ASEAN INTELLECTUAL PROPERTY ASSOCIATION

IP Protection Thailand

Overview
History of Intellectual Property in Thailand
Trademark Act
Copyright Act
Patent Act
Other forms of Intellectual Property
A. International Conventions and Treaties
B. Current main IP Laws and IP-related Laws in Thailand
Patents
2.1 Types of Patents
2.2 Patentability
2.3 Exclusions from Patentability
2.4 Patent Term and Maintenance/Renewal
2.5 Rights and Obligations of Patent Owners
2.6 Limitations to Patent Rights
2.7 Who May File and Where to File Patent Applications
2.8 "First to File" Principle
2.9 Priority
2.10 Patent Applications
2.11 Conversion of Applications for an Invention Patent into an Application for a Petty Patent
2.12 Formality Examination
2.13 Publication of a Patent Application
2.14 Request for a Substantive Examination for the Patent Applications
2.15 Substantive Examination and the Granting of a Patent
2.16 Appeal/Opposition Proceedings
2.17 Cancellation or Suspension of Patents
2.18 Patent Infringements
Trademark
Geographical Indications
Copyright
Assignment and Licensing
Enforcement
Unfair Competition
Border Measures

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History of Intellectual Property in Thailand

History of Intellectual Property in Thailand

Based on existing historical records, Intellectual Property Law (IP Law) was introduced in Thailand more than 100 years ago to provide Copyright protection, especially for literary works. The protection of Intellectual Property works has since been developed and improved so that it now broadly provides protection for various types of innovations.

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Trademark Act


In 1909, sections of Criminal Law Ror Sor 127 (กฎหมายลักษณะอาญา ร.ศ.127) were enacted to provide protection for trademark owners in regard to offences relating to trademark imitation and trademark counterfeiting. However, such Criminal Law only mentioned guilt and punishments relating to such infringements, but made no mention of the civil rights of trademark owner. Therefore, in 1914, the official Trademark & Commercial Trademark Act B.E.1941 (พระราชบัญญัติเครื่องหมายการค้าและยี่ห้อการค้าขาย พ.ศ.2457) was first introduced in the country. This Trademark Act was the first law in Thailand which regulated the rules and civil rights relating to trademarks.
Since that time, the Thai Trademark Act had been continually improved. At present, the active Thai Trademark Act is: “Trademark Act B.E.2534 (A.D.1991), as amended by the Trademark Act (No.2) B.E.2543 (A.D.2000)”.
With regards to Criminal Law, the sections which mention the protection of the trademark owner from trademark imitation and/or counterfeiting, as well as the importation of imitated/counterfeited trademarks, are still indicated in Section 271 to 275 of the current Thai Criminal Code.

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Copyright Act


Since the introduction of Copyright law in Thailand in 1892, the Copyright Law had been improved and modified, to allow such Copyright law to become more specific and enforceable for Thai society, which has rapidly developed in regard to technology, economy and art.

The second issue addressed by Copyright Law is the Literary & Artistic Works Protection Act B.E.2474 (A.D.1931) (พระราชบัญญัติคุ้มครองวรรณกรรมและศิลปกรรม พ.ศ.2474), which changed its name to the Copyright Act B.E.2521 (A.D.1978) in1978, and was further improved by the latest version of the act which is the “Copyright Act B.E.2537 (A.D.1994)”

Patent Act


Patent law was first introduced in Thailand in 1979, in the form of the Patent Act B.E.2522 (A.D.1979). This Patent Act was the first act which regulated the rules relating to obtaining patent registration, including invention and design protection in Thailand. In 1992, the first Patent Act was amended, and some additional rules were added which relate to patent protection. The new and improved version was entitled the Patent Act (2nd issue) B.E.2535 (A.D.1992).

After seven years, the Patent Act (2nd issue) B.E.2535 (A.D.1992), was amended further, and additional rules relating to patent protection were added, including rules for obtaining “pretty patents” for inventions. This newer version of the Act, which still remains active, was entitled “the Patent Act (3rd issue) B.E.2542 (A.D.1999)”.

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Other forms of Intellectual Property


In addition to the foregoing main IP Laws, Thailand also has other areas of IP which may be used to protect innovators. The IP Laws which provide protection for IP works were enacted over the course of the past 10 years, and have not yet been amended.

These IP Laws were enacted so that IP owner/inventors in these areas would have a guarantee that their rights in such IP works would be protected, in accordance with these IP Laws. Additionally, these IP Laws also indirectly encourage Thai people to create more innovative works in such areas, which resulted in these IP Laws playing an important role in the development of Thailand’s economy. These other forms of IP Laws are listed below, from the oldest to the latest laws:
- The Plant Varieties Protection Act B.E.2542 (A.D.1999)
- The Protection and Promotion of Traditional Thai Medicine Wisdom Act, B.E.2542 (A.D.1999)
- The Protection of Layout-Designs of Integrated Circuits Act B.E.2543 (A.D.2000)
- The Trade Secret Act B.E.2545 (A.D.2002)
- The Geographical Indications Act B.E.2546 (A.D.2003)
- The Optical Disc Production Act B.E.2548 (A.D. 2005)
- The Film and Video Act B.E.2551 (A.D. 2008)

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A. International Conventions and Treaties


Thailand first became a member of the main Conventions and Treaties concerning IP matters in 1931, and followed up by becoming a contracting party in many other Conventions and Treaties relating to IP matters. The Conventions and Treaties, in which Thailand is a member or a contracting party, are listed below in chronological order, from the most recent to the oldest.

Membership of the World Intellectual Property Organization (WIPO) and the Treaties Administered by the WIPO, plus UPOV, WTO and the UN
 Patent Cooperation Treaty (December 24, 2009)
 Paris Convention for the Protection of Industrial Property (August 2, 2008)
 Convention Establishing the World Intellectual Property Organization (December 25, 1989)
 Berne Convention for the Protection of Literary and Artistic Works (July 17, 1931)

Contracting Party in Treaties relating to IP

IP-related Multilateral Treaties
 International Treaty on Plant Genetic Resources for Food and Agriculture
 United Nations Convention on the Law of the Sea (June 14, 2011)
 Convention on the Rights of Persons with Disabilities (August 28, 2008)
 Cartagena Protocol on Biosafety to the Convention on Biological Diversity (February 8, 2006)
 International Plant Protection Convention (October 2, 2005)
 Stockholm Convention on Persistent Organic Pollutants (May 1, 2005)
 WHO Framework Convention on Tobacco Control (February 27, 2005)
 Kyoto Protocol to the United Nations Framework Convention on Climate Change (February 16, 2005)
 Convention on Biological Diversity (January 29, 2004)
 International Covenant on Economic, Social and Cultural Rights (December 5, 1999)
 United Nations Framework Convention on Climate Change (March 28, 1995)
 Agreement establishing the World Trade Organization (WTO) (January 1, 1995)
 World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994) (January 1, 1995)
 Convention concerning the Protection of the World Cultural and Natural Heritage (December 17, 1987)
 Convention for the Protection of Cultural Property in the Event of Armed Conflict (August 2, 1958)
 Protocol to the Convention for the Protection of Cultural Property in the Event of Armed Conflict (August 2, 1958)
 Convention (I) for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field (June 29, 1955)
 Convention (II) for the Amelioration of the Condition of Wounded, Sick and Shipwrecked Members of Armed Forces at Sea (June 29, 1955)
 Convention (IV) relative to the Protection of Civilian Persons in Time of War (June 29, 1955)
 Agreement on the Importation of Educational, Scientific and Cultural Materials (September 18, 1951)
 Convention and Statute on Freedom of Transit (February 27, 1923)

IP Regional Treaties
 ASEAN Framework Agreement on Intellectual Property Cooperation

Regional Economic Integration Treaties
 ASEAN Trade in Goods Agreement (May 17, 2010)
 Agreement establishing the ASEAN-Australia-New Zealand Free Trade Area (March 12, 2010)
 Framework Agreement on the BIMST-EC Free Trade Area and its Protocol and the Declaration establishing the Bay of Bengal Initiative for Multi-Sectoral Technical and Economic Cooperation (February 8, 2004)
 Agreement on the Common Effective Preferential Tariff Scheme for the ASEAN Free Trade Area (January 28, 1992)
 Global System of Trade Preferences among Developing Countries (March 7, 1990)
 Agreement on Promotion and Protection of Investment in ASEAN (August 2, 1988)


IP-relevant Bilateral Treaties
 Agreement on Comprehensive Economic Partnership among Japan and Member States of the Association of Southeast Asian Nations (June 1, 2009)
 Agreement between Japan and the Kingdom of Thailand for an Economic Partnership (November 1, 2007)
 Closer Economic Partnership Agreement between Thailand and New Zealand (July 1, 2005)
 Free Trade Agreement between Thailand and Australia (January 1, 2005)
 Agreement between the Government of the Kingdom of Thailand and the Government of the Argentine Republic for the Promotion and Reciprocal Protection of Investments (March 7, 2002)
 Agreement between the Government of Canada and the Government of the Kingdom of Thailand for the Promotion and Protection of Investments (September 24, 1998)

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B. Current main IP Laws and IP-related Laws in Thailand


At present, Intellectual Property in the country is protected by the IP Laws which are listed below:

I. The Trademark Act B.E.2534 (A.D.1991) as amended by the Trademark Act (No.2) B.E.2543 (A.D.2000)
II. The Copyright Act B.E.2537 (A.D.1994)
III. The Patent Act (3rd issue) B.E.2542 (A.D.1999)
IV. The Plant Varieties Protection Act B.E.2542 (A.D.1999)
V. The Protection and Promotion of Traditional Thai Medicine Wisdom Act, B.E.2542 (A.D.1999)
VI. The Protection of Layout-Designs of Integrated Circuits Act B.E.2543 (A.D.2000)
VII. The Trade Secret Act B.E.2545 (A.D.2002)
VIII. The Geographical Indications Act B.E.2546 (A.D.2003)
IX. The Optical Disc Production Act B.E.2548 (A.D. 2005)
X. The Film and Video Act B.E.2551 (A.D. 2008)
XI. The Criminal Code Section 271-275
XII. The Establishment of and Procedure for Intellectual Property and International Trade Court Act B.E. 2539 (A.D.1996)
XIII. The Customs Act B.E. 2469 (A.D. 1926) (consolidated as of 2005)
XIV. The Competition Act, B.E. 2542 (A.D.1999)
XV. The Consumer Protection Act, B.E. 2522 (A.D.1979)
XVI. The Export And Import Of Goods Act, B.E. 2522 (A.D.1979)
XVII. The Industrial Products Standards Act, B.E. 2511 (A.D.1968)
XVIII. The Law on Ancient Monuments, Antiques, Objects of Art and National Museums B.E. 2504 (A.D.1961)

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Patents

 

2.1 Types of Patents


Thailand has three types of patent protection available under the Thai Patent Act B.E. 2522 (A.D. 1979), as amended by Patent Act (No. 2) B.E. 2535 (A.D. 1992) and Patent Act (No. 3) B.E. 2542 (A.D. 1999), which are as follows:

1. An invention patent which provides a 20-year term of protection from the filing date;
2. A design patent which provides a 10-year term of protection from the filing date; and
3. A petty patent which provides a 6-year term of protection, plus two allowable extensions of 2 years each.

