New Fast-Track Trademark Registration and Renewal System in Thailand
Tanakrit Tangburanakij and Jarima Boonyaudomsart, Baker & McKenzie Ltd. (Thailand)
Under the current practice of the Thai Trademark Office, the Department of Intellectual Property (DIP) states that, in order to conform with the law and regulations, it generally takes the trademark registrar 12 months to examine a new trademark application, and 2 months for a renewal application. In fact, it actually takes at least 18 months for the registrar to issue the first office action for the new trademark application, and around 3 to 6 months to complete the renewal process. These actual timeframes are longer than those of many other jurisdictions, and over the years there have been many requests for a fast-track system in Thailand.
Finally, in April 2021, the DIP issued two notifications introducing a new “Fast-Track System” for trademark registration and renewal. According to the notifications, the timeframes for examining new trademark applications and renewal applications will be shorter in some specific cases, as detailed below.
Under this new Fast-Track System, it will take only 6 months for the registrar to pre-examine a new application and issue the first office action, provided that the application meets the following criteria:
1. The number of goods/services does not exceed 10 items;
2. The goods/services are only extracted from the DIP website (https://tmsearch.ipthailand.go.th);
3. No amendment, assignment or transfer by succession, or request to submit evidence to prove acquired distinctiveness through use under Section 7 paragraph 3 of the Trademark Act is filed. Otherwise, such application will be examined under the normal practice instead; and
4. The application may be submitted at the DIP, Provincial Commercial Office, or any other government office as prescribed by the Director-General, or may be submitted by post, or via the e-Filing system.
The registrar will take only 60 minutes to complete the renewal process, and then the owner (or an appointed attorney) can collect the certificate of renewal at that time. However, the renewal application must meet the following conditions:
1. The total number of goods/services does not exceed 30 items;
2. No changes have been made to the particulars or details of the registration;
3. The renewal application must be filed at the DIP by the owner, or by an appointed attorney. In the latter case, the Power of Attorney (POA) must authorize the attorney to collect the certificate of renewal on the owner’s behalf;
4. The owner or an appointed attorney must make a request for the fast-track examination at the time of filing the renewal application; and
5. The official fee must be paid in full.
As the new fast-track system is new and has only been effective for a short period of time, there is still no official record of cases/feedback. We believe this is an important step for the DIP to improve the trademark registration and renewal system in Thailand, as they strive for equivalency with other jurisdictions. This new system would be beneficial to many trademark owners, depending on their individual requirements.
However, the issues that may preclude a trademark owner from gaining the benefits of this new fast-track system include having a trade mark that exceeds the limit on the items of goods/services (i.e. 10 and 30 items), and a change of address when renewing an application. From our experience, many owners prefer to register their marks to cover many items of goods/services in order to gain the broadest protection, and some do not strictly adhere to the DIP’s approved list. In addition, as renewal of trademarks in Thailand is required every 10 years, which is a considerable length of time, details of those registrations, particularly the addresses, may change due to business reasons.
Nonetheless, the new fast-track system for trademark registration offers a “short cut” solution to some trademark owners who want swift protection of their trademarks in new categories, and their most important goods and services upon expansion of their business. Furthermore, subsequent applications with additional items may be positively affected as previous applications will already offer partial coverage. We are delighted to see this improvement by DIP as it alleviates the delay in the examination and renewal process for many applicants.