January 12, 2012

Recent Supreme Court Decision on the Issues of Trademark Licensing Agreements

Asia IP

Similar to the global practice, Section 68 of the Thai Trademark Act 1991 stipulates that the owners of trademarks or service marks registered in Thailand who license other parties to use their trademarks or service marks for any or all of the goods or services are required to register the license agreements with the Department of Intellectual Property. Failure to comply with the contract formality requirement would result in the invalidity of the licensing agreement.

Unfortunately, in practice, the issue is often ignored when the licensing transaction reaches closure. This situation frequently occurs in a transaction between local Thai parties who may not be familiar with the international legal practice, resulting in the question on trademark licensing agreement being submitted to the Supreme Court for review.

A recent Supreme Court decision No. 5219/2550 (2007) issued a ruling on an aspect of trademark licensing agreement which has rarely been discussed: the question of the intention of the parties to the agreement.

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