The Thai Patent Act defines “invention” as any discovery or invention which results in a new product or process, or any improvement of a product or process. The Patent Act further defines “process” as any method, art or process of producing a product, maintaining or improving its quality, or adapting it to a better condition, including the application of such process.

Basically, a product or process which provides a technical solution to a problem may qualify for an invention patent, provided it meets the criteria specified in the Thai Patent Act.

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2.2 Patentability


2.2.1 Inventions
Thai Patent Act Section 5 states that a patent may be granted only for an invention in respect of which the following conditions are satisfied:

(1) the invention is new;
(2) it involves an inventive step;
(3) it is capable of industrial application.
(i) To further define the novelty criteria, Section 6 of the Thai Patent Act describes an invention as “new” or qualified for worldwide novelty, if it does not form part of the state of the art, which includes one of the following inventions:

(1) an invention which was widely known or used by others in the country, before the date of the application for a patent;
(2) an invention, the subject matter of which was described in a document or printed publication, displayed or otherwise disclosed to the public, in this or a foreign country, before the date of the application for a patent;
(3) an invention which is already patented, or petty patented, within or outside the Kingdom, prior to the date of the application for a patent;
(4) an invention for which an application for a patent, or a petty patent, has already been filed outside the Kingdom for over 18 months, prior to the date of application for a patent, but the patent or petty patent has not been granted;
(5) an invention for which an application for a patent, or a petty patent, has already been filed within or outside the Kingdom, and the application has been published before the date of filing the application in the Kingdom.
(ii) With regards to the inventive step criteria, according to the Thai Patent Act, an invention shall be deemed to involve an inventive step if it is not obvious to a person ordinarily skilled in the art.

In addition, it is specified in the Manual of Patent and Petty Patent Applications Examination of 2007, that an invention must provide an advantage or improvement resulting from at least one of the following: (i) effect of design/form; (ii) task; (iii) selection; (iv) requirement of a problem and solution; (v) effort; (vi) non-simplification; (vii) concentration of developmental steps; (viii) economic success; (ix) scientific technical research; (x) progressive; (xi) achievements by the invention; (xii) non-exchangeable compounds; and (xiii) surprising results.

(iii) Industrial applicability of inventions, as defined in the Thai Patent Act - An invention shall be taken to be capable of industrial application, if it can be made or used in any kind of industry, including handcrafts, agriculture and commerce.

2.2.2 Industrial Designs
An industrial design is the ornamental aspects or aesthetics of an article, and includes features pertaining to the shape, configuration or pattern which is applied to an article. Therefore, an industrial design could be defined as the features pertaining to the shape, configuration, pattern or ornamental aspects which are applied to an article by an industrial process, which are features of the finished article that which are judged by the eye.

According to the amended Thai Patent Act, which came into force on September 27, 1999, the right to apply for patent protection will no longer be restricted to Thai nationals and nationals of countries that have reciprocal patent agreements with Thailand. Thus, the right to apply for patent protection will be extended to nationals of countries which are parties to international patent treaties or conventions to which Thailand is also a party. Since Thailand is a member of the WTO and TRIPS, nationals of WTO member countries, such as Japan, U.S.A., U.K., Germany, etc. will receive the same protection accorded to Thai nationals. Under the amended Act, all foreign applications which are entitled to national treatment, will be able to claim priority rights within 6 months of the first foreign filing date in the case of a design application.

In regard to ownership, industrial designs are personal property, and are generally owned by the author of the industrial design. However, certain circumstances may result in a change to the ownership of the industrial design. For example:

 

Certain circumstances

Owner of the Industrial design

If the inventor created the industrial design

The inventor who created the industrial design

If an industrial design was created by the employee under an employment contract

The employer

 


To be eligible for a design patent, a design must be new and industrially applicable. The term of a design patent is 10 years, from the date that the application is filed in Thailand. This term cannot be extended. A design that has been disclosed to the public, and/or patented or registered elsewhere, prior to the filing of the Thai application, is not patentable in Thailand according to Section 57 of the Thai Patent Act 1999.

There is no system for registration of a partial design in Thailand. In general, only a complete product design can receive a Thai design patent, according to the current Thai Patent Act. However, it is possible to file a design patent application to protect only a specific part of the product. In accordance with Thai Law, one design application must only contain one design. Therefore, if you wish to file more than one embodiment of the design, you must file a separate design application for each embodiment.

2.2.3 Petty Patent Application
To be eligible for a petty patent, an invention must be new and industrially applicable, but it does not have to possess an inventive step. A Petty Patent shall be granted for any invention which is new and capable of industrial application. Provided the examiner deems that the invention is new and industrially applicable, the invention under a petty patent application will be accepted for registration. A request for a substantive examination is not required. Within a period of one year from the date of publication and registration of an invention, and the issuance of a petty patent, an interested person may request for an inspection to determine whether the invention to which the petty patent is granted is new and capable of industrial application.

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2.3 Exclusions from Patentability


According to Section 9 of the Thai Patent Act B.E. 2522, the following inventions are not eligible for patent protection:
(1) microorganisms which naturally exist, and their components comprise animals and/or plants, or extracts from animals or plants;
(2) scientific and mathematical rules and theories;
(3) computer programs;
(4) methods for diagnosing, treating, or curing human or animal diseases;
(5) inventions which are contrary to public order or morality, public health, or welfare.
For industrial designs, under Section 57, the following designs are not new, and will therefore be rejected by the Thai Patent Office:
Section 57
(1) A design widely known or used by others in this country, before the filing of the application for a patent;
(2) A design which was disclosed, or described, in this or foreign country, before the filing of the application for a patent;
(3) A design which was published before the filing of the application for a patent;
(4) Any design so nearly resembling any of the designs prescribed in (1), (2), or (3) as to be an imitation.

On the basis of the criteria set out above, a design which has already been patented or published in foreign countries, before filing the application in Thailand, will destroy the novelty of that design in Thailand, thus rendering the design not patentable.

Similarly, a design patent will not be available for a design, which is contrary to public order or morality, or for designs which have been prescribed by a Royal Decree.

We should like to strongly caution that as Thailand operates an “absolute novelty” and “first to file” patent system, your new design should be kept as confidential as possible until a design patent application date has been obtained. Despite the fact that you are the designer of the new product design, if the design is used or disclosed to the public before an application date has been obtained, this could cancel your ability to obtain a patent.

For petty patent applications, an applicant may not apply for both a patent and a petty patent for the same invention. However, applicants in either case can change the type of rights applied for, from petty patent to patent, and vice versa. This must be done prior to the registration of the invention and the issuance of the petty patent, or before the publication of the patent application.

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2.4 Patent Term and Maintenance/Renewal


Annuities are required to be paid only once a patent has been granted. At the beginning of the fifth year from the filing date, the first annuity (called the "5th annuity") is due. If the patent has not yet been granted, the accumulated annuities must be paid within 60 days from the date of the granting of the patent. For ordinary annuities, payment must be made within 60 days from the due date (i.e., each anniversary of the filing date). Also, patentees must pay a 30% surcharge on late payment for another 120 days, which is calculated after the first 60-day period. Bulk payment is permissible only when a patent has taken more than five years to issue. The Director-General of the Department of Intellectual Property will revoke patents for which payments have not been made within the allotted deadline or extension period.

According to Section 43 of the Thai Patent Act, if the annual fee and late fee are not paid by the deadline, the Director-General will submit a report to the Board of Patents (Board) to revoke the patent. The patentee may file a petition to the Board, within 60 days of receiving notice of the revocation, to request for an extension. If the Board rejects the request for the extension, the patentee can file an Appeal to the Central Intellectual Property and International Trade Court, within 60 days from the receipt of the notification, otherwise, the Board’s decision is final.

The petition for cancellation of the withdrawal order must cite compelling unexpected circumstances, which prevented the patentee from paying the annuity fee by the deadline. The patentee has the burden of proving that the failure to pay was unintentional. The Board will often reinstate a lapsed patent, if it finds that was miscommunication between the patentee and its agents, including providing the wrong annuity payment deadline, or wrongly believing or conveying that another agent was handling the payment. Citing miscommunication as a reason for non-payment of the annuity must be done with great care, as the Board will not accept a patentee’s claim that he did not know the deadline, or could not contact his agent. If non-payment was due to negligence on the part of the patentee or its Thai agent, then reinstatement is not assured.

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2.5 Rights and Obligations of Patent Owners


2.5.1 Patent Rights
According to the Thai Patent Act, a patentee of a granted invention patent has the sole rights to produce, use, sell, possess for sale, offer for sale, or import the patented products into Thailand. For a process patent, a patentee has the rights to use the process stated in the patent, produce, use, sell, possess for sale, offer for sale, or import into Thailand products made by the application of the patented process.

Furthermore, the patentee can use the term "Thai Patent", its abbreviation or any foreign word of the same meaning, on the product, the container or package of the product, or in the advertisement of the product. The use of words or letters shall also include the number of the patent.

The rights of the patent holder under this section shall be delimited by the claims. The characteristics of the invention, as set forth in the specification, and drawings will also be considered in the interpretation of the claims. However, the delimitation of the claims shall extend protection to characteristics of the invention which, although not specifically stated in the claims, in view of a person of ordinary skill in the art concerned with the invention, have properties, utility and effect equivalent to those stated in the claims.

The patentee’s sole right will not occur until the patent has been granted. Before a court action at the Intellectual Property and International Trade (IP&IT) Court can be initiated against an infringer of a Thai patent, it is necessary to have a patent certificate, with respect to the patent rights which are alleged to have been infringed. However, an act against the sole right of a patent holder should not be held to be an infringement of the patent, unless the patent application has been published.

