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Summary of the Amendment to the Trademark Act 1991
 
Intellectual Property Department
Tilleke & Gibbins

Mrs.Vipa Chuenjaipanich

April 2000

The amendment to the Trademark Act 1991, called the "Trademark Act (Issue No. 2) B.E. 2543 (A.D. 2000)", was published in the Government Gazette on April 1, 2000.  It will take effect on June 30, 2000.

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Some of the major changes in the amendment to the Trademark Act are given below.

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    1. A combination of colors or group of colors represented in a special or particular manner and a three-dimensional mark may be registrable as a trademark if deemed distinctive.
    2. A company name which does not show the company's juristic status (such as "Co., Ltd." or "Limited") will be registrable as a trademark without the condition that it must be presented in a stylized form. Only the full name of a company (i.e., name which shows its juristic status such as "Co., Ltd." or "Limited") will have to be presented in a stylized form to be registrable as a trademark. However, the full name must not be descriptive of the goods or the characteristic of the goods for which the trademark is being registered.
    3. A trademark consisting of a geographical indication will not be registrable.
    4. Thailand is considering becoming a member of an international convention or treaty for the protection of trademarks. Therefore, Section 11 and Section 28 of the Trademark Act 1991 were amended to address this issue.

      4.1.  In Section 11, the following provision was added as paragraph 2:  "In the event Thailand becomes a member of an international convention or treaty for the protection of trademarks, any application for trademark registration which conforms to the provisions of such international convention or treaty shall be deemed an application for trademark registration under this Act."

      4.2.  Section 28 concerning priority claim was amended to allow also the following persons to claim priority:

      -  nationals of countries which are members of an international convention or treaty for the protection of trademarks of which Thailand is also a member, or
      -  persons who have domicile or actual operating industrial or commercial enterprises in countries which are members of an international convention or treaty for the protection of trademarks of which Thailand is also a member.

      4.3.  Section 28 bis was added, entitling the proprietor of a mark whose goods bearing such trademark have been entered in

      -  an international exhibition held in a member country of an international convention or treaty for the protection of trademarks of which Thailand is also a member, or
      -  an international exhibition organized by a government agency or state enterprise of such country

      to claim priority according to Section 28, paragraph 1, if he files an application for registration of the mark covering the goods exhibited in such exhibition in Thailand within six months from the exhibition date or the filing date of the first application for registration of the trademark abroad, whichever is earlier, provided that such filing of application shall not be an extension of the duration prescribed under Section 28.

      The categorization of an exhibition of goods as an international exhibition and claiming of priority right under paragraph 1 shall be in accordance with the criteria, conditions and procedures prescribed by Ministerial Regulations.

    5. Payment of a publication fee will no longer be required, meaning that the issuance of a notification requesting such payment and the time entailed for both notification and payment will eliminated, reducing, the length of the registration process. An application which has been approved for registration will automatically be published in the Trademark Gazette for 90 days to allow for any opposition.
    6. Under the Trademark Act 1991, the filing date of an application in which a priority date was claimed will be replaced by the priority date once the registration is granted. However, under the Trademark Act 2000, the filing date of an application in which a priority date was claimed will not be replaced by the priority date. Thus, the date on which the application was field in Thailand will be the registration date.
    7. Two grounds for cancellation of a trademark registration were added under Section 61 as (3) and (4).

      "Any interested person or the Registrar may request that the Board cancel the registration of a trademark if it appears that when field:
      (1)  The trademark is not distinctive under Section 7.
      (2)  The Trademark is forbidden for registration under Section 8.
      (3)  The trademark is identical to a registered mark belonging to another person in respect of goods under the same or different classes but with the same characteristics.
      (4) The trademark is confusingly similar to a registered trademark belonging to another person in respect of goods under the same or different classes but with the same characteristics, which might confuse or mislead the public as to the ownership or origin of a product."

    8. Under Section 95 of the new Act, the Board of Trademarks will be recognized. The Board will be chaired by the Director-General of the Department of Intellectual Property, not by the Director-General of the Commercial Registration Department. The Secretary General of the Juridical Council or his representative and the Attorney General or his representative will still remain as members. Also, the number of qualified persons who will be members of the Board has been increased from "not less than four but not more than eight" to "not less than eight but not more than twelve", and they must be from the academic field with knowledge and expertise in law or commerce and experience in intellectual property, which was not a requirement under the old Trademark Act. In addition, these persons must be from public entities, not less than one-third of whom shall be appointed by the Minister of Commerce.

      The addition of paragraph 4 to Section 99 will not allow any Board member with an interest in a subject matter brought to the Board for consideration under Section 96(1) or (2) to attend meetings called for the purpose of considering such subject matter.

    9. Section 106 bis was added which will give competent officials the authority to:

      - enter places of operation, production, distribution, purchase or storage facilities of a person where there is reason to suspect a violation of the provisions of this Act.
      -  enter vehicles of any person or order the owner or holder of a vehicle to stop or park the vehicle to allow inspection under this Act
      -  investigate and seize evidence or property which may be forfeited under this Act.
      -  arrest an offender under this Act, without need of a search warrant, in circumstances as stipulated in the Act.

    10. Section 112 bis and 112 ter were added in the new Trademark Act, providing for the punishment of any person found obstructing the Registrar or any competent official from execution of the law under Section 106 bis, as well as any person refusing to cooperate with the Registrar or competent official in the performance of their duties under Section 106 bis.
    11. Section 114 of the Trademark 1991 was amended to read:  "In the event that an offender is a juristic person, if the offense committed by such juristic person occurred due to an order, action or lack of an order or action from the director, manager or any person responsible for the activities performed by such juristic person, such person shall be liable for punishment pursuant to the provisions pertaining to the offense". The phrase "unless they can prove that the offense by such juristic person has been committed without their knowledge or consent" was deleted.
    12. Applications for registration of trademarks, service marks, certification marks and collective marks field before the date of enforcement of the new Act shall be considered applications under the Trademark Act 1991 as amended by this Act.

It is expected that under the new Trademark Act 2000, applications which were previously rejected by the Registrar due to non-distinctiveness of the marks in respect of juristic name, combination of colors or three-dimensional marks, may be accepted for registration if they are deemed distinctive.

©2000 Tilleke & Gibbins, Bangkok, Thailand