JMBM IP Update: Thailand Allows Recordal of Well-Known Marks in the Trademark Office

In the fourth quarter of 2005, the Department of Intellectual Property in Thailand implemented new regulations for recording well-known marks. According to the regulations, a well-known mark can be recorded if it meets all of the following criteria:

  1. it is a trademark, service mark, certification mark, collective mark or a mark used in respect of things apart from goods or services;
  2. it is a registered or unregistered mark;
  3. it is identical with the mark being applied for recordal;
  4. it is a mark that has been used in any way extensively, regularly, in good faith and continuously;
  5. it is a mark that has been used extensively, regularly and in good faith so that the general public or relevant public in Thailand knows it well, regardless of whether its use has been made in Thailand;
  6. it is a mark whose use has resulted in its being well known and recognized by customers; and
  7. is a mark that has been used by the owner directly or by the owner’s representative or licensee, whether in Thailand or abroad.

This application must be supported by evidence of sales or advertisement of goods/services bearing the mark, or evidence of any types of extensive use of the mark, including:

  • documents showing the mark’s public recognition, such as advertisements, catalogs and brochures;
  • documents showing sales of products bearing the marks, such as invoices, receipts, shipping documents and tax receipts;
  • documents showing marketing activities, such as those related to advertising and marketing communications in connection with wholesale and retail information;
  • documents showing the size of the business; and
  • other evidence showing the mark’s use or registration or its fame or activities involving the protection and maintenance of its fame, such as the appraisal of its value, its sales rankings, quality accolades/awards, certificates issued by credible organizations, communications to the public through the Internet, and measures taken against infringement.

The Trademark Office has designated a committee to evaluate all applications for recordal, which provides for an appeal in the event of rejection. A rejection will not affect any right provided under the Thailand Trademarks Act of 1991.

For more information, contact Rod Berman at 310.201.3517 or RBerman@jmbm.com.