Property’s intellectual property strategy planning includes pre-registration consultation on mark registrability and advice on passing the distinctiveness requirement.

Not Prohibited By Law

Some marks are explicitly prohibited by law under the Trademark Act and Ministerial Regulations, including:

• any mark which is contrary to public order, morality or public policy;
• marks which are identical with well-known marks as prescribed by the Ministerial Notifications, or so similar that the public might be confused as to the owner or origin of the goods;
• geographical indications protected under the law on geographical indications;
• national flags of Thailand, royal standard flags or official flags, national emblems and flags of foreign states or international organizations;
• marks identical with or similar to a medal, diploma or certificate or any other mark awarded at a trade exhibition or competition held by the Thai government or a Thai government agency for public enterprise or any other government organ of Thailand, a foreign government or international organization unless such medal, diploma, certificate or mark has been actually awarded to the applicant for goods and is used in combination with the trademark;
• state arms or crests, royal seals, official seals, Chakri emblems, emblems and insignia of the royal orders and decorations, seals of office, seals of ministries, bureaus, departments or provinces; and
• royal names, royal monograms, abbreviations of royal names or royal monograms, representations of the King, Queen or Heir to the Throne, names, words, terms or emblems signifying the King, Queen or Heir to the Throne or members of the royal family.

Ananda Intellectual Property offers pre-registration advice on registrability of marks that may be prohibited by law.

Available: Not Identical or Similar to Other Trademarks

The law proscribes the registration of marks that are identical or similar to a registered mark. While identicality may be easily ascertained, the level of similarity prohibited is more nuanced.

Although the ultimate decision on registrability rests with authorities, mark owners can avoid unnecessary trouble and costs by first checking a mark’s availability.

Identical searches, similar searches (including phonetic transcription of mark in the Thai language) or device (logo) searches can be performed prior to filing a trademark application. In determining the availability of a trademark in Thailand it is important to check classes of products/services that are associated with the classes of goods or services for which protection is sought. For example, a trademark for food and beverages products shall not be similar or identical to a service mark for catering services.

We also recommend checking translations and transliterations of a mark to avoid risk of confusion or similarity.

Availability searches and consultation with trademark experts are available at Ananda Intellectual Property [, and are included in the Intellectual Property Strategy Plan].

Requirements for filing a trademark application in Thailand are similar to filing requirements in other countries. There are, however, some specific conditions regarding products and services classification, and the calculation of official fees payable to the Department of Intellectual Property.

Required Documents

Documents and information required for filing a trademark application in Thailand are as follows:

• Full name, address, country and activity/occupation of the applicant
• Electronic sample of the mark (5×5 cm recommended size)
• List of goods and services to be protected
• Notarized Power of Attorney (for foreign applicants)
• Thai Power of Attorney and copy of Thai corporate certificate or ID card (for Thai applicants only)
• Translation of priority documents (if priority is claimed)

In most cases, Ananda Intellectual Property can prepare all required documents and file the trademark application within 48 hours. If some required documents are not available at time of filing, we can help request an authorization for a later filing of missing documents.

Classification of Products and Services

Thailand follows the general framework of the International Trademark Classification (Nice Classification) regarding the list of goods and services. However, there are some important specific conditions in Thailand.

• Broad products or services descriptions are not allowed in Thailand. For example, “clothing” or “cosmetics” are not accepted descriptions and shall be detailed such as “trousers”, “shirts”, “t-shirts” as per the Thai Classification of Products and Services. Objections from the Registrar regarding product and service descriptions are common in Thailand. It is best to avoid such objections by examining and addressing possible bases of objections prior to filing. Objections may complicate and extend the prosecution of a trademark application in both time and cost.
• Specific local products (such as exotic food products) have been added to the Thai classification

Ananda Intellectual Property can review and provide recommendations for product and service descriptions prior to trademark application filings.

Official Fees

The list of products or services for which protection is sought determines the number of applications to be filed and the amount of official fees to be paid. Thailand does not allow multiple-class filing in one single application. Therefore, separate but related applications for the same mark may be necessary. An application form must be completed for each class of products and service for which protection is sought.

Official fees (government fees) are to be paid to the Department of Intellectual Property for each product and each service designated in the application. Costs for trademark filing and registration in Thailand are, therefore, proportional to the amount of product and service items for which protection is sought.

Trademark Search

It is highly recommended that trademark availability searches are undertaken prior to submission of a trademark application in Thailand. Because examination of a trademark application frequently takes up to nine months, knowledge of trademark availability (by conducting trademark searches) may allow a trademark applicant to assess the registrability of its trademark application before filing.

Identical searches, similar searches (including phonetic transcription of mark in Thai language) or device (logo) searches can be performed prior to filing a trademark application. It is recommended that translations and transliterations of a mark be checked to avoid risk of confusion or similarity.