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2.6 Limitations to Patent Rights


Patent Revocation
The Director-General may request for the Board to cancel a patent in the following cases:
When two years after the issue of the license, it appears that the patentee, his license or the licensee under the license has neither manufactured the product, nor applied the process under the grant in the Kingdom for no appropriate reason, or for the time being, the product under the patent or the product manufactured by the process thereunder, is neither being sold nor imported for sale, or it is being sold at an unreasonable price, and the Director-General views that is suitable that such patent be revoked.
The patentee has licensed other persons to exercise the rights in the patent in violation of Section 41, which states that the license contract and the assignment of a patent must be in writing and registered in compliance with the requirements, procedures and conditions prescribed by the Ministerial Regulations.

2.6.1 Prior User's Rights
An invention may form part of the state of the art by its ‘prior use’, which would result in it lacking novelty for the purpose of a patent. Therefore, the prior user of a technology may often have grounds to oppose a third parties’ patent application, to the extent that the claimed invention extends to use/technology practiced by the prior user in advance of the priority date of the application for patent.

However, if the prior use is ‘private use’, the invention would not be considered state of the art, because it would not have been widely known. Thus, a private use would not provide grounds for an effective attack on the validity of a disputed patent.

As mentioned earlier, Thailand’s patent system employs an ‘absolute novelty standard”, meaning that ‘prior use’ and/or ‘prior publication’ in any country may be used to determine if the invention is widely known. In Thailand, a prior user not would have the right to attack the validity of a patent by claiming that it had used the underlying technology/process in secret, before the filing date of the patent application, because use of the invention by the prior user did not cause the invention to become widely known.

2.6.2 Compulsory License
In certain instances, the non-use of a patent, subsequent to the granting of a compulsory license, may result in that patent being removed from the register. Accordingly, for this type of invalidity to exist, a compulsory license, in respect of the subject patent, must have already been awarded.

1. At any time after the expiration of three years from the granting of a patent, or four years from the date of application, whichever is later, any person may apply to the Director-General for a license, if it appears that at the time when such application is filed, the patent holder has not applied his rights (Section 46 of the Thai Patent Act B.E. 2542).
2. if the exercise of the patent rights of one party (the junior patentee) may infringe another patentee (the senior patentee) provided that:

- the junior patentee’s invention must be a substantial technological advancement which is
beneficial to the economy, compared to the invention under the patent for which the license is being sought;
- the senior patentee receives a cross-license to exploit the junior patentee’s patent rights; and the junior patentee shall not assign the legal license to anyone, unless it is as an assignment together with his own patent (Section 47 and Section 47 bis of the Thai Patent Act B.E. 2542).

3. A Ministry or a Department may exploit an exclusive right by itself, or by designating another person in a patent, for the benefit of public utilities or national defense; the preservation or acquisition of natural resources or the environment; the prevention of a severe shortage of food or medicine, or other necessities for living; or other public interests (Sections 51 and 52 of the Thai Patent Act B.E. 2542).
However, the applicant for a license must show that he made an effort to obtain a license from the patent holder, by proposing conditions and royalties which are reasonable under the circumstance, but no agreement could be reached within a reasonable period.

Government Uses
In order to carry out any service for public consumption, or which is of vital importance to the defense of the country, or the preservation or acquisition of natural resources or environment, or to prevent or alleviate a severe shortage of food or medicines, consumer goods and other foodstuffs, or for the sake of other public interests, ministries, bureaus and department of the government themselves, or through others, may exploit any invention under any patent. However, in doing so, a royalty must be paid to the patentee or exclusive licensee, and the patentee shall be informed in writing without delay.

In addition, with approval of the cabinet, the prime minister shall have, during a state of war or emergency, the power to order exploitation of any invention under any patent for the defense and security of the country, upon paying an appropriate royalty to the patentee, and the patentee shall be notified without delay.

Under these circumstances, the ministry, bureaus or department shall submit its offer, setting forth the amount of royalty and conditions for exploitation, to the Director-General. The patentee is entitled to appeal such an order or the amount of royalty to the court within 60 days from the date of receipt of such order.

Termination of Protection
The Director General may ask the Board to revoke a patent if: (1) two years after the issuance of the license, the patentee or licensee has not manufactured the product, or applied the process under the patent in the Kingdom, or for the time being, the product is not being sold or imported for sale, or it is being sold, but at an unreasonable price; or (2) patentee has licensed other persons to exercise the rights in the patent, without conforming to the prescribed procedures.

2.6.3 Other Cases
The following acts are not considered to be an infringement of a patent:
1. Any act in the interest of education, analysis, experimentation or research, provided that it is not contradictory to the patent holder’s ordinary course of use, and does not cause damage to the patent holder’s rightful benefits beyond appropriate reasons;
2. Manufacture of patented products or application of the patent process wherein the manufacture or the user, in good faith, has engaged in the production, or has acquired the equipment before the date of filing of the application in Thailand, without knowledge of the registration, or without there being suitable grounds for him to know the same;
3. Compounding of medicines, in accordance with a physician’s prescription, by a professional pharmacist or a medical practitioner, including handling of the said products;
4. Any act connected with an application for drug registration, wherein the applicant intends to produce, sell, or import the patented medical products after the expiry of the patent;
5. The use of an instrument, which is a patented invention, with a ship, machinery or other equipment of a ship from a member country of an international convention or treaty for patent protection to which Thailand is a party to when the ship entered the Kingdom, temporarily or by accident, and it is necessary that the instrument be used with the ship;
6. The use of an instrument, which is a patent invention, for the building operations relating to an aircraft, or with other equipment of an aircraft, or any vehicle from a member country of an international convention or treaty for patent protection to which Thailand belongs when the aircraft or vehicle enters the Kingdom, temporarily or by accident; and
7. The use, sale, possession for sale, offer for sale or import of patented products under the consent of the patent holder.

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2.7 Who May File and Where to File Patent Applications


A patent applicant shall possess any of the following qualifications:
(1) be a Thai national or a juristic person whose principal office is situated in Thailand;
(2) be a national of a country which is a member of an international convention or treaty for patent protection to which Thailand also belongs;
(3) be a national of a country which allows Thai nationals, or juristic persons whose principal offices are in Thailand, to apply for patents;
(4) have a domicile, or an actual and earnest ongoing functioning industrial or commercial enterprise in Thailand, or a country which is a member of an international convention or treaty for patent protection to which Thailand also belongs.

Where the applicant is a foreigner, the applicant must have an agent which has a contact address in Thailand. An agent must be a Patent Agent which is registered with the Thai Patent Office.

Clause 2 of Ministerial Regulation No. 21 provides that in applying for a patent for an invention, the applicant must file the application, using the form prescribed by the Director-General, with the competent officer, or send the application by registered mail to the competent officer at any of the following places: (1) the Thailand Department of Intellectual Property, Ministry of Commerce; (2) any provincial commercial office or governmental office, as prescribed by the Director-General. The application must be filed together with a description of the invention, claims and an abstract. For a better understanding of the invention, the applicant can submit drawings together with the application.

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2.8 "First to File" Principle


Thailand operates an “absolute novelty” and “first to file” patent system. As such, the first person to file an invention patent application will be granted a patent.

Section 16 of the Thai Patent Act states that if two or more persons have separately and independently made the same invention, and each of them has filed an application for a patent, the applicant who was the first to file shall be entitled to the patent. However, in case whereby the applications have been filed on the same date, the applicants shall agree on whether the patent should be granted to one of them, or all of them, or jointly. If no agreement has been reached within the period prescribed by the Director-General, they may bring the case to the court within ninety days after the expiration of the prescribed period. If they fail to do so within such period, they shall be deemed to have abandoned their applications.

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2.9 Priority


Section 19 bis of the Thai Patent Act states that the date of a first patent application which is filed outside of Thailand may be claimed by the applicant, according to Section 14, for a subsequent corresponding application which is filed in the Kingdom, within a period of twelve months from such date, and within 6 months of the first foreign filing date in the case of a design application.

Thailand is now the 142nd contracting state of the Patent Cooperation Treaty (PCT). The instrument of accession to the PCT was deposited with the World Intellectual Property Organization (WIPO) on September 24, 2009. The PCT entered into force for Thailand on December 24, 2009. PCT International Applications filed after December 23, 2009 can enter Thailand’s National Phase within 30 months from the first foreign filing date of the basic application.

Thailand is a member of the WTO and TRIPS, and therefore, nationals of WTO member countries, such as Japan, U.S.A., U.K., and Germany, etc. will receive the same protection accorded to Thai nationals. For non-PCT applications, all foreign applicants who are entitled to national treatment will be able to claim priority rights within 12 months of the first foreign filing date in the case of an invention application, and within 6 months of the first foreign filing date in the case of a design application.

If priority is not claimed, it is possible to file a non-convention application within 18 months from the first filing date, provided that the application has not been made available to the public by any means prior to the date of filing the Thai application. However, an invention for which a patent application was first filed more than 18 months ago, is no longer patentable in Thailand.

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2.10 Patent Applications


Section 18 of the Thai Patent Act requires that patent applications must satisfy the unity requirement. An application for an invention shall be deemed to meet this requirement if it relates to one invention, or a group of inventions, which are linked so as to form a single general inventive concept.

Clause 12 of Ministerial Regulation 21 states that in the case where the applicant has filed an application for a patent, or a petty patent, in a foreign country, the applicant may request to submit the description of the invention, claims and abstract in the foreign language of the original application. In such a case, the applicant must submit a description of the invention, claims and abstract in Thai, which are accurate and which correspond to the original application, within ninety days following the filing of the application. If the applicant fails to submit the document in Thai within the prescribed period, he shall be regarded to have filed the application on the date on which the document in Thai is submitted.

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2.11 Conversion of Applications for an Invention Patent into an Application for a Petty Patent


An invention, which does not have an inventive step, can be granted a petty patent, with a protection period of 6-years from the application date. Such protection term may be extended twice, for a 2-year period each time. It is not possible to obtain both a patent and a petty patent for the same invention. However, applicants in either case can change the type of rights applied for, from a petty patent to a patent, and vice versa. This must be done prior to registration of the invention and issuance of the petty patent, or before the publication of the patent application. An invention patent application can seek patent protection for an unlimited number of claims. However, a petty patent application can seek patent protection for no more than 10 claims.

2.13 Publication of a Patent Application


Once the application is filed and the formal requirements have been fulfilled, the application will proceed to the preliminary examination stage, which usually takes 1 to 1.5 years to complete. The Examiner conducts the preliminary examination to check the validity of the formal documents, and determines the patentability of the invention, as described in the specification, claims, drawings, and abstract.

If the Examiner finds that an amendment is required, an Office Action will be issued which will instruct the applicant to make the necessary amendments, and file a response to the Office Action within 90 days from the date the Office Action is received. The deadline to file a response can be extended twice for 90 days and 30 days, respectively.

