Intellectual Property Rights (IP) are a core business asset. They can be protected and enforced under Thai law by registering trademarks, patents, copyrights, and geographical indications with the Department of Intellectual Property.
Ploynapa Julagasigorn, senior associate in Tilleke & Gibbins’ Bangkok office, has contributed an overview of IP protection and enforcement in Thailand to Practical Law.
Trademark rights protect your business’s brands and logos in Thailand. The Department of Intellectual Property can grant protection for words, photographs, signatures, letters, paintings, numerals and combinations of these elements, as well as three-dimensional marks.
To receive trademark protection in Thailand, a mark must be distinctive by its character or acquired through extensive use. The latter requires significant documentation, such as copies of ads, invoices and catalogues, to prove the extent of the mark’s reputation.
The trademark application must be filed with the Department of Intellectual Property and be accompanied by a specification of the goods or services for which registration is sought. As Thailand does not follow the Nice Classification of Goods and Services, separate applications are advisable for registering trademarks in different classes.
Ownership of a trademark in Thailand is determined on the first-to-file basis, and non-residents can only register a trademark by appointing a Thai agent with a power of attorney. Infringement of a registered trademark is a criminal offence punishable with heavy fines and imprisonment.
In Thailand, patents are granted for inventions that are new, inventive and capable of industrial application. Petty patents are available to protect designs that are new and have industrial applicability (no inventive step is required).
Thailand has adopted the “first-to-file” system, meaning that the first inventor to file for a patent has exclusive rights from the date of filing or priority date. However, the law solves a conflict of rights between two or more inventors by stipulating that the applicants shall agree whether to grant a patent to one or all of them.
Thailand is a party to the Paris Convention and the Patent Cooperation Treaty, and patent applications may be filed at the Department of Intellectual Property. Disputes involving IP rights are heard by the Central Intellectual Property and International Trade Court. Decisions of this specialised court can be appealed to the Court of Appeals for Specialised Cases and ultimately to the Supreme Court.
Copyright is an intellectual property right that grants ownership rights to creators of original physical expressions of ideas. This generally includes literary works, audio-visual works, computer software, sculptures, paintings, and architecture. In addition to the exclusive right to reproduce and profit from their creations, copyright owners are also granted a moral right.
The work itself must exist in a tangible form to receive protection under Thai law. However, it does not protect concepts, principles, discoveries, methods of use or operation, processes, systems, or theories in science or mathematics.
Copyright transfer is allowed in Thailand, either through an assignment or license. When drafting an agreement, it is important to consider the long-term implications of the transaction. An experienced intellectual property attorney can assist you in preparing and filing the appropriate documents. Infringement of copyrights is punishable under Thai law and may result in civil, criminal, or injunction penalties.
As a member of the World Trade Organization and a participant in the Patent Cooperation Treaty, Thailand generally follows international intellectual property standards. However, employers need to localize IP agreements in order to comply with Thai law, and consider how Thailand’s unique provisions, such as those governing Geographical Indications (GIs), may impact their IP rights.
According to the Trade Secrets Act, information is considered a trade secret if it meets three criteria: it must be valuable because of its secrecy, be reasonable to protect and be known only by a limited number of people. Unlike patents and copyrights, which have a finite term, trade secrets enjoy perpetual protection as long as they remain secret.
Remedies for trade secret infringement include actual damages, punitive damages, loss of profits, injunctions and destruction or confiscation of materials, apparatus, tools or equipment used to commit the infringement. Disclosure of a trade secret is also prohibited by the Act, and includes acts ranging from bribery to espionage.