It is strongly recommended that entities which are considering entering the Thai cannabis market file applications to protect their marks and patents in Thailand as soon as possible.
Thailand operates under a first-to-file trademark system. The Thai Trademark Office has verbally confirmed that trademark applications which include goods or services relating to medical cannabis are registrable. That being said, recent developments indicate that the Trademark Office will require applicants who file specifically for medical cannabis goods or services to submit proof that the applicant has permission to produce drugs containing cannabis from the Thai Food and Drug Administration.
In addition, the Trademark Office is taking a conservative approach when it comes to the words and images that are registrable as trademarks. The Trademark Office has advised that words or images relating to cannabis will be refused based on Section 8(9) of the Thai Trademark Act, which states that a trademark that is contrary to public order, morality, or public policy shall not be registered.
Given the above, applicants should carefully consider the trademarks that they would like to protect in Thailand to avoid unnecessary refusals. If the applicant does not yet have such permission from the Thai Food and Drug Administration, it is recommended that the applicant’s mark make no reference to cannabis, either visually or verbally, and that the list of goods and/or services does not specifically refer to cannabis or related terminology.
In short, we urge applicants to enter into the Thai market early, with carefully-chosen marks and deliberately-worded descriptions of goods and/or services.
Cannabis-related products and processes are now eligible for patent protection in Thailand, with some restrictions. A cannabis plant, including its parts and crude extract, are considered mere products of nature and thus not patentable. Another important restriction applies to an invention that is contrary to the public order, morality, hygiene or wellbeing.
Following Thailand’s legalization of medical cannabis in February 2019, a cannabis-related invention for medical use is considered not contrary to public order, morality, hygiene or wellbeing, and thus may be patented so long as it satisfies other patentability requirements. Alternatively, because cannabis and its chemical derivatives are still on the list of Category-5 Narcotics which the present regulation would approve only medical use, a cannabis-related invention for non-medical use (e.g. food, cosmetics, and recreation) is still not patentable in Thailand until further changes are made to the regulation.
On a related note, cannabis/marijuana is an ingredient in a number of Thai traditional medicine recipes. These recipes may be considered prior arts and could be cited to examine the novelty and inventive step of a cannabis-related patent application. Other existing regulations, including the laws on herbal products, plant variety protection, and access/benefit-sharing control for biological resources, may as well apply to the commercialization of these IPs.
For more information, please contact Tilleke & Gibbins’ Bangkok office on [email protected] or +66 2056 5555.