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Overview


Patent Invention
Once the preliminary examination is completed, a notification for paying the publication fee will be issued. The average length of time for a patent application to be published may range from 2 to 3 years from the Thai filing date. The publication payment must be paid within 60 days from the day that the notification is received.

After the publication fee is paid, it will take approximately 2-4 months for the application to be published for opposition in the Thai Official Gazette for a period of 90 days. The opposition can only be filed within this 90-day period. A petition for the rejection of a patent can be filed at any time after the patent is granted, but must be filed before the expiry date of the patent.

Petty Patent
If the Examiner finds that an amendment is required, an Office Action will be issued which will instruct the applicant to make the necessary amendments, and file a response to the Office Action within 90 days from the date the Office Action is received. The deadline to file a response to the Office Action can be extended twice for 90 days and 30 days, respectively.

If no further amendment is required in the application, a notification to pay the publication and registration fees will be issued. The payment must be made within 60 days from the date that the notification is received. After the publication and registration fees are paid, the application will be granted a petty patent, and then annuities can be paid. The licensing agreement and compulsory license can be initiated after a petty patent has been granted.

Design Patent
Once the preliminary examination is completed, the notification for paying the publication fee will be issued. The publication period for the Thai Patent Office may range from 1 to 3 years from the Thai filing date. The publication fee must be paid within 60 days from the date that the notification is received. This deadline cannot be extended.

After the publication fee has been paid, it will take approximately 2-4 months for the application to be published for opposition in the Thai Patent Journal, for a period of 90 days. The Examiner will automatically conduct the examination.

2.14 Request for a Substantive Examination for the Patent Applications


Filing a request for a substantive examination of an invention application is possible once the application has been published. The deadline for filing a request is within 5 years from the publication date.

2.15 Substantive Examination and the Granting of a Patent


Copies of the examination and search reports, office actions and the patent which was granted in the corresponding application filed in another examining country e.g. the U.S.A., U.K., E.P., etc., must be submitted to the Thai Patent Office, as the examination of the Thai application will be initiated upon submission of the document(s) to the Patent Office.

These documents are needed by the Patent Examiner to support the examination in the substantive examination stage. If the applicant files the request for a substantive examination, but does not submit a copy of a corresponding patent, then an Office Action will eventually be issued to request for the corresponding patent and its office action(s), etc. As such, all the required documents and amendments to the claims should be filed when the request for a substantive examination is filed, so that the examination will not be delayed.

It is recommended that the Thai claims are amended so that they are based on the corresponding foreign patent, in order to expedite the substantive examination.

Furthermore, it is not mandatory to provide search reports which have been performed by foreign patent offices. However, if the substantive examination of the Thai application is in doubt, then it is possible that the Examiner will issue an Office Action to request for the applicant to submit the search report, office action, and references cited, etc., to be used along with the selected corresponding patent, as a basis for conducting a substantive examination of the Thai application.

If no further amendment to the application is required, then a notification for paying the registration fee will be issued.

2.16 Appeal/Opposition Proceedings


According to Section 31 of the Patent Act, any person who believes that he/she has a better right to the opposed invention than the applicant may oppose the patent application for said invention. In case the opposer, who filed an opposition based on the aforementioned grounds, can successfully prove that the invention belongs to him/her, the Director-General will reject the application. Afterwards, if the application is not appealed by the applicant, or is appealed and the Board or the Court has made a final decision, and the opposer files an application for a patent within 180 days after the rejection from the Director-General, from the date on which the final decision is made by the Board or the court, as the case may be, the opposer will be deemed to have filed his/her application on the filing date of the applicant, and the publication of the application of the applicant shall be deemed to be the publication of the application of the opposer. In this case, no person may oppose the application of the opposer, based on the grounds that he has better rights in the invention than the opposing party.

Since Thai Patent Act adopts a pre-grant opposition system, if the Director-General, after carrying out an examination of the opposition, decides that the claimed invention is not patentable or belongs to another person, he will reject the application, and not revoke the patent.

On the other hand, a petty patent will be issue once it has successfully passed the formalities examination. However, an interested party may, for a period of twelve months following the granting and publication of the petty patent, challenge the granting of the petty patent, based on the grounds that the application did not satisfy the requirements of novelty and the ability to be applied for an industrial purpose.

The party which does not agree with the Director-General’s decision may appeal the decision to the Board of Patent. The officer must send a copy of the appeal to the opposite party for their acknowledgment. In this regard, if any party to the case wishes to submit additional evidence, or make an additional statement in support of his/her argument, he/she may have to file an application with the Board within 60 days, as from the date of filing the appeal or from the date of receiving a copy of the appeal, except in the case of force majeure, or if there is a reasonable exemption.

Having received the additional evidence or statement from a party, the Board will notify the opposite party accordingly, so that the opposite party may oppose such evidence or statement within an appropriate period of time, as decided by the Board. Having examined the appeal and the submitted supporting evidence, the Board will render its decision, and will notify its decision, and the reason thereof, to both parties. Finally, the party which does not agree with the decision of the Board is entitled to file an appeal to the Court within 60 days from the date of receiving the Board’s decision. Failure to appeal to the Court within the prescribed time, will mean that the Board’s decision will be deemed final.

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2.17 Cancellation or Suspension of Patents


Once a patent has proceeded to grant, the ability to oppose such patent lapses (however, note the exception with petty patents). Nevertheless, Section 54 of the Thai Patent Act provides the public with the right to have a patent cancelled in certain situations.

At the outset, Section 54 provides that a patent that has not been granted in accordance with the statutory requirements of patentability, as set out in Section 5 (i.e. the novelty, inventiveness, and industrial application criteria), is invalid.

Hence, cancellation of a patent is possible at any time for any invention, which at the time of filing was not new, did not involve an inventive step, is not capable of industrial application, is not protected by the Thai Patent Act, or was applied for by someone without the right to apply for a Thai Patent. A petition to cancel an invalid patent may be submitted to the IP&IT Court by any person who has an interest in the patent, or by the public prosecutor.

2.18 Patent Infringements


Any act which is carried out before a patent is granted is not considered an infringement, unless the act was against an invention under a pending patent application which has been published in the official Patent Gazette, and the person, so acting, knew of the patent application, or had been informed in writing thereof. A complaint for related damages may be filed only after the patent is granted.

- Indirect Infringement
The Thai Patent Act does not have a clear provision on indirect infringement, presumption of infringement, doctrine of equivalents or estoppel. However, an indirect infringement may be considered an infringement of a patent. In the event of an infringement, both civil and criminal actions can be taken against the infringer.

-Presumption of an Infringement
In the case where a patentee of a process patent sues an infringer of his patent or petty patent, in a civil case, and can prove that the product manufactured by the defendant has the same or similar characteristics to the product made using the patentee’s process, it shall be presumed that the defendant has used the patentee’s process, unless the defendant can prove otherwise.

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Trademark


Definition and Registrability
A trademark means a mark that is used, or which is proposed to be used on, or in connection with, goods/services used by an individual, a business organization, or another legal entity to identify that the products or services that are provided to consumers under such the trademark, originate from a unique source, and also to distinguish its products or services from those of other entities. A trademark can be registered if it is able to distinguish the goods or services of a party, will not confuse consumers about the relationship between one party and another party, and will not deceive consumers with respect to the qualities of the products.

The essential function of a trademark is to exclusively identify the commercial source or origin of products or services. In other words, trademarks serve to identify a particular business as the source of the goods or services. Certain exclusive rights are attached to a registered trademark, which can be enforced by way of an action against a trademark infringement. Proprietary rights, in relation to a trademark, may be established through actual use in the marketplace, or through registration of the mark with the Trademark Office.

The trademark may be presented in the form of letters, words, phases, numerals, pictures, devices, logos, images, figures, symbols, signature, group of colors, shape or a three-dimensional object, or a combination thereof. To be registrable under Section 6 of the Thai Trademark Act 1991, a trademark shall consist of the following: (i) a “distinctive” trademark; (ii) a trademark which is not forbidden by this Act; and (iii) a trademark which is not identical or similar to those registered by others.

Under Section 7, a “distinctive” trademark is a trademark which makes the general public, or the consumer of goods, believe that the goods bearing that trademark are different from those of other persons.

A distinctive trademark shall possess or consist of at least one of the following essential particulars:
1) The name of an ordinary person, the first name and surname of an individual which are not ordinarily understood, the full name of a juristic person under related laws, or a trade name which is represented in a special, or particular, manner and having no direct reference to the character and quality of the goods.
2) A word or clause that has no direct reference to the character or quality of the goods, and is not a geographical name, according to the prescription of the Minister
3) Group of colors represented in a special or particular manner, or an invented letter, numeral or word.
4) The signature of the applicant for registration, or that of some predecessor in his business, or of another with his or her permission.
5) The photograph of the applicant, or that of another with his or her permission, or with the consent of his or her ascendants, descendants and spouse, in the case of a deceased person.
6) An invented picture.

In the case whereby a name, word or phrase which is contrary to the descriptions provided in (1) and (2) above is used as a trademark on goods which are widely distributed, or extensively advertised, under the rules and regulations prescribed by the Minister, and there is proof that the rules and regulations have been complied with, the trademark shall be deemed distinctive.

A Trademark which has no distinctive character (i.e. a mark which is not inherently distinctive) is prima facie unregistrable. However, the Trademark Office may still allow such marks to be registered, if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner). “Use” may include authorized use by a Licensee, or another party. If the Trademark Office is satisfied that the evidence demonstrates that a mark has “acquired” distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness.

Who May File and Where to File Trademark Applications
All individuals, juristic persons, business organizations, or other legal entities involved in production and business activities are entitled to file applications for trademark registrations to be used for products or services which they are manufacturing, or providing, or intend to manufacture or provide. Actual or prior use of a trademark is required, in order to seek trademark registration in Thailand, in the case whereby the trademark is not inherently distinctive, or it is identical with or confusingly similar to a trademark of another person’s trademark. So businesses, including foreign businesses, can seek registration of trademarks for future use in Thailand, provided that such registered mark is not discontinued for any three consecutive years, otherwise, the trademark is vulnerable to cancellation. Trademark applications can be filed with the Department of Intellectual Property.

"First to File" Principles
The "first to file" principle is also applied for trademark protection in Thailand. Accordingly, trademark registration will be granted to the person who first filed the trademark application.