Ananda Intellectual Property can complete trademark searches in as little as 24 hours.

Priority Claims

Thailand is a member of World Trade Organization and signatory to the Paris Convention. It is therefore possible to claim trademark priority (of up to six months) based on a trademark application filed in another WTO or Paris Convention signatory country.

Appointment of Trademark Agent

The trademark applicant or agent must have a residence or office in Thailand. If the applicant resides outside Thailand, the applicant must appoint a local agent and provide a notarized Power of Attorney.

Thailand is a signatory to the Madrid Protocol. Therefore Thailand canbe designated under the international trademark system (Madrid System) or through a local resident (eg, an appointed local trademark agent).

The average time frame for completing the registration process of a Thai trademark application is nine to eighteen months. There are four main procedural stages for registration of a trademark application in Thailand: filing, examination, publication and registration.

Trademark registration applications may be objected to by the Registrar, opposed by third parties, or cancelled under specific conditions as detailed below.
Office actions
The Registrar may issue one or several office actions. The Registrar may refuse the application for grounds of non-distinctiveness, identical/similar character to a well-known and/or registered mark, public morality or any other violation of the law. In such case the applicant may file an appeal before the Trademark Board to contest the decision of the Registrar. The applicant is further entitled to appeal the decision of the Trademark Board before the Intellectual Property Court.
The Registrar may also request that amendments be made to the trademark registration application. Such amendment requests may include specification of products/services, disclaimers, definition of the mark, or additional evidence of use or well-known character. When possible, it is recommended that applicants comply with such amendment requests. However, it is also possible to contest an amendment request from the Registrar, either directly or in front of the Trademark Board, as the situation may require.
The Registrar reviews amendments after they are filed, and if there are no other objections, will proceed with the publication of the trademark registration application.
Opposition
The opposition procedure is available against pending trademark applications (i.e. trademark applications which have been published but not yet registered).
After the publication of a trademark application in the Trademark Gazette, objection to the application may be filed by a party claiming a better right to the trademark or on the basis of the trademark’s non-conformity with the Trademark Act provisions, such as contrariness to morality. Such objections must be filed with the Registrar within 60 days from the date of publication of the trademark application in the Trademark Gazette and must state the grounds of the opposition.
If an opposition is filed, the Registrar must inform the applicant immediately. The applicant must file a counterstatement to the objection within 60 days of the date of receipt of a copy of the opposition.
The Registrar shall send a copy of the counterstatement to the opposing party within approximately 2-3 months. The Registrar may order the opposing party or the applicant to give additional statements, written explanations or evidence.
The Registrar then gives written notification of his decision to the applicant and opposing party. The applicant or opposing party may appeal the decision of the Registrar to the Trademark Board within 60 days from the date of receipt of the notification. An appeal of the Trademark Board’s decision may be filed with the Intellectual Property Court within 90 days of the Trademark Board’s decision.
Cancellation
The Trademark Act provides for two distinct cancellation procedures after a trademark application has been accepted for registration: a cancellation action before the Trademark Board (in cases where requirements for registration were not met at time of filing or if a registered trademark has not been used) and a cancellation action before the Intellectual Property and International Trade (IPIT) Court.
Trademark Board
To commence a cancellation action before the Trademark Board, any interested person or the Registrar may petition the Trademark Board to order the cancellation of any trademark if it appears that at the time of registration the trademark:

• was not distinctive;
• contained or consisted of a prohibited characteristic;
• was identical with a trademark registered by another person for goods of the same class or of different class with the same character;
• was so similar to a trademark registered by another person that the public might be confused or misled as to the owner or origin of the goods in the same class, or goods of different class with the same character in its trademark; or
• the trademark was not used (see below).
  In addition, any person who is of the opinion that a trademark is contrary to public order, good morality or public policy may petition the Trademark Board to cancel such trademark registration.
  The petitioner may appeal the decision of the Trademark Board to the IPIT Court within 90 days of the Trademark Board’s decision.
  IPIT Court
  To commence a cancellation action before the Court, any interested person or the Registrar may petition the Court to cancel a registered trademark:
• within five years from the date of the Registrar’s order to register a trademark, by showing that the interested person has better rights to the trademark than the person registered as its owner, or
• by showing that, at the time of the cancellation petition, the trademark had become common to the trade for certain kinds or classes of goods, to the extent that the trademark had lost its meaning as a trademark to the trade or in the eyes of the public.

