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Summary of the Amendment to
the Trademark Act 1991
-
Intellectual
Property Department
Tilleke & Gibbins
The
amendment to the Trademark Act 1991, called the "Trademark Act (Issue No. 2)
B.E. 2543 (A.D. 2000)", was published in the Government Gazette on April 1,
2000. It will take effect on June 30, 2000.
Some of the major changes in the amendment to the Trademark Act are given below.
-
A combination of colors or group of
colors represented in a special or particular manner and a
three-dimensional mark may be registrable as a trademark if
deemed distinctive.
-
A company name which does not show the
company's juristic status (such as "Co., Ltd." or
"Limited") will be registrable as a trademark without
the condition that it must be presented in a stylized form.
Only the full name of a company (i.e., name which shows
its juristic status such as "Co., Ltd." or "Limited")
will have to be presented in a stylized form to be registrable
as a trademark. However, the full name must not be descriptive
of the goods or the characteristic of the goods for which
the trademark is being registered.
-
A trademark consisting of a geographical
indication will not be registrable.
- Thailand
is considering becoming a member of an international convention
or treaty for the protection of trademarks. Therefore, Section
11 and Section 28 of the Trademark Act 1991 were amended to
address this issue.
4.1.
In Section 11, the following provision was added as
paragraph 2: "In the event Thailand becomes
a member of an international convention or treaty for the
protection of trademarks, any application for trademark
registration which conforms to the provisions of such international
convention or treaty shall be deemed an application for
trademark registration under this Act."
4.2. Section
28 concerning priority claim was amended to allow also the
following persons to claim priority:
-
nationals of countries which are members of an international
convention or treaty for the protection of trademarks
of which Thailand is also a member, or
- persons who have domicile or actual operating
industrial or commercial enterprises in countries which
are members of an international convention or treaty for
the protection of trademarks of which Thailand is also
a member.
4.3.
Section 28 bis was added, entitling the proprietor
of a mark whose goods bearing such trademark have been entered
in
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an international exhibition held in a member country
of an international convention or treaty for the protection
of trademarks of which Thailand is also a member, or
- an international exhibition organized by
a government agency or state enterprise of such country
to claim priority according to Section
28, paragraph 1, if he files an application for registration
of the mark covering 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.
The categorization of an exhibition
of goods as an international exhibition and claiming of
priority right under paragraph 1 shall be in accordance
with the criteria, conditions and procedures prescribed
by Ministerial Regulations.
- Payment
of a publication fee will no longer be required, meaning that
the issuance of a notification requesting such payment and
the time entailed for both notification and payment will eliminated,
reducing, the length of the registration process. An application
which has been approved for registration will automatically
be published in the Trademark Gazette for 90 days to
allow for any opposition.
- Under
the Trademark Act 1991, the filing date of an application
in which a priority date was claimed will be replaced by the
priority date once the registration is granted. However, under
the Trademark Act 2000, the filing date of an application
in which a priority date was claimed will not be replaced
by the priority date. Thus, the date on which the application
was field in Thailand will be the registration date.
- Two
grounds for cancellation of a trademark registration were
added under Section 61 as (3) and (4).
"Any
interested person or the Registrar may request that the
Board cancel the registration of a trademark if it appears
that when field:
(1) The trademark is not distinctive
under Section 7.
(2) The Trademark is forbidden for registration under
Section 8.
(3) The trademark is
identical to a registered mark belonging to another person
in respect of goods under the same or different classes
but with the same characteristics.
(4) The trademark
is confusingly similar to a registered trademark belonging
to another person in respect of goods under the same or
different classes but with the same characteristics, which
might confuse or mislead the public as to the ownership
or origin of a product."
- Under
Section 95 of the new Act, the Board of Trademarks will be
recognized. The Board will be chaired by the Director-General
of the Department of Intellectual Property, not by the Director-General
of the Commercial Registration Department. The Secretary General
of the Juridical Council or his representative and the Attorney
General or his representative will still remain as members.
Also, the number of qualified persons who will be members
of the Board has been increased from "not less than four
but not more than eight" to "not less than eight
but not more than twelve", and they must be from the
academic field with knowledge and expertise in law or commerce
and experience in intellectual property, which was not a requirement
under the old Trademark Act. In addition, these persons must
be from public entities, not less than one-third of whom shall
be appointed by the Minister of Commerce.
The addition of paragraph 4 to Section 99 will not allow
any Board member with an interest in a subject matter brought
to the Board for consideration under Section 96(1) or (2)
to attend meetings called for the purpose of considering
such subject matter.
- Section
106 bis was added which will give competent officials
the authority to:
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enter places of operation, production, distribution, purchase
or storage facilities of a person where there is reason
to suspect a violation of the provisions of this Act.
- enter vehicles of any person or order the owner
or holder of a vehicle to stop or park the vehicle to allow
inspection under this Act
- investigate and seize evidence or property which
may be forfeited under this Act.
- arrest an offender under this Act, without need
of a search warrant, in circumstances as stipulated in the
Act.
- Section
112 bis and 112 ter were added in the new Trademark
Act, providing for the punishment of any person found obstructing
the Registrar or any competent official from execution of
the law under Section 106 bis, as well as any person
refusing to cooperate with the Registrar or competent official
in the performance of their duties under Section 106 bis.
- Section
114 of the Trademark 1991 was amended to read: "In
the event that an offender is a juristic person, if the offense
committed by such juristic person occurred due to an order,
action or lack of an order or action from the director, manager
or any person responsible for the activities performed by
such juristic person, such person shall be liable for
punishment pursuant to the provisions pertaining to the offense".
The phrase "unless they can prove that the offense by
such juristic person has been committed without their knowledge
or consent" was deleted.
- Applications
for registration of trademarks, service marks, certification
marks and collective marks field before the date of enforcement
of the new Act shall be considered applications under the
Trademark Act 1991 as amended by this
Act.
It
is expected that under the new Trademark Act 2000, applications
which were previously rejected by the Registrar due to non-distinctiveness
of the marks in respect of juristic name, combination of colors
or three-dimensional marks, may be accepted for registration
if they are deemed distinctive.
For
more information, please contact Ms.
Vipa Chuenjaipanich,
Co-Managing Partner and Managing Director, Intellectual Property
Department, Tilleke & Gibbins (e-mail vipa.c@tillekeandgibbins.com).
©2000
Tilleke & Gibbins, Bangkok, Thailand
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