Priority
Priority can be claimed in accordance with the Paris Convention, based on an earlier application filed in a foreign country, or an officially recognized international exhibition held in Thailand, or in a member of country of an international convention or treaty for the protection of trademarks of which Thailand is also a member, which has been organized by a government agency, state enterprise or other state unit of Thailand or of such country, or such international exhibition certified by the Thai government, the proprietor of such trademark may request a priority claim if he files an application for registration of 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. To secure the priority right, the application must be filed within 6 months from the date of the first application was filed abroad, or the date of the exhibition as mentioned above. Under the regulations issued on December 13, 1996, an applicant must request for a claim of priority when submitting the trademark registration application.

In order to claim priority, the following documents are also required:

1. A copy of the trademark application first filed abroad for the same trademark and goods as in the application filed in Thailand. The copy must be certified by a person with the authority to approve trademark registrations in the country of first application.

2. An executed Statement certifying that the application upon which priority is being claimed has neither been rejected nor abandoned by the applicant. Notarization is not required.

The certified copy of the priority Application and executed Statement must be submitted to the Registrar within 90 days after the date of filing the application. If these documents are not submitted within the 90 day time frame, the Registrar will not approve the priority claim for the subject trademark application.

Trademark Applications
Each application can be used for one class and one trademark only. Multi-class application is not applicable in Thailand. Different goods and services have been classified by the International Classification of Goods and Services into 45 classes (1 to 34 cover goods, and 35 to 45 cover services) under the Nice Agreement (currently the 8th edition is applicable).

The required necessary documents for filing a trademark application are as follows: (i) a recent and Power of Attorney which has been duly signed by the authorized representative of the Applicant, and notarized by a Notary Public. Legalization is not required; (ii) a specimen of the trademark. If the mark is in color, the specimen must also be in color. Thirty originals of the specimen for each class of goods in which the mark is to be registered should be supplied. The size of specimen should not exceed 5 centimeters (2 inches) in height or length; (iii) a detailed list of goods /services to be covered by the application, as a full class heading for the International Classification of goods is not allowed; (iv) if the proposed mark is not inherently distinctive for registration as a trademark, evidence of prior use (if any) should also be submitted to the Registrar within 30 days of the date of filing an application.

When filing an application to register a trademark or a service mark, it is necessary to list the goods or services to be protected in specific detail, because the government filing fee is calculated based on the number of item of goods at the rate of THB500 for each item of goods.

The Thai Trademark Office accepts a general power of attorney for the trademark filings by one applicant. One notarized Power of Attorney is sufficient for filing various Applications of the same applicant. The notarized Power of Attorney may not be submitted when a new trademark application is filed, and it is possible to request for an extension of time to submit the notarized Power of Attorney. There is no specific time period for submitting a notarized Power of Attorney to the Thai Trademark Office. However, the Applicant must do so without delay after the date of filing the application. There will be no extra cost involved with regards to submitting the letter requesting for a grace period for receipt of the notarized Power of Attorney.

Examination / Grant of Certificate of Trademark Registration
All trademark applications will be examined both grounds (i.e., the absolute grounds and relative grounds) by the Thai Trademark Office. After filing an application with the Trademark Office, it takes approximately eight to twelve months for the Registrar to examine an application. After the examination is completed and the application has been accepted for registration, the application will be published in the Trademark Gazette. If no objections are filed within 90 days after publication, registration will be granted, dated as of the day on which the application was filed. The Registrar will issue a notification to request for payment of the registration fee. The Certificate of Trademark Registration will be issued within two months after the registration fee has been paid. Barring any problems, it normally takes approximately twelve to fifteen months for a trademark to be registered.

Well-Known mark
The Department of Intellectual Property (DIP) of Thailand has issued a regulation concerning the recordation of well-known marks dated July 19, 2005. Owners of well-known marks, who wish to record their marks as well-known marks in Thailand, should submit an application together with evidence which proves the well known reputation of their marks.
To be recordable, a well-known mark must meet the following criteria:
- It is a trademark, service mark, certification mark, collective mark, or any other mark that is used
on items other than goods or services.
- It is a registered or unregistered mark.
- It is the same mark for which recordation is sought.
- It is a mark that has been used on goods or services by way of distribution, or has been
continuously used, advertised, or by other means in the usual manner, and in good faith, up to the
present date.
- It is a mark that has been widely used in the usual manner and in good faith, in Thailand or
abroad, such that it is well known to the general public, or those in the relevant industry in
Thailand.
- It is a mark that has been used so that its reputation for quality is highly accepted among
consumers.
- It is a mark that is used by its trademark owner, or his authorized representative or licensee, either
locally or abroad.

The criteria for determining a well-known mark are based on the following facts:
- Degree of awareness about, and acceptance of, the mark by the general public, or those in the
relevant industry.
- Period of time, scope and geographical area of use of the mark.
- Period of time, scope and geographical area of advertising and promotion of the mark, including
any publicity and exhibition of the goods and services on which the mark is to be used in fair
trade.
- Period of time and geographical area of registration of the mark.
- Records of successful protection or compulsory licensing of the mark.
- Value of the mark.
- Scope of domestic and overseas marketing.
- Maintenance of the reputation of the mark.
- Maintenance of the quality of the goods and services on which the mark is to be used.
- Results of surveys conducted by established organizations, in relation to consumer recognition of
the mark.

Benefits In Recording Well-Known Marks
Once a mark is recorded as a well-known mark in Thailand, the Trademark Registrar will use this list when considering new trademark applications which have been filed by third parties, to ensure that the applied for marks do not violate Section 8(10), which states as follows:

Section 8
“A trademark which possesses, or consists of, any of the following particulars shall not be registrable.
…..
(10.) A mark which, according to the criteria prescribed by the Minister, is identical or very similar to a well-known trademark, to the extent that it confuses or deceives the public as to the proprietor or the origin of the goods bearing the mark, regardless of whether or not the trademark has been registered;”

Protection Term and Renewal
The protection period for a trademark, service mark, certification mark, or collective mark is 10 years starting from the filing date. A certificate of trademark registration shall be effective from the granting date, and last for 10 years from the filing date, and can be renewed indefinitely for each consecutive 10-year term. A renewal application can be filed within 90 days before the expiration, to obtain an additional period of ten years, from the date of the expiration of the original registration, or from the date of the last renewal of registration. According to Section 42 of the Thai Trademark Act 1991, when a trademark is registered, the filing date of the application for that trademark shall be its date of registration. In Thailand, there is no grace period for the renewal of the mark. It is not possible to file a Renewal Application after the expiry date.

Rights and Obligations of Trademark Owners
A trademark owner shall be entitled to: (i) exclusive use of the trademark, including the right to license the right to use the trademark; (ii) request for any person who infringes his/her trademark rights to cease such infringement, and to request for any damages suffered. The trademark owner must use the trademark continuously, and must not discontinue use of the trademark for any consecutive 3 year period, in order to prevent it from becoming vulnerable for cancellation action based on the grounds of non-use. The registered trademark should to be put to use in Thailand within 3 years from its filing/registration date.

In the case that the registered trademark is not currently in use in Thailand, this will not impact the owner’s rights, until an interested third party attacks the owner’s trademark.

Appeal/Opposition Proceedings
The applicant may lodge appeals/oppositions against the Trademark Office’s rejection of an application or refusal to grant certificates. Any third party has the right to appeal or oppose the granting of a certificate for trademark registration, subject to a prescribed fee. The appeal/opposition must be made in writing, and submitted to the Trademark Office within 90 days from the receipt of the Trademark Office's decision, subject to the appeal/opposition. In the case whereby a third party opposes the granting of a certificate for a trademark registration, the opposition may be filed at any time during the validity term of the certificate. The Trademark Office shall be obliged to reply to the appellant within 90 days from the receipt of the opposition. In the case of any disagreement with the Trademark Office’s response, the appellant may appeal further to the IP & IT Court.

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Geographical Indications


Definition of Geographical Indications
Geographical indications is defined in the Geographical Indications Protection Act B.E. 2546 (2003) to mean name, symbol, or any other things used to call, or used in lieu of, geographic origin, and which indicates that the goods originated in the said geographic origin are of the quality, reputation, or specific characteristics of the said geographic origin. The Act came into force on April 28, 2004.

Protection Conditions
Foreigners wishing to apply for registration of a foreign geographical indication in Thailand must either be a national of, or originate from, a Trade-Related Aspects of Intellectual Property Rights (TRIPS) member state. It is not possible to register a foreign geographical indication in Thailand unless it is similarly protected in the country of origin and continuously used until the time the application is made in Thailand.
Exceptions
A geographical indication applying for registration for any goods must not:
(1) be a generic name for goods used with such geographical indication; and
(2) be a geographical indication that is contrary to peace or public’s good morals or national policy.

Who May File Geographical Indication Applications
Persons entitled to apply for registration of a geographical indication include:
(1) a government agency or other state organization with juristic status in the geographic origin of goods used with the geographical indication;
(2) an ordinary person, a group of persons;
(3) a juristic person whose business is in goods used with the geographical indication and domiciled in the geographic origin of such goods; and
(4) a consumer group or consumer organization for goods used with the geographical indication

Procedures
The procedure for filing a geographical indication application is unlike that for trademarks. Applications filed with the Department of Intellectual Property (DIP) must contain details relating to the quality, reputation, or any characteristic of the goods, geographic origin and other details prescribed in the Regulations. Applications not in accordance with the rules will be rejected, but applicants are entitled to appeal to the Board of Geographical Indications (Board) at the first instance and, if need be, to the Intellectual Property and International Trade Court (IP&IT Court) thereafter. If an application is in order and the geographical indication is registrable, the Registrar will order the publication of acceptance for registration for opposition purposes. Any interested party may lodge an objection against registration, and the applicant may file a counter-statement, within the prescribed periods. The Registrar will issue a ruling, which can be appealed by either party within the prescribed periods to the Board or the IP&IT Court.

Protection Term
Protection of a geographical indication becomes effective from the filing date of the application for registration. Once protection is obtained, the geographical indication is perpetual.

Cancellation and Invalidation of Certificate of Geographical Indication Registration
The registration may be cancelled if it has been obtained by deceptive means. Any interested person or competent official may request the Registrar to seek an order from the Board to change or cancel the registration of a geographical indication under certain circumstances, such as wrongful or covert registration of, or false information regarding the geographical indication. The decision of the Board may be appealed by any interested party, except in the case of a registration being cancelled on the grounds that the geographical indication was contrary to peace and order, good public morals, or national policy.

Usage and Suspension of Usage of Geographical Indication
Persons entitled to use a registered geographical indication are the manufacturers of the registered goods who are domiciled in the geographic origin of the said goods, or entrepreneurs who engage in the trade of such goods.