Thailand does not require evidence of trademark usage to maintain protection for registered trademarks.
However, it is important to note that a trademark application becomes susceptible to cancellation for non-use if:

• it is proved that, at the time of registration, the owner of the trademark had no bona fide intention to use the trademark with the goods for which it was registered, or
• there was no bona fide use whatsoever of the trademark for such goods after the trademark was registered, or
• that during the three years prior to the petition for cancellation there was no bona fide use of the trademark for the goods for which it was registered

Cancellation of trademarks for non-use is extremely rare. Such cancellation petitions are usually dismissed if the trademark applicant can prove that such non-use was due to special circumstances in the trade, and not to an intention not to use or to abandon the trademark for the goods for which it was registered.

Trademark infringement significantly decreased in the past years. Thailand is no longer on the United States Special 301 Watch List and recent legislations have improved online enforcement.

In 1997, the Central Intellectual Property and International Trade Court (IPIT Court), a specialized court, was established to assist trademark owners who are victim of infringement. Today, the Court handles over 2,000 cases of trademark infringement per year.

Both unregistered trademarks and registered trademarks can be enforced in Thailand. However, registration accelerates the enforcement process and significantly reduces the costs for enforcement. Registration also improves the possibility of stopping infringement action.

Unregistered Trademarks

The owner of an unregistered trademark can initiate both civil and criminal actions.

Civil actions are available pursuant to the Trademark Act and to the Civil and Commercial Code. The plaintiff can seek an injunction or try to recover damages against any person for passing off products as originating from the owner of the unregistered trademark.

Criminal enforcement is also available under the Penal Code. However, small fines for passing off products have little deterrent effect unless actual infringement and bad faith are clearly demonstrated.

Registered Trademarks

The owner of a registered mark can initiate both administrative and judicial actions.

Administrative actions include opposition, cancellation, and alternative dispute resolution procedures through the Department of Intellectual Property.

The alternative dispute resolution procedure can be requested by either parties and consists of mediation between the infringer and the plaintiff. Although alternative dispute resolution is a cost-effective procedure, it is rarely used as plaintiffs usually prefer criminal enforcement.

Judicial actions include criminal and civil actions.

Criminal prosecution represents the majority of trademark infringement enforcement efforts in Thailand. It is a cost-effective, quick and efficient remedy.

Criminal actions are initiated with the filing of a criminal complaint with the police. The police can then petition the court for a search warrant. If a warrant is issued, a police raid is then carried out in order to collect evidence of the infringement and arrest the infringer(s).

There are several enforcement bodies in Thailand:

• the Department of Special Investigation, which was established in October 2002
• the Economic Crime Investigation Division, a specialized police unit widely used by trademark owners
• the Metropolitan Police Bureau
• the Provincial Police Bureau
• the Food and Drug Administration

Following the raid, the case is sent to the Public Prosecutor at the IPIT Court, which usually renders criminal case decisions within one year of the introduction of the case before the Court by the Public Prosecutor. IPIT Court decisions can be appealed to the Supreme Court.

The Trademark Act sets out maximum penalties for trademark infringement (up to four years’ imprisonment and/or a fine not exceeding 400,000 THB). Maximum penalties for imitation of a trademark are up to two years’ imprisonment and/or a fine of up to 200,000 THB.

Registered trademark owners may also commence a civil suit based on the provisions of the Civil and Commercial Code. However, civil actions for trademark infringement are rare in Thailand. It is extremely difficult, in most cases, to bring evidence of damages. Strategically, a civil action can be helpful for preliminary measures. For example, the registered trademark owner can petition the Court for an order to preserve relevant evidence in relation to the alleged infringement (Anton Pillar order) or for an injunction order.

Border Measures

Border measures may only be utilized against counterfeited trademark and pirated copyright products for imports and exports (and for goods in transit under some conditions).

It remains unclear whether the Customs Act provides protection for patent- infringing products. Trademark owners or their representative in Thailand can file a trademark notice with Customs to request that officers seize and prosecute infringers. They can also file a request to detain a suspected shipment. In cases of seizure, the trademark owner must confirm within 24 hours whether or not seized products are counterfeit.

Customs officers also perform ex officio customs actions regularly. Because there is no Customs trademark registry, it is important that trademark owners provide to the Customs with updated contact details of its representative in Thailand. Doing so aids in timely inspection the suspected counterfeit products.

Thai Customs will usually issue fines based on the market value of the infringing/trademarked goods.

Our attorneys can assist brand owners in establishing contact with and training Thai customs officers to help them recognizing counterfeit items.

Ananda Intellectual Property’s personnel have solid experience in dealing with enforcement matters.

Please also visit our IP Investigation and IP Litigation pages for additional information

In Thailand trademark applications are usually amended at the request of the Registrar or the Trademark Board, or as a result of a court decision. In some circumstances, the applicant may voluntarily make amendments to a trademark application.
 For example, an applicant may decide to remove products or services from a trademark application, update contact details, change the trademark agent of record or add a meaning (translation) of its trademark.
An applicant may also assign or license its trademark application as described below.