The term intellectual property (IP) encompasses intangible creations of the intellect, including inventions, designs, and literary and artistic works, which are protected by law from unauthorized use, imitation, or forgery. IP encompasses patents, copyright, trade secrets and trademarks, which confer on legal and natural persons the right to enjoy their creations exclusively and preventing unlicensed use by others. The Department of Intellectual Property (DIP) administers Thailand’s IP system and operates under the supervision of the Ministry of Commerce.
In 2018, the Ministry of Commerce initiated novel law dealing with counterfeiting in Thailand. The new policy led to a significant decrease of counterfeiting goods on the market (85%) and to the establishment of the National Committee on Intellectual Property Policy and a subcommittee on enforcement of IP protection laws. Following this, the United States Trade Representative (USTR) removed Thailand from its Priority Watch List.
Trademarks
The Trademark Act 1991 (as amended by the Trademark Act (No. 2) BE 2543 and Trademark Act (No. 3) BE 2559) governs the registration and protection of trademarks. The application for a trademark is to be submitted to the DIP and to be registrable, the trademark must be:
✓ Distinctive;
✓ Not prohibited under Section 8 of the Trademark Act (No. 3) B.E. 2559 (“TMA”); and
✓ Not to the same as, or similar, to a trademark registered by another person.
Currently, Thailand has adopted the 11th edition of the Nice Classification, under which 34 classifications of goods (Classes 1 to 34) and 11 classifications of services (Classes 35 to 45) exist. Applicants must be aware of a few things to register their trademark:
✓ The registration can be for a certificate of service mark, certification, or collective mark. Each has its own form prescribed by the Ministerial Regulation (B.E. 2535 (1992)) issued under the TMA;
✓ If the applicant is a foreigner, they must have a fixed address in Thailand. Non-residents must appoint a Thai resident and grant them a power of attorney to be able to register a trademark;
✓ All the required documents must be submitted in the Thai language; and
✓ The total registration process can take between 12 and 18 months.
The Madrid Protocol is another international trademark process that owners should consider when applying to register a trademark internationally. It may also be helpful to note that law is not fixed and there could technically be changes in future.
Patents
Patents in Thailand are governed by the Patent Act B.E. 2522 as amended by the Patent Act (No.2) B.E 2535 And the Patent Act (No.3) B.E. 2542 (“Patent Acts”). A patent may be granted only for an invention and when the following conditions are satisfied:
1. The invention is new;
2. It involves an inventive step; and
3. It is capable of industrial application.
The owner is granted the exclusive right to produce and distribute the product for 20 years. Invention is defined by appearance, element, or mechanisms of a product in addition to procedure for production, maintenance, or utility development of the product. Patent, petty patent and design are differentiated under this category.
A petty patent protects the invention except that there is no inventive step, but rather a moderate technological development or low level of innovation with more utilisation. The product can be protected for 6 years. Patents and petty patents have the same protection for features, components, structure, or mechanism of the product whereas designs are protected for shape or configuration.
Designs protects the external structure and are different from invention. It can be registered or unregistered. The former is protected by the Patent Acts. The design must be new, includes lines or colours that give a special appearance to the product, and are for industrial use.
Thailand is a member of the Patent Cooperation Treaty (PCT) which facilitates an international patent application. The treaty aims to lessen burdens and procedures and expenses of clients. The treaty is a patent registration system but only facilitates overseas registration.
Copyright
In 2020, the Cabinet approved a draft of amendments to the Copyright Act B.E. 2537 (1994) (“Draft Amendment”), which aims to bring Thai copyright law in line with the World Intellectual Property Organization (WIPO) Copyright Treaty. Copyrights and its enforcement are governed by the amended Copyright Act B.E. 2537 (1994). A copyright owner has the exclusive right to:
✓ Reproduce or adapt the work;
✓ Communicate the work to the public;
✓ Rent out the work, either the original or the copies;
✓ Assign the benefits accruing from copyright to other persons; and
✓ License the exclusive rights to other persons with or without conditions (which cannot unfairly restrict competition).
Under the act, copyright works are works of authorship, whatever may be the mode or form of its expression, with the following categories: literary, dramatic, artistic, audio-visual, cinematographic, sound recording, sound and video broadcasting work, or any other works in the literary, scientific, or artistic domain.
The author of a work shall be the owner of the copyright in the work, subject to the following conditions, depending on whether there is published or unpublished works:
The proof of ownership can be recorded and issued through the DIP, but the copyright protection will arise automatically on creation or publication of the work. Copyright under the Act will last for the life of the author and 50 years after his death.
Trade Secret
A trade secret is the trade information that is not yet publicly known and provides an economic benefit over competitors. In Thailand, trade secrets are covered by the Trade Secrets Act B.E. 2545 (2002) as amended by Trade Secret Act (No. 2) B.E. 2558. According to the DIP, “trade information” is information that can convey a statement, a story, fact, or anything regardless of the means. Trade information includes ingredients of a product or work formula which is made through a specific method or technical process.
The commercial value of the information must be derived from its secrecy. The owner of the information should take “appropriate measures” to maintain its secrecy but is entitled to disclose or deprive himself or herself of it, use the trade secrets, or license someone else to disclose it. The trade secret is protected while it remains a secret and what is considered “appropriate measures” will depend on the nature of the secret. The use of non-disclosure agreements (NDAs) is likely to be seen as appropriate measures in various business contexts.
MPG provides advice to businesses and private clients to ensure the protection of their intellectual property. We serve as advisors, counselling clients about IP matters, and represent clients in court proceedings. For more details on IP services, please contact us at [email protected].