New Trademark Act News

 

New Trademark Act
The new Trademark Act is being considered by the National Legislative Council and is expected to be implemented in Q1 of 2016. The new Act will be significantly different from the current Trademark Act. The definition of trademark will be expanded to include sound mark. A multi-class application will now be available. The Section regarding the associated mark has been cancelled. The time to respond to the Office Action will be reduced to 60 days in most cases. Partial assignment will now be available (i.e. to assign the rights only in connection with certain goods in the specification). A grace period will now be available (i.e. 6 months after the expiration with a 20% surcharge). Sections regarding the Madrid Protocol will be introduced (i.e. the registration date, the qualification of the applicant, the validity term, office of origin, and International Bureau). A Section emphasizing the liability in using the packaging or container bearing the registered trademark, certificate mark, or collective mark of another for the purpose of passing off will be introduced. The changes in the official fees will also be listed.

The new Trademark Act is intended to address Thailand’s accession to the Madrid Protocol and existing issues which need to be updated in accordance with international practices including the definition of a trademark, the reduction of time to file a response, the grace period, and partial assignment.

In addition to the Act itself, it will be necessary to review the Ministerial Regulations to be issued which are primarily concerned with actual practice. The staff of Dej-Udom & Associates is actively participating in the relevant seminars and events in relation to this new Act. Dr. Poondej Krairit, as a member of the Committee of the Intellectual Property Association of Thailand and the Secretary General of the Intellectual Property Promotion Association of Thailand, is well informed on the updates through the associations and attends regular discussions with members and officers on the upcoming changes.

New Licensing Facilitation Act
This Licensing Facilitation Act B.E. 2558 (2015) applies to the granting of all permissions or licensing as well as all registrations or notifications in which the application for those are required to do so by laws or rules prior to engaging in any activity. Certain matters are therefore related to trademark registration. Each government entity has issued a document called “the public manual” in order to comply with this new Act. This manual generally includes the rules, regulations, steps, timeframe, and other points in connection with registration. For the Trademark Office, certain practices have been changed and several criteria in submission have become stricter. For example, for the assignment of ownership, the original certificate is now required. The extract from the Registry’s records is no longer sufficient. A copy of the notarized Power of Attorney is also required when filing a new application. Compared with past practices in which a subsequent submission of the supporting documents may be allowed, such is not permissible under the current practice. Though these changes are not outwardly visible, practitioners and agents still have to adjust the practice in order to address the stricter criteria.

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