The Registrar is empowered to suspend use of a geographical indication if the manufacturer of the goods is using the geographical indication contrary to prescribed regulations. In such circumstances, the Registrar would first give notification to the manufacturer. If such person continues to fail to comply within the prescribed period and without any valid grounds, the Registrar may issue an order in writing suspending the use of geographical indication of the said person. The suspension period will not exceed two years counting from the date of receipt of the order. The same channels of appeal to the Court, as mentioned above, are available to persons whose use of the geographical indication has been suspended.
Remedies available include civil and criminal action. Provisions for civil relief are not set out in the Geographical Indication Act; however, Section 27 sets out definitions of “wrongful acts” which are essentially based on the tort of deception i.e. (1) using geographical indication to show or to deceive other persons that the goods which are not originated in the geographic origin specified in the application are the goods from the said geographic origin, (2) using geographic indication in any way that causes confusion or misrepresentation in the geographic origin of the goods and in the quality, reputation or other characteristics of the said goods, so as to cause damages to other business operators. Action would then be taken pursuant to the tort provisions of the Civil and Commercial Code.
Penalty
Criminal penalties for misuse of a geographical indication include a maximum fine of Baht 200,000 (Section 27). There are no imprisonment terms for offenses under the Geographical Indication law.

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Copyright


Authors and Copyright Owners
Copyright as defined by the Act, means the exclusive right to take any action in relation to the work created or made by the author. The Act also defines the word “author” as meaning the person who does the work or creates the work, as defined by the Copyright Act.

Apart from the author of a work, the copyright owners of a work shall also be entitled to copyright protection. The copyright owners of a work may be one of the following:
(i) The author or co-authors of the work;
(ii) A heir of the authors;
(iii) Copyright in the work created by the author in the course of employment is vested upon the author;
(iv) Copyright in the work created by the author in the course of commission is vested upon the employer;
(v) The person who makes an adaptation in a copyright work with the consent of the owner of copyright, and without prejudice to the owner of copyright in the work created by the original author;
(vi) The person who makes the compilation or the composition in a copyright work with the consent of the owner of the copyright, and without prejudice to the owner of copyright in the work created by the original author;
(vii) The Ministries, Departments or other government or local units are the owner of the copyright in the work created in the course of employment, order or control;
(viii) The person who is permitted to exercise the right;
(ix) The assignee of rights; and
(x) The State, in certain cases.
In accordance with Copyright Act in Thailand, the author of a work is the owner of the copyright in the work of authorship, subject to the following conditions:
(1) In the case of unpublished work, the author must be a Thai national or reside in Thailand or be a national of, or reside in, a country which is a member of the Convention on the protection of copyright of which Thailand is a member.
(2) In the case of a published work, the first publication must be made in Thailand, or in a country which is member of the Convention on the copyright protection of which Thailand is a member, or in the case the first publication is made outside Thailand, or in a country which is not member of the Convention on the copyright protection of which Thailand is a member, if the publication of the said work is subsequently made in Thailand or in a country which is member of the Convention on the copyright protection of which Thailand is a member within thirty days as from the first publication, or the author has the qualifications as prescribed in (1) at the time of the first publication. In the case the author must be a Thai national, if the author is a juristic person, it must be established under Thai law.


Copyrighted Works

Copyright protection is given to copyright works which fall within any of the following categories:

(i) Literary work means any kind of literary work such as books, pamphlets, writings, printed matters, lectures, sermons, addresses, speeches, including computer programs;
- Computer program means instructions, set of instructions or anything which is used with a computer so as to make the computer work, or to generate a result, no matter what the computer language is;
(ii) Dramatic work" means a work with respect to choreography, dancing, acting or performance in dramatic arrangement, including a pantomime;
(iii) Artistic work" means a work of any one or more of the following characteristics:
- Work of painting and drawing, which means a creation of a configuration consisting of lines, lights, colors, or any other things, or the composition thereof with one or more materials.
- Work of sculpture, which means a creation of a configuration with tangible volume.
- Work of lithography, which means a creation of a picture by a printing process, and includes a printing block or a plate used in the printing.
- Work of architecture which means a design of a building or a construction, a design of an interior or exterior decoration, as well as a landscape design or the creation of a model of a building or a construction.
- Photographic work which means the creation of a picture with the use of image-recording apparatus, which allows the light to pass through a lens to a film or glass, and developed with liquid chemical of specific formula, or with any process that creates a picture or an image-recording with any other apparatus or method.
- Work of illustration, map, structure, sketch or three-dimensional work with respect to geography, topography or science.
- Work of applied art, which means a work which takes each composition of the above – mentioned works for utility, apart from the appreciation in the merit of the work, such as for practical use of such work, decorating materials or appliances or using for commercial benefit. Provided that the work has an artistic merit, and it shall include photographs and plans of such work.
(iv) Musical work means a work with respect to a song which is composed for playing or singing, whether with rhythm and lyrics or only rhythm, including arranged and transcribed musical notes or musical diagrams;
(v) Audiovisual work means a work which consists of a sequence of visual images recorded on any kind of material, and which is capable of being replayed with an equipment necessary for such material, including the sound track of such work, if any;
(vi) Cinematographic work means an audiovisual work which consists of a sequence of visual images, which can be continuously shown as moving pictures, or can be recorded upon another material so as to be continuously shown as moving pictures, including the sound track of such cinematographic work, if any;
(vii) Sound recording means a work which consists of a sequence of music, sound of a performance or any other sound recorded on any kind of material, and capable of being replayed with an equipment necessary for such material, but not including the sound track of a cinematographic work or another audiovisual work;
(viii) Broadcasting work means a work which is communicated to the public by means of radio broadcasting, sound or video broadcasting on television or by any other similar means;
(ix) Any other work in the literary, scientific or artistic domain.

Exceptions (Works Not Subject to Copyright under the Copyright Act)

The Act specifically provides that the following are not deemed eligible for copyright protection:

(i) Daily news and facts that are, by nature, merely news items;
(ii) The Constitution and laws;
(iii) Announcements, orders and regulations of ministries, bureaus, departments or any other agency of the state or local jurisdiction;
(iv) Court judgments, orders, rulings and official reports;
(v) Translations and collections of those items as specified above, which are prepared by government agencies or local administrations.

Rights of Copyright Owner and / or Authors

The owner of the copyright has the exclusive rights of:

(i) reproduction or adaptation,
(ii) communication to the public,
(iii) letting of the original or the copies of a computer program, an audiovisual work, a cinematographic work and sound recordings,
(iv) giving benefits accruing from the copyright to other persons,
(v) licensing the rights, with or without conditions, provided that the said conditions shall not unfairly restrict the competition. If the owner of copyright permits a person to exercise the right, it shall be deemed that the permission does not restrict the owner of copyright to also give such permission to another person, except that the written permission specifies the restriction. The owner of the copyright may assign the copyright in whole, or in part, and may assign it for a limited duration or for the entire term of copyright protection.

The author of the copyright work is entitled to identify himself as the author, and to prohibit the assignee or any person from distorting, shortening, adapting or doing anything against the work to the extent that such act would cause damage to the reputation or dignity of the author. When the author has died, the heir of the author is entitled to litigation for the enforcement of his right through the term of copyright protection, unless otherwise agreed in writing.

Fair Use
An individual or an organization may use a published copyright work for “ non-commercial purposes” without the permission of the author, and without paying royalties, provided such use does not adversely affect the normal exploitation of the work and does not cause any detriment to the author’s enjoyment of copyright in the work. The author’s name and the origin of the work must however, be mentioned.
“ Non-commercial purposes” are defined to include the following acts:
(i) research or study of the work which is not for profit;
(ii) use for personal benefit, or for the benefit of himself and other family members or close relatives;
(iii) comment, criticism or introduction of the work, with an acknowledgement of the ownership of copyright in such work;
(iv) reporting of the news through mass-media with an acknowledgement of the ownership of copyright in such work;
(v) reproduction, adaptation, exhibition or display for the benefit of judicial proceedings or administrative proceedings by authorized officials, or for reporting the result of such proceedings;
(vi) reproduction, adaptation, exhibition or display by a teacher for the benefit of his teaching, provided that the act is not for profit;
(vii) reproduction, adaptation in part of a work, or abridgement, or making a summary by a teacher, or an educational institution, so as to distribute or sell to students in a class, or in an educational institution, provided that the act is not for profit;
(viii) use of the work as part of the questions and answers in an examination.

Term of Protection
In general, a copyright is protected for the lifetime of the author, plus fifty years after his/her death. In the case of a work of joint authorship, copyright subsists for the joint-authors, and continues to subsist for fifty years as from the death of the last surviving joint-author.
If the author or all the joint-authors die prior to the publication of the work, copyright subsists for fifty years as from the first publication of the work.

In the case of the author being a juristic person, copyright subsists for fifty years as from the authorship, provided that if the work is published during such period, the copyright continues to subsist for fifty years, as from the first publication.

Copyright work which is created by a pseudonymous or anonymous author subsists for fifty years, as from the authorship, provided that if the work is published during such period, copyright subsists for fifty years, as from the first publication.

Copyright in a photographic work, audiovisual work, cinematographic work, sound recordings or audio and video broadcasting work subsists for fifty years as from the authorship, provided that if the work is published during such period, copyright subsists for fifty years, as from the first publication.

Copyright in a work of applied art subsists for twenty-five years as from the authorship, provided that if the work is published during such period, copyright subsists for fifty years, as from the first publication.

Copyright in a work which is created in the course of employment, instruction or control, subsists for fifty years as from the authorship, provided that if the work is published during such period, copyright subsists for fifty years, as from the first publication.

Copyright Registration

Under the Copyright Act, works that are eligible for copyright protection do not have to be registered. Whilst there is no legal requirement for registration of a copyright work, it is recommended that copyright owners record their work and relevant information with the Department of Intellectual Property (DIP), Ministry of Commerce. This step is particularly valuable, as it would enable copyright owners to immediately prove ownership to an assignee or a licensee. Also in the event of a court action, such recordation may serve as important supporting evidence to prove ownership.

Filing a copyright recordation application requires a duly (notarized) Power of Attorney, Letter of Proof of Copyright Ownership, and one set of the copyright work. In the case whereby the original cannot be submitted, one set of a copy of the work may be used instead.

The Government fee for a copyright recordation is not required at present. The average length of time for an application to be issued a Certificate of Copyright Recordation, is approximately one to two months from the date of filing.

