Intellectual property is a critical asset for any business, and safeguarding it requires an in-depth understanding of local laws and regulations. Tilleke & Gibbins has recently contributed an overview of patents, utility models (known as “petty patents” in Thailand), trademarks, and copyright to Practical Law, the world’s leading legal publication.
Patents
Patents protect inventions, including products, processes or methods. They are enforceable against infringement, which is defined as any exploitation of a patented invention without the patent owner’s consent. The basic requirements of a patentable invention are novelty, inventive step and industrial applicability. The duration of a patent is 20 years.
The Central Intellectual Property and International Trade Court handles patent infringement litigation in Thailand. Its rules allow parties to submit large volumes of discovery, such as written evidence (articles and publications, patent specifications, search reports), physical samples and expert witness testimony.
In addition to granting patents, the Department of Intellectual Property also administers Geographical Indications, a type of IP that recognizes a product’s reputation and characteristics as being derived from its geographical origin. Famous examples include Surin Jasmine Rice and Doi Tung Coffee from Chiang Rai province. GIs are an important part of Thailand’s economy and have been recognized by the World Intellectual Property Organization and other international treaties.
Trademarks
Having the right trademark in Thailand protects your business name from others using it without permission. It also allows you to take legal action against them.
When applying for a trade mark in Thailand, it is recommended to conduct preliminary searches in the Department of Intellectual Property (DIP) database to ensure that the proposed trademark does not cause confusion with existing marks or infringe upon them. This can reduce the risk of objections and refusals to your application.
Thailand follows the first-to-file principle in its trademark registration process. This means that if two trademarks are identical or similar for the same goods/services, the rights will go to the applicant who files their application first. This has led to a number of cases where IP owners who have not yet entered the Thai market are shocked to learn that their trademarks have been preemptively registered by third parties. This practice is known as trade mark squatting.
Copyrights
Copyright is a legal right granted to the creator of a creative work giving him exclusive rights for a limited period of time. Under the law, it protects “original works of authorship including literary, dramatic, artistic, cinematographic, audio-visual, music and sound recording, and video broadcasting work” against unauthorized use.
Intellectual property laws in Thailand are governed by the Patent Act B.E. 2537 (1994), Trademark Act, and Copyright Act. Understanding these laws is crucial to crafting effective IP agreements and addressing intellectual property disputes in the country.
Disputes regarding trademark and copyright in Thailand are adjudicated by the Central Intellectual Property, and International Trade Court (CIPITC). If a disputed matter is deemed complicated or complex, it may be sent to the Court of Appeal for Specialized Cases.
Geographical Indications
In Thailand, a registration system for geographical indications exists under the Geographical Indications Protection Act B.E. 2546 (2003). Applicants must prove that there is a link between the good and its geographical origin, such as quality, reputation or other distinctive characteristics that are essentially attributable to the geographic location.
Additionally, they must prove that the good is associated with the geographical area in such a way that consumers are likely to believe that the good comes from that place and can distinguish it from similar goods with other characteristics.
Foreign employers must be cognizant that although Thailand is a member of international intellectual property agreements such as the Patent Cooperation Treaty and the Madrid Agreement, it has unique provisions and requirements that differ from those of their home country. Understanding these differences is not only a necessity but a strategic imperative for safeguarding your IP assets. Infringement cases are heard by the Central Intellectual Property and International Trade Court (CIPITC), a specialized IP court.
