Intellectual Property

[~G~]

I am planning to start importing a few products To Thailand (through a registered Thai company with an import/export license) and would like to market and sell them under one "product line". Does anyone have experience in registering a trademark in Thailand, any links or relevant info?

Any advice will be appreciated

p.s.: I realize this is a question for a lawyer - nevertheless hoping to get some advice before I start to be charged by the hour...

Edited June 12, 2005 by ~G~

[Sumitr Man]

Not too sure I'm allowed to do this, but here you go:

TRADEMARK ACT B.E. 2534

As Amended by the Trademark Act (No.2) B.E. 2543

http://members.tripod.com/asialaw/database/trademark.html

Should answer most of your questions.

SM

[~G~]

Thanks, Samitr Man, for the link.

The following describes the characteristics essential to a distinctive trademark:-

    (1) a personal name, a surname which is not according to its ordinary signification, a name of juristic person or tradename represented in a special manner;

    (2) a word or words having no direct reference to the character or quality of the goods and is not a geographical name prescribed by the Minister in the Ministerial Notifications;

    (3) a specially designed combination of colors, stylized letters, numerals or invented word;

    (4) the signature of the applicant or another person who has given his or her permission;

    (5) a representation of the applicant or of another person with his or her permission or of a dead person with the permission of his or her heirs;

    (6) an invented device.

(2) states that the word "Good", for example, cannot be used as a trademark (naturally..). But (3) states I can use stylized letters. So if, for the sake of the example, the word "Good" is written in distincitvely stylized letters - can it be used then?

Another point -

Section 9

An application for registration of a trademark may be made for specific goods in one class or in different classes but the particular kinds of goods for which protection is sought shall be clearly specified.

An application may not cover goods of different classes.

The classification of goods shall be as prescribed by the Ministerial Notifications.

where can we find these "Ministerial Notifications"??

[Sumitr Man]

Thanks, Samitr Man, for the link.

The following describes the characteristics essential to a distinctive trademark:-

     (1) a personal name, a surname which is not according to its ordinary signification, a name of juristic person or tradename represented in a special manner;

     (2) a word or words having no direct reference to the character or quality of the goods and is not a geographical name prescribed by the Minister in the Ministerial Notifications;

     (3) a specially designed combination of colors, stylized letters, numerals or invented word;

     (4) the signature of the applicant or another person who has given his or her permission;

     (5) a representation of the applicant or of another person with his or her permission or of a dead person with the permission of his or her heirs;

     (6) an invented device.

(2) states that the word "Good", for example, cannot be used as a trademark (naturally..). But (3) states I can use stylized letters. So if, for the sake of the example, the word "Good" is written in distincitvely stylized letters - can it be used then?

G: As I understand it, it the "style" (for example, italics, Roman, etc.), not the words, that is the issue here.

Another point -

Section 9

An application for registration of a trademark may be made for specific goods in one class or in different classes but the particular kinds of goods for which protection is sought shall be clearly specified.

An application may not cover goods of different classes.

The classification of goods shall be as prescribed by the Ministerial Notifications.

where can we find these "Ministerial Notifications"??

<{POST_SNAPBACK}>

Send me your email address via PM and I'll get a .pdf version over to you.

SM

[spacebass]

Dear G,

The thing about trade marks is that they must be 'distinctive' , you cannot register rights in a word such as good, great, fabulous etc because these are words that should remain free for anyone to use, the most valuable trade mark is the 'invented word', which by promotion of your product then becomes associated with it and because it is a new word no one confuses it with 'that good product' a phrase everyone would use naturally.

If you were to be granted a T.M. for "good in distictive script' it would be annotated with the condition that no exclusive rights were granted in the word 'good' only when represented in the distinctive script likely to cause confusion would an infringement take place'.

In the good old days in the UK , (I don't know what apertains now), there were two registers: part A, in which marks were deemed to be inherently distinctive, the best example being an invented word, and Part B, 'where a mark was considered capable of becoming distinctive' which might be granted to marks that were a little decriptive of the product but with a say five years use and promotion could be made to distinguish the product in the market place, if this was achieved , by affadavits from industry people it was possible to move it into Part A.

The protection being almost absolute in part A for a valid mark. Much less so in Part B.

Get it?

[~G~]

Dear G,

The thing about trade  marks is that they must be 'distinctive' , you cannot  register rights in a word such as good, great, fabulous etc because these are words that should remain free for anyone to use, the most valuable trade mark is the 'invented word', which by promotion of your product then becomes associated with it and because it is a new word no one  confuses it with  'that good product' a phrase everyone would use naturally.

If you were to be granted a T.M. for "good in distictive script' it would be annotated with the condition that no exclusive rights were granted in the word 'good' only when represented in the distinctive script likely to cause  confusion would an infringement take place'.

In the good old days in the UK , (I don't know what apertains now), there were two registers: part A, in which marks were deemed to be inherently distinctive, the best example being an invented word, and Part B, 'where a mark was considered capable of becoming distinctive' which might be granted to marks that were a little decriptive of the product but with a say five years use and promotion could be made to distinguish the product in the market place, if this was achieved , by affadavits from industry people it was possible to move it into Part A.

The protection being almost absolute in part A for a valid mark. Much less so in Part B.

Get it?

<{POST_SNAPBACK}>

Thanks, spacebass, for your elaborated response.

