Background The Trademark Office of Thailand’s Department of Intellectual Property (DIP) is making significant, concrete progress in revising the trademark registrar’s Trademark Examination Manual, with the aim of bringing Thailand’s trademark examination standards into alignment with international standards for trademark examination. This comes on the heels of the DIP’s recent efforts to improve examination standards for patent applications by revising the form for patent office actions to include sufficient reasoning and clarifying details on each instruction (the DIP is also currently working to resolve the lengthy backlog in patent examination and registration by increasing the number of examiners and proposing amendments to patent and design law). New draft manual On 28 January 2021 the DIP unveiled the first draft of the updated Trademark Examination Manual in a webinar attended by trademark lawyers, practitioners and trademark owners. The new draft manual seeks to create increased consistency through the establishment of clear and fair criteria to be used in examining trademark applications. The proposed revisions are based on the study of trademark laws and subordinate legislation, decisions of the Board of Trademarks, judgments from Thailand’s Central Intellectual Property and International Trade Court, and previous problems that have arisen in the course of examination. Key proposals Some of the most interesting draft revisions are summarised below. When determining the distinctiveness of a mark, there are five levels of distinctiveness (from highest to lowest): fanciful, arbitrary, suggestive, descriptive and generic. A mark consisting of geometric shapes or general designs (eg, infinite or repeated textile patterns) will not be registrable. There are clearer criteria for registering marks consisting of the names of individuals, the full names of juristic persons and trade names. In determining whether a mark is a geographical name, the mark will be considered based on the knowledge and perception of Thai

Getting the Deal Through – Licensing 2021, published by Law Business Research (part of the Lexology network), provides a comprehensive guide to licensing in 18 countries around the world with contributions by several leading international law firms. Alan Adcock, partner and deputy director of intellectual property, Siraprapha Claassen, consultant, and Kasama Sriwatanakul, attorney-at-law from Tilleke & Gibbins’ Bangkok office, co-authored the Licensing 2021 Thailand chapter, which covers the following topics: Laws: Unfair Contract Terms Act, Trade Competition Act, pre-contractual disclosure, registration of international licensing, implied obligations, Civil and Commercial Code, Trademark Act, Patent Act, and Trade Secrets Act. Intellectual property issues: Paris Convention for the Protection of Industrial Property, PCT, TRIPs. Contesting the validity of licensor’s IP rights, invalidity and expiry of IP rights, evidence of use, licensing unregistered IP, opposability requirements, sub-licensing, co-owners, trade secrets, and copyright. Software licensing: perpetual licensing, import/export restrictions, improvements and modifications, user restrictions, and legal developments. Competition law: Trade Competition Act, specific restrictions on licensing agreements, and significant court decisions. Indemnification, disclaimers, and damages: prevalence and enforceability of indemnity provisions and contractual waivers of damages. Termination: conditions, indemnity, agency, and impact on sub-licenses. Bankruptcy: impact of licensee bankruptcy on licensor and vice versa, protection, and rights to terminate. Dispute resolution: governing law, arbitration, enforcement, injunctions, contractual waivers Royalties and payments: currency conversion, tax, remittance restrictions, and jurisdiction-specific payments. The Thailand chapter is available below as a PDF. Tilleke & Gibbins also contributed the Vietnam chapter to Licensing 2021. To browse all 18 jurisdictions covered by the guide, please visit the Getting the Deal Through website.

Attorneys from Tilleke & Gibbins’ office in Hanoi have written the Vietnam chapter for Getting the Deal Through – Licensing 2021, a comparative guide to licensing law and practice in 18 countries around the world. Licensing 2021 provides an overview of a wide range of licensing relationships, including licensing of copyrights, trademarks, and patents; software licenses; technology transfer agreements; and franchise agreements. The book also addresses issues of royalties and other payments, taxes, competition law, and termination of licensing relationships. The Vietnam chapter was authored by Linh Thi Mai Nguyen, Son Thai Hoang, and Chi Lan Dang of Tilleke & Gibbins’ trademark team, along with corporate and commercial attorney Tu Ngoc Trinh, who has extensive experience in franchising and competition law. The Vietnam chapter is available below as a PDF. Tilleke & Gibbins also contributed the Thailand chapter to Licensing 2021. To browse all 18 jurisdictions covered by the guide, please visit the Getting the Deal Through website.

On March 1, 2021, the renewal process for qualifying trademarks in Thailand got significantly faster, with the examination of applications and grant of a certificate of renewal now able to be completed within 45 minutes of a renewal application being filed. The expedited process incurs no additional official fee. To benefit from this, applications must comply with all of the fast-track conditions specified in the recent notification from the Department of Intellectual Property (DIP): The total number of goods or services must not exceed 30 items. No changes may have been made to the particulars of the registration. The application must be filed at the DIP by either the owner or an appointed attorney. In the latter case, the power of attorney must authorize the attorney to collect the certificate on the owner’s behalf. Fast-track examination must be requested when the renewal application is submitted. Tilleke & Gibbins has already submitted a test case with the DIP and can confirm that, when the above conditions are met, the DIP can complete and issue a certificate of renewal within 45 minutes of submitting the renewal application. This is a very positive step for the DIP which continues to become increasingly brand-owner friendly and business-oriented. It will also enable smoother and more seamless trademark-related transactions, such as trademark assignments and recordals of change of name or address, which can be complicated when attempted while a renewal is pending. For more details on this development, or on any aspect of securing intellectual property rights in Thailand, please contact Tilleke & Gibbins at [email protected].