Thailand Trademark Applications: Filing, Registration, Renewal and Management

As more Korean businesses expand into Southeast Asia, including Thailand, many are seeking local trademark protection before entering the market.

Even if a trademark has already been registered in Korea, the trademark rights are not recognized in Thailand. In order to protect your brand in Thailand, you must secure separate rights according to Thailand's trademark system.

In this article, we will look at the main features of the Thai trademark system, application procedures, duration and renewal, and rights management after registration.

Thailand basically adopts a first-to-file system.

Therefore, even if you have not yet used your trademark in Thailand, it is important to secure the rights by applying first.

Conversely, even if a product is already being sold in the Thai market or brand awareness has been established locally, problems may arise if a third party first applies for the same or similar trademark.

Therefore, if you are preparing to enter the Thai market, it is advisable to review the timing of trademark application along with your business entry plan rather than planning to secure trademark rights based only on the actual start of sales.

Additionally, if you first applied for a trademark in Korea, you can review the priority claim under the Paris Convention. 

One of the aspects of Thailand's trademark system that is particularly worth paying attention to is the government fee structure based on the number of items of designated goods and services.

Thailand’s Department of Intellectual Property lists an application fee of THB 1,000 per item where a class contains one to five goods or services. For more than five items in a class, the application fee is THB 9,000 per class.

At registration, the fee is THB 600 per item for one to five items in a class, or THB 5,400 per class for more than five items.

Therefore, in Thailand, rather than unconditionally listing as many products as possible in the relevant class when applying for a trademark, it is important to have a strategy of composing designated goods by considering products that will be used in actual business and the possibility of future business expansion.

Even if a Thai trademark application passes the examiner's examination, the entire process does not immediately end. After a trademark application is published, a third party may file an opposition to the trademark.

Under Section 35 of Thailand’s Trademark Act, a person claiming better title to the mark or another statutory ground may file an opposition within 60 days of publication.

An applicant served with an opposition must submit a counterstatement within 60 days of receiving the copy, under Section 36.

Therefore, in Thailand, it is necessary to check the notice and opposition procedures even after applying for a trademark.

The overall flow of trademark applications in Thailand can be understood as follows.

Let's find out what to look for at each step.

If you are preparing to apply for a trademark, you must first check whether an identical or similar trademark has already been registered or applied for.

In particular, if the brand to be used in Thailand is written in English, it is necessary to consider not only the English notation but also the form and pronunciation when written in Thai.

Therefore, rather than simply checking for identical English trademarks, it is important to broadly review prior trademarks that may actually conflict in Thailand.

After prior trademark research, we prepare trademark samples, applicant information, designated goods and services, and apply.

What is especially important at this stage are designated goods and services. As seen earlier, in Thailand, government fees vary depending on the number of designated goods and services, so it is necessary to select products according to the actual scope of business.

The applied trademark will be reviewed by the Thailand’s Department of Intellectual Property.

During the examination process, it is reviewed whether the trademark meets the registration requirements, whether it is distinctive, whether it does not fall under the grounds for non-registration as stipulated by law, and whether it is the same or similar to a preceding trademark.

If reasons for rejection are found as a result of the review, a response may be necessary.

Therefore, when applying for an overseas trademark, it is important not only to simply submit the application, but also to consider whether you can respond appropriately according to the local system when reasons for rejection arise.

If the examination results determine that there are no problems with registration, the trademark application is announced, and third parties can file oppositions during a certain period of time.

In Thailand, the opposition period is 60 days from publication, so applicants should monitor the application after it is published.

If there are no problems with registration after going through procedures such as objections, the trademark is registered by paying the registration fee. According to official data from the Thailand’s Department of Intellectual Property, registration fees also vary depending on the number of items of designated goods and services, so it is recommended to consider the overall cost structure from the application stage.

A Thai trademark registration lasts ten years from the registration date, which is generally deemed to be the filing date under the Trademark Act.

And it can be continuously renewed for 10 years according to certain procedures.

Therefore, if you are a brand that will be used for a long time in Thailand, you must manage the renewal date from the time of registration.

However, what is noteworthy about Thailand's renewal system is that even if you miss the expiration date, you can renew for a certain period of time.

According to Article 54 of the Thai Trademark Act, trademark holders can apply for renewal within 3 months before the expiration of the registration period.

But what happens if I fail to apply for renewal during this period?

In Thailand, you can apply for renewal within 6 months after the expiration date.

However, in this case, in addition to the normal renewal fee, an additional fee of 20% of the renewal fee must be paid.

A trademark is not a right for which all management ends the moment a registration certificate is received.

In particular, trademark rights secured overseas need to be continuously managed in connection with actual business.

Thai trademark law provides for a cancellation system related to non-use of registered trademarks.

Therefore, if you are using a trademark registered in Thailand in your actual business, it is advisable to systematically manage materials that can prove the use of the trademark, such as product packaging, sales pages, advertising materials, and transaction materials.

Rather than simply registering other trademark rights, it is important to manage actual usage data by taking future rights disputes into consideration.

During the company's overseas expansion process, the company's English name or address may change.

In this case, it is necessary to check whether the information of the trademark holder registered in Thailand matches the actual company information.

If changes are made to trademark holder information but are left unattended for a long period of time, unnecessary problems may arise in the future in the process of transferring, renewing, or responding to disputes.

For companies entering Thailand, securing trademark rights means more than simply registering a brand.

If you are planning to enter the Thai market, rather than simply applying for the trademark used in Korea, you need a strategy to secure trademark rights by checking Thailand's prior trademarks, selecting designated goods necessary for your business, and considering the priority period and application/registration procedures.

In addition, even after trademark registration, continuous rights management is important, such as managing actual usage data and rights holder information and not missing the renewal period.

If you are preparing to enter the Thai market or need to secure trademark rights for a brand to be used in Thailand, please review with an expert an overseas trademark application strategy that takes into account Thailand's local system and business plan.