Please consider the words:

- Happy (as a logo, DTAC owned)

- Excite (search engine)

- True (True corporation)

These are generic descriptive words used as trademarks. I believe what made it possible was the graphic design of the words, meaning they are used as a trademark with a specific, distinctive design.

(3) a specially designed combination of colors, stylized letters, numerals or invented word;

So as I understand, as long as I can take a word, create a very distinct design to the letters (fonts, colors, maybe add some extra graphic symbols like the flower in "happy"), it can be used as a trademark.

[spacebass]

Dear G,

The thing about trade  marks is that they must be 'distinctive' , you cannot  register rights in a word such as good, great, fabulous etc because these are words that should remain free for anyone to use, the most valuable trade mark is the 'invented word', which by promotion of your product then becomes associated with it and because it is a new word no one  confuses it with  'that good product' a phrase everyone would use naturally.

If you were to be granted a T.M. for "good in distictive script' it would be annotated with the condition that no exclusive rights were granted in the word 'good' only when represented in the distinctive script likely to cause  confusion would an infringement take place'.

In the good old days in the UK , (I don't know what apertains now), there were two registers: part A, in which marks were deemed to be inherently distinctive, the best example being an invented word, and Part B, 'where a mark was considered capable of becoming distinctive' which might be granted to marks that were a little decriptive of the product but with a say five years use and promotion could be made to distinguish the product in the market place, if this was achieved , by affadavits from industry people it was possible to move it into Part A.

The protection being almost absolute in part A for a valid mark. Much less so in Part B.

Get it?

<{POST_SNAPBACK}>

Thanks, spacebass, for your elaborated response.

Please consider the words:

- Happy (as a logo, DTAC owned)

- Excite (search engine)

- True (True corporation)

These are generic descriptive words used as trademarks. I believe what made it possible was the graphic design of the words, meaning they are used as a trademark with a specific, distinctive design.

(3) a specially designed combination of colors, stylized letters, numerals or invented word;

So as I understand, as long as I can take a word, create a very distinct design to the letters (fonts, colors, maybe add some extra graphic symbols like the flower in "happy"), it can be used as a trademark.

<{POST_SNAPBACK}>

If you are in need of a trademark with a clean slate , no question, you need to think up an invented word that maybe has some slight reference to your product. Take 'Orange', everyone now knows what it represents and will be very easy to defend in a Trade Mark action becaue it has no ability to misleadand confuse.

Of the three marks you quote above, a competitor could say in an advert: 'If you want to be Happy use Ais', : 'Get Excited with our google search engine': or For True Adsl use Maxnet. You will see that each of these slogans use the complete trademark and there would be no protection to stop this happenning, because the words are in common everyday use and you cannot 'exappropriate them' for your exclusive use. Consider also the spoken use of the mark your distinctive script would not help there.

You are talking about a third world country, and many things are considered in a very simplistic manner, use you western sophistication to do it right and get ahead, in this case the fact that these words are not written in the native script may lend them added distinction, something you could look into.

You should also consider this, litigating in the world of industrial property is very expensive , not in the league of normal mortals so you are much better off getting a strong mark at the beginning, after all you are not a big powerful Thai businessman so what chance do you stand anyway?

It is in your interests to have strong distinctive Trademark that as you build repute in your product everyone associates the two, you could have some Mickey Mouse Trade Mark and think your doing well with it then after five years , someone takes it to court and gets in declared invalid , so you lose all the equity you think you have built up in it.

Edited June 20, 2005 by spacebass

[~G~]

This makes sense; tnx again.

[spacebass]

This makes sense; tnx again.

<{POST_SNAPBACK}>

How about : " Thaimex Ltd" ?

(copyright spacebass 2005)!

Edited June 20, 2005 by spacebass

[~G~]

How about : " Thaimex Ltd" ?

don't know about "Thaimex", but "Thaifex" is already taken...

[spacebass]

How about : " Thaimex Ltd" ?

don't know about "Thaimex", but "Thaifex" is already taken...

<{POST_SNAPBACK}>

You get the; Thaim(port)ex(port) construction?

[Bentley 7]

Spacebass makes a good point in regards to the expense of attaining a trademark compared to most develop countries it can be a confusing and quite expensive process here in thailand.

But there real kicker is that even if your prepared to go through the process and get your trademark - enforcing it is where the real difficulties occur.

How do you protect your trademark? When a back yard operation can counterfeit your product and steal your intended sales and dissapear the next day.

Who will you hold responsible and derive any compensation from?

[~G~]

How about : " Thaimex Ltd" ?

don't know about "Thaimex", but "Thaifex" is already taken...

<{POST_SNAPBACK}>

You get the; Thaim(port)ex(port) construction?

<{POST_SNAPBACK}>

I do now...

[~G~]

But there real kicker is that even if your prepared to go through the process and get your trademark - enforcing it is where the real difficulties occur.

<{POST_SNAPBACK}>

I agree. The more useful side of registering a trademark is that you are better protected in case someone falsely claims YOU used HIS trademark, trying to eliminate your right to use it (a bigger problem than someone who uses it for some time and dissapears in the next day).

It works the same way in registering a patent; you cannot make sure nobody will copy it and steal your sales; but you are protected in case someone claim it their's and sues you.

Edited June 20, 2005 by ~G~