FAQs: Intellectual Property
Trademark/Service Mark License
Agreement
Q.
Is it necessary to register a license agreement for a trademark/service mark in
Thailand?
A. Yes.
However, before registering such a license agreement, the licensed trademark/service
mark must be registered with the Thai Trademark Office.
Q.
If a license agreement is not registered, what are the possible effects?
A. Such
license agreement will not be recognized under the Thai Trademark Act of 1991
and may be considered invalid and unenforceable among the contracting parties.
If a trademark/service mark which is registered in Thailand is not used in Thailand
by the owner of the mark but is used by the licensee, the registered license agreement
between the owner of the mark and the licensee can be used as a defense against
a cancellation action based on non-use.
Q. What terms and conditions are required
to be included in a license agreement for registration?
A.
A license agreement entered into by a licensor and
licensee must include sufficient quality control provisions, the licensed trademark/service
mark and the details of the registration thereof, and an indication of whether
the license is exclusive or non-exclusive.
Q.
Is it necessary to register a sub-license agreement?
A.
Yes. Certain clauses concerning the right to sub-license
must be included in the license agreement as well.
Q.
If a license agreement is not renewed at the time of expiration, is it necessary
to take any action regarding the registration of the license?
A.
Yes. When the license agreement
expires, an application for withdrawal or cancellation of the license agreement
registration must be filed with the Registrar.
(October
4, 2007)
The
above is intended to provide general information only. The contents
do not constitute legal advice and should not be relied upon as
such. If legal advice or other expert assistance is required,
the services of competent professionals should be sought.
For
further information, please contact Darani
Vachanavuttivong (formerly Vipa Chuenjaipanich),
Co-Managing Partner & Managing Director, Intellectual Property
Department (darani.v@tillekeandgibbins.com).
