Amendment to the Trademark Act

11 March 2016

On 18 February 2016, the Minister of Commerce announced that the National Legislative Assembly (NLA) has obtained the relevant approval to amend the current Trademark Act No. 3(Act). The proposed amendment will include the much anticipated acceding to the Madrid Protocol, among others, as well as to the extension of a protective scope, revision of rules, procedures and registration periods, and revision of fees.

 

Some important amendments to the Act are as follows:

 

  1. Revision of procedures and periods of registration prosecution so that they are more clear and rapid, such as reduction of times for following the Registrar’s order, opposition, counterclaim and appeal of the Registrar’s order to the Trademark Board - from 90 days to 60 days;
  2. Imposing of a penalty for utilising another person’s packages or containers, on which registered trademarks are displayed, for their own or another person’s goods in order to mislead consumers into believing that such goods belong to the trademark owner;
  3. Registration of Trademark under the Madrid Protocol; and
  4. Extend to the scope of protection with the introducing the registration of a “sound” as a trademark.

 

The provisions in respect of registration under the Madrid Protocol (Protocol) will facilitate local Thai national establishments to be able to file trademark applications faster, as well as widen the jurisdiction of filing, covering all 97 member countries of the Madrid Protocol. Under the Protocol, individual applications need not be filed in each country of interest; rather, filing one application for registration with the Department of Intellectual Property and electing the countries or member states for which protection is to be covered is required. Moreover, the filing date will be the date on which the application was originally filed in Thailand.

 

The amendments to the Act relating to the extension of the protective scope, revision of rules, procedures and registration periods, and revision of fees will come into force after 90 days from the date of its publication in the Government Gazette. However, the amendments to the Act relating to Thailand becoming a party to the Madrid Protocol will come into force by enacting the Royal decree prescribing an enforcement date.

 

At the present time, Thailand is not a member to the Madrid Protocol but it is expected to be a party to this by the end of this year. Thailand’s accession to the Madrid Protocol will greatly benefit international registration processes, as well as save time and money as it cuts down the filing process to just one country; wherein protection upon registration is for more than one country.

 

For further information and clarification please do not hesitate to contact us.

 

Chavalit & Associates Limited

chavalitlaw@chavalitlaw.com

 

 

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