Assignment and Licensing of Copyright
Copyright is transferable (assignable). A copyright owner may assign the copyright in whole or in part, and may assign it for a limited duration or for the entire term of copyright protection.
A copyright owner may also grant another person/party a licence to permit reproduction, adaptation, dissemination to the public of its copyrighted work, or to allow such party to rent an original or a copy of a computer program, audio visual work, cinematographic work, and sound recording, with or without conditions. No conditions are permitted, which restrict fair competition, as provided in Ministerial Regulations B.E. 2540 (A.D. 1997), as issued under the Copyright Act B.E. 2537 (A.D. 1994).

Contract for Assignment and Use of Copyrighted Works

In the case where the copyright owner wishes to assign the whole, or part, of his copyright for a limited period of time, or for the entire term of the copyright protection, the Act requires that the assignment of the copyright must be made in writing and signed by the assignor and the assignee. If the duration is not specified in the assignment contract, the assignment shall be deemed to last for ten years.

In addition, the Copyright Act also recognizes moral rights, which covers the right of paternity and the right of integrity. The creator/author of a copyrighted work may prohibit the licensee/assignee from distorting, abridging, adapting, or doing anything to the work which will cause damage to the creator’s reputation or prestige.

Infringement and Enforcement
The Copyright Act recognizes the concepts of direct infringement and indirect infringement, which arises from a deliberate act with respect to all, or part, of a copyrighted work of another party without permission, either directly or indirectly.
Direct infringement consists of copying, modifying, reproducing, adapting, publicly disseminating, renting out an original or a copy (audio-visual, cinematographic, sound recording, computer program), or publishing by a person who is not the copyright owner or licensee. Computer programs are infringed if reproduced, adapted, disseminated to the public, or rented out without consent.
Indirect infringement, which occurs from selling, possession for sale, offering for sale, offering for rent or hire-purchase, public dissemination, distribution in any manner prejudicial to the copyright owner’s rights, or importing or making an order for import into Thailand by any person who is aware or should have been aware that such particular work infringes on copyrighted work for the purpose of seeking profit also constitutes infringement.

The prescribed period within which a legal action (civil) must be brought for copyright infringement is three years from the date the copyright owner became aware of the infringement, and not more than ten years from the date of the infringement.

Any unauthorized direct act with regard to audio-visual materials, cinematography, or sound recordings without permission, regardless of whether it pertains to sound and/or picture, is also regarded as an infringement.

No copyright can be claimed for daily news, constitutions, regulations, by-laws, judgments, orders, or government decisions based on the public’s underlying right to receive information.

Exemption from Copyright Infringement

An act against a copyrighted work of another person/party for any of the following purposes, is not regarded as copyright infringement, provided that such act neither conflicts with the normal exploitation of the work, nor unreasonably prejudices the lawful rights of the owners:

- Use for research, study, teaching, examination, or for personal or family benefit; for comment, or for reporting current events through mass media with acknowledgment of the copyright owner of the work; or for proceedings or consideration of government officials.
- Reasonable use (i.e., reasonable recitation of, copying, or reference to any part of a copyrighted work) with acknowledgment as to the ownership of such work. Reasonable copying for use in a library or for the purpose of research or study, and not for profit-making purposes.
- Use of a computer program for research, study, or for the benefit of the owner of the reproduction of the computer program; for comment, or for reporting current events through mass media with acknowledgment of the copyright owner of the computer program; for proceedings or consideration of government officials; for adaptation of the computer program when necessary for its use; or for making backup copy for reference or for public research and not for profit-making purposes.
- Reasonable dissemination to the public of dramatic or musical works by associations, foundations, or charitable organizations when not done for profit.
- Copying a copyrighted work in conducting government affairs by a government official with authority under the law or as directed by government officials, if such work is under official possession.

In addition, the following uses shall not be considered as copyright infringement:

-Use for drawing, painting, constructing, engraving, sculpting, carving, lithographing, photographing, filming, video broadcasting, or any similar acts with regard to any artistic work displayed in a public place (excluding architectural work).
-Use for acts as described immediately above (except construction work) carried out in relation to a work of architecture.
-Restoration of a building which is a copyrighted architectural work to its previous form.

Copyright Protection of Foreign Works

Thailand is a member of the International Convention for the Protection of Literary and Artistic Works (Berne Convention) concluded at Berne in September 1886, revised at Berlin on November 13, 1908, and completed by the Additional Protocol signed at Berne on March 20, 1914. Thailand did not accept the revisions of the Berne Convention as amended by the Rome Act of 1928, by the Brussels Act of 1948, or by the Stockholm Act of 1967. However, Thailand did accept Sections 22 to 38 of the Berne Convention revised in Paris in 1971.

Thailand has adhered to the Berne Convention since 1931 and TRIPS since January 1, 1995. Therefore, copyrighted work of an author from a member country of both the Berne Convention and TRIPS shall enjoy protection under the Thai Copyright Act (1994). The Copyright Act also protects foreign performers’ rights of member countries of TRIPS.

Section 8 of the Copyright Act provides criteria for both domestic and international protection of copyright in relation to nationality requirements as follows:

The author is the owner of copyright in the work of authorship subject to the following conditions:

(1) In the case of unpublished work, the author must be a Thai national or reside in Thailand or be a national of or reside in a country which is a member of the Convention for the protection of copyright of which Thailand is a member, provided that the residence must be at all time or most of the time spent on the creation of the work;

(2) In the case of published work, the first publication must be made in Thailand or in a country which is a member of the Convention for the copyright protection of which Thailand is a member, or in the case the first publication is made outside Thailand or in a country which is not member of the Convention for the copyright protection of which Thailand is a member, if the publication of the said work is subsequently made in Thailand or in a country which is member of the Convention for the copyright protection of which Thailand is a member within thirty days as from the first publication, or the author has the qualifications as prescribed in (1) at the time of the first publication. In case the author must be a Thai national, if the author is a juristic person, it must be established under the Thai law.

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Assignment and Licensing


The assignment, or license agreements, of IP objects must be made in writing, contain minimum requirements, and not be contrary to specific prescriptions in regard to the related rules. Most types of IP objects shall be registered with the related authorities in order to make them valid and enforceable in Thailand. The important rules and regulations in relation to the three main IP objects, i.e. 1) trademark, 2) patent, and 3) copyright, are as follows:

Trademark
Trademark Assignment – the assignment must be made in writing and registered with the Trademark Office, in order to make it valid and enforceable. The Trademark Office accepts the registration assignment for any pending and registered trademarks, and there is no specific deadline for registering the assignment in Thailand.

An important rule relating to trademark assignment is prescribed under Section 50 of the Trademark Act, whereby all associated trademarks shall be transferred, or inherited, only as a whole. The assignment cannot be registered only for some associated trademarks, and partial assignment is not allowed. In addition, the cancellation of filed/registered license agreements relating to assigned trademarks is always a prerequisite, before the assignment is granted in Thailand.

Trademark Licensing – the license agreement and any sub-license agreement must be made in writing and registered with the Trademark Office, in order to make it valid and enforceable. To register a sub-license agreement, the main license agreement must also be registered. If the license agreement is subject to a renewal, such renewal must be re-registered in order to maintain its validity.

A registrable license agreement, according to Section 68 of the Trademark Act, shall at least provide the following: 1) conditions and terms of the agreement between the trademark proprietor and the person applying to be an authorized licensee, which must actually enable the former to control the quality of the goods manufactured by the latter; and 2) the goods on which the licensed trademark is to be used.

The license agreement can include all pending and registered trademarks in Thailand. However, the Trademark Office will only register the licenses of registered trademarks. The license agreement for pending trademarks can be registered, only after it is granted registration, and without the requirement to enter into a new license agreement. There is no deadline for registering a license agreement in Thailand. The main consequence of a non-registered license agreement is that it is non-enforceable under Thai law, and the use by a licensee is not legitimate to defend against a non-use cancellation action.

Patent
Patent Assignment – the assignment must be made in writing and registered in compliance with the requirements, procedures and conditions as prescribed by the relevant Ministerial Regulations, in order to make it valid and enforceable. The Patent Office registers the assignment for any pending and registered patents, and there is no specific deadline for registering the patent assignment in Thailand. The application to register the assignment must be separately submitted with the Patent Office, together with the agreement which transfers the patent for each assigning patent.

Patent Licensing – the license agreement must be made in writing, and registered in compliance with the requirements, procedures and conditions as prescribed by the Ministerial Regulations, in order to make it valid and enforceable.

In granting a license, according to Section 39 of the Patent Act: 1) the patentee shall not impose upon the licensee any condition or restrictions, or any royalty term which unfairly limits competition. Conditions, restrictions or terms which tend to unfairly limit competition are prescribed in the Ministerial Regulation No. 25 (B.E. 2542), issued under the Patent Act B.E. 2522, and these include for example: a) prescribing the licensee to provide material, for use in the production, from the holder of the patent, or from the distributor, which the holder of the patent has prescribed or permitted, except where it can be proved that it has to be prescribed so that the product produced gives the result as stipulated under the patent, or it is a material which cannot be acquired from another source; b) prescribing conditions or restrictions of the licensee concerning the hire of persons for the production of the invention, except where it can be proved that such has to be prescribed, so that the product produced gives results which are in accordance with the patent; c) prescribing that the licensee sells, or distributes more than half of the product produced, to the holder of the patent; d) prescribing that the licensee limits the quantity of production, sale or distribution; e) prescribing that the licensee discloses the invention, which the licensee has improved, or to allow the patent holder to seek interest from the said invention without prescribing a suitable remuneration for the licensee; f) prescribing that the licensee exercise the rights under the patent to pay remuneration for the use of the invention according to the patent, after the patent expires, etc.; and 2) the patentee shall not require the licensee to pay royalties for use of the patented invention after the patent has expired. Conditions, restrictions or terms concerning royalties, which are contrary to this provision, are null and void.

Copyright
Copyright Assignment – the copyright owner can assign the whole, or part, of his copyright to another person for a limited period of time, or for the entire term of copyright protection. An assignment of copyright, other than by inheritance, shall be made in writing and signed by the assignor and the assignee. There is no need to register such assignment with the Copyright Office. If the assignment contract does not specify a period of time, it shall be deemed that the assignment is for a period of 10 years.

The rights of a performer can also be assigned, wholly or in part, and can be assigned for a specified period of time, or for the duration of the term of protection. Where there is more than one performer, a performer is entitled to assign only that portion of the rights belonging to him. An assignment of a performance right, other than by inheritance, shall be made in writing, and signed by the assignor and the assignee. There is no need to register such assignment with the Copyright Office. Should there be no period of time specified in the assignment contract, it shall be deemed that the assignment is for a period of 3 years.
Copyright Licensing – the copyright owner can grant licenses to other persons to use the rights to reproduce or adapt, disseminate to the public, or rent the original or a copy of a computer program, audio-visual work, cinematographic work, and sound recording, with or without imposing any conditions, but any conditions specified shall not restrict fair competition.
The conditions which restrict fair competition are prescribed in the Ministerial Regulations (B.E. 2540), issued under the Copyright Act B.E. 2537, and include for example: a) prescribing that the licensee acquire materials for use in the production of a copied work so permitted, either wholly or partly, from the owner of the copyright, except where it is necessary to do so for the purpose of obtaining a copied work which is in accordance with the standards set by the owner of the copyright; b) prescribing conditions or restricting the rights of the licensee, in relation to the hiring of a person to produce a copied work, except where it is necessary to do so for the purpose of obtaining copied work which is in accordance with the standards prescribed by the owner of the copyright; c) prescribing considerations for the granting of permission to exercise the rights in a copyrighted work at an unfair rate, when compared to the rate prescribed by the owner of the copyright for other licensees who have been granted permission in the same period of time for the same copyrighted work; d) prescribing conditions or restricting the rights of the licensee in regard to research or study of the copyrighted work, for which permission has been granted; e) prescribing conditions which enable the licensor has the right to terminate the permission at will, and without reasonable cause, etc.

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Enforcement


Generally, in Thailand, an IPR infringing act can be handled in accordance with civil, criminal or competitive procedures, depending on the seriousness of such act. In practice, before taking legal action in the form of civil or criminal actions against the alleged infringer, an IPR holder is firstly required to send a Cease-and-Desist Letter to the alleged infringer, to request for him/her to stop infringing their IPR. However, if the infringement cannot be settled amicably, the IPR owner can proceed to take any of the forms of legal action, as listed below, against the alleged infringer to compel them to seize their infringing activities.

1. Civil Action
Enforcement in the Intellectual Property and International Trade Court (the IP&IT Court)
Preliminary Injunction
– Can be filed either prior to, or during, court proceedings to stop such infringement.
– Available for all major IP laws i.e. Copyright, Patent, Trademark, and Trade Secrets.
– Very difficult to obtain, because the Court will need sufficient reason to conclude that an injunction is appropriate.
– Also depends on the extent of damages which both parties may incur.

Anton Piller Order
– Ex parte order for the search and seizure of evidence.
– Similar to a civil search warrant.
– Requires the alleged infringer to allow the IP owner to inspect and seize evidence from the infringer’s premises.
– The IP owner must demonstrate the following:
1) A strong prima facie case;
2) Damage is considered to be irreparable; and
3) There is a possibility that evidence may be destroyed or disappear.
Competent Courts
- The First Instance Court is the IP&IT Court
- An Appeal to the Supreme Court can be filed within one month from the date of the IP & IT Court’s pronouncement.

Remedies
• Compelling the termination of the act which infringes on the intellectual property rights;
• Compelling public rectification and an apology;
• Compelling the performance of civil obligations;
• Compelling the payment of compensation for damages;

2. Criminal Action
• Police Raid Seizure
- A very popular method as it is cost effective and requires less time to execute;
- A Search Warrant, which has been granted by the Court, is required before action can be taken.

• Customs Seizure
- Trained officers who are active in enforcement
- It is recommended that a Trademark Watch List is provided to the Customs Bureau.

Competent Courts
- The First Instance Court is the IP&IT Court
- An Appeal can be filed to the Supreme Court within one month from the date of the IP & IT Court’s pronouncement.

Penalties
- One of the following criminal penalties, or both, may be imposed on an IPR infringer: Imprisonment for a term not exceeding four years; and/or
- A fine not exceeding Baht 800,000.

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Unfair Competition


The main competition law in Thailand is contained in the Trade Competition Act B.E. 2542 (TCA 1999), which entered into force on 1 May 1999, and seeks to establish a legal framework to curtail unfair trade practices and prohibited monopolies. The main provisions are as follows:
Section 25 – Prohibition on businesses in a dominant position from abusing their market power by various specified acts (Abuse of Market Dominance).
Section 26 – Prohibition on mergers creating monopolistic power or reducing competition. Such mergers may be approved, if it can be shown that the merger is necessary in the business, and it is beneficial to the economy. (Merger Control)
Section 27 - Prohibition on business operators from colluding, agreeing between themselves and conspiring in order to create monopolistic power or to restrict competition. A number of the restricted hard core activities in this section are hard core restrictions which are per se anti-competitive. These are as follows:
(1) Fixing the selling price of goods or services, or limiting the quantities of goods/services for sale;
(2) Fixing the purchase price of goods or services, or limiting yjr quantities of purchase of goods/services for sale;
(3) Making joint venture agreements to take over, or to control, a market; and
(4) Setting terms or agreement or conditions in a manner which is calculated so that a certain party may win a bid, or a tender, for the supply of goods or services, or so that any other party may not compete in terms of price in a bid, or tender, for the supply of goods or services

In addition to the foregoing hard core restrictions, there is a ”gray list” of prohibited actions in respect of which the business operator may apply for exemptions, in order to include them in the contractual relationship.:
(5) the designation of a particular locality/jurisdiction within which a business operator may sell, or reduce, the sale of goods/services on offer, or the designation of customers to whom each business operator may sell goods or services – and in respect of such designations, so no other business operators can sell goods or services in competition;
(6) the designation of a locality from which each business operator must buy goods or services, or designate persons from whom the business operator must buy goods or services;
(7) Fixing the quantity of goods or services that each business operator can manufacture, purchase, sell or services, in order to limit the quantity thereof to be lower than market demand;
(8) Reducing the quality of goods or services to be lower than that manufactured, sold or serviced previously, by selling same at the old or higher prices;
(9) Appointing or assigning any person to be the exclusive seller of goods or services of the same kind or category;
(10) Setting conditions or practices in relation to the purchase or sale of goods or services, so that they are of the same pattern or as agreed upon.
In respect of each of the items 5 – 10, the business operator may seek permission, if it can be shown that such restrictions are a “necessity in business”. (Collusion)
Section 28 - Prohibitions on business operators in Thailand and overseas colluding in a manner which restricts the ability of residents in Thailand from purchasing goods directly from businesses overseas. (Agreements between domestic and overseas business).
Section 29 – A catch-all clause prohibiting business operators from taking any action which is not free and fair competition, and which causes destruction, damage, obstruction, impediment or restriction to the business operation of other business operators, or which causes them to terminate their business operation. (Unfair Trade Practices)
A Trade Competition Committee (TCC) was set up under the legislation to oversee and administer the legislation. If a business violates any of the forgoing sections, the TCC will have the power to issue an order in writing to instruct the business operator to suspend, stop or rectify the actions.
The TCA applies to all enterprises and business activities in Thailand, with certain enumerated exceptions, such as state enterprises, co-operatives, agricultural and co-operative groups and government agencies. To summarize the Sections quoted above, the TCA regulates abuse of dominance, anti-competitive agreements, unfair trade practices and interference with consumer purchases from foreign suppliers. Upon the passage of a ministerial notification which sets review thresholds, the TCA will also allow for the review of mergers by the TCC. The primary function of the TCC is to receive complaints about potential violations of the TCA. If a complaint is filed, the TCC may investigate, and order the errant company to undertake remedial action. If a violator does not follow the TCC’s order, the case may be referred to a public prosecutor.
In addition o the TCA, specific competition law provisions are included in the various intellectual property statutes to address transactions which are intellectual property related matters. The provisions in Thailand’s intellectual property statutes that directly address anti-competitive behavior have been influenced in part by the requirements of the TRIPs Agreement (section 8, article 40), as opposed to any indigenous jurisprudential development of fair trade practices in intellectual property matters.
(a) Patents
In Thailand, the law of patents is primarily enshrined in the Patent Act of A.D. 1979, as amended by Patent Act A.D. 1992 and A.D. 1999, together with various ministerial regulations. Section 41 of the current Patent Act contains a mandatory requirement that a patent license agreement (as well as an assignment of patents) should be registered with the Department of Intellectual Property.
There are certain procedural hurdles to be surmounted in the registration process. It is a requirement, under section 39 of the Patent Act, and corresponding Ministerial Regulations No. 25 A.D. 1999, that the license agreement does not contain any provisions that unfairly restrict competition. Hence, upon receipt of the application for registration, the Patent Registrar will examine the license agreement to ensure that it does not contain any anti-competitive provisions. The presence of such anti-competitive provisions will have the effect of barring the agreement from registration, meaning that the license will be treated as void in the eyes of the law.


(b) Copyright
Section 15 of Copyright Act provides that the copyright owner shall enjoy exclusive rights of granting licenses to other persons to use the rights, with our without imposing conditions, under the circumstance that the condition shall not restrict fair competition.
Prohibited restrictions on fair competition in copyright licenses are set out in the Ministerial Regulation Re: Condition for Granting Licensing Agreement dated February 14, 1997.
(c) Trademark
According to Section 68 of the Trademark Act B.E. 2534, the proprietor of a registered trademark may grant a license to other persons for any or all of the goods for which it is registered. License agreements in Thailand must contain quality-control provisions that enable the licensor to monitor and control the quality of the goods manufactured, or the services rendered by the licensee. The licensee does not have any right to transfer the license, or sub-license, for the trademark to other persons, unless the trademark license agreement authorizes him to do so.
An application for registration of trademark license agreement must be in accordance with the rules and procedures prescribed in Ministerial Regulation No. 1, which prescribes documents required by the Department of Intellectual Property, and lays out the process of filing an application. The main purpose of the license agreement registration, as necessitated by the government, is to ensure that the trademark proprietor has the ability to control the quality of the products/services bearing the licensed trademark to ensure the benefits to consumers.

Border Measures

Competent Authorities
• the Customs Bureaus
Border control measures
IPR holders may request the customs authorities to apply the following border measures:
• Inspection and supervision for the imports or the exports suspected of being the IPR infringing goods;
• Suspension of customs procedures upon the request of the IPR holder within 10 working days. However, in practice, the Customs officers would normally ask for the IPR holder’s assistance to confirm whether the goods are counterfeit within 48 hours after the request of suspension.

For requesting the competent Customs Office to apply border measures, IPR holders shall be obligated to:
• prove that they are the IPR holders;
• provide full information to determine/discover the import-export articles allegedly infringing intellectual property rights;

Remedies
• Administrative remedies are generally applicable to the counterfeiting goods detected at the borders. The infringers can be liable to a fine equal to quadruple the duty-paid value of the goods, or imprisonment for period not exceeding ten years, or both fine and imprisonment.

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