Trademark registration in Thailand for foreign companies

Your products launch in Thailand next quarter. Your Thai distributor has the packaging ready and offers to file the trademark "to save you the paperwork." But whoever files is the applicant, and if the mark registers, the applicant is the owner.

So trademark registration in Thailand for a foreign company starts with one decision: who files. Here's what Thai law and the Department of Intellectual Property (DIP) require.

Who can file for trademark registration in Thailand

A foreign company can apply in its own name. Under Section 10 of the Trademark Act B.E. 2534 (1991), the applicant or its agent must have an office or a place in Thailand where the Registrar can make contact.

Under DIP's examination manual, if a foreign applicant gives no contact address in Thailand, the Registrar uses the agent's address.

The same manual tells examiners that a foreign individual can't act as an agent or attorney-in-fact. So if your country manager in Bangkok is a foreign national and files under your power of attorney, expect DIP to raise it.

Choosing the applicant for a foreign company's trademark

DIP's manual calls the system first to file. Under Section 20, when several people apply for identical or confusingly similar marks for goods the Registrar considers of the same kind, the Registrar proceeds with the first application and makes the others wait.

Filing in the parent company's name

The parent owns the mark in Thailand. If your Thai subsidiary or distributor uses it, the parent can license that use. Under Section 68, a trademark license must be in writing and registered with the Registrar.

Filing in the Thai subsidiary's name

The subsidiary files as a Thai company, with its company certificate issued within the past 6 months. The trade-off: the mark belongs to the subsidiary, and it reaches the parent only through a transfer.

Letting a distributor file

Then the distributor is the owner. A transfer works under Section 48 while the application is pending, with notice to the Registrar. After registration, Section 49 allows an assignment and Section 51 requires it to be registered.

We'd be cautious here. If the distribution relationship ends, getting the mark into your own name depends on the distributor's cooperation. It is advisable to consult a qualified Thai lawyer for your specific situation.

Direct filing or the Madrid Protocol

According to WIPO, the Madrid Protocol entered into force for Thailand on 7 November 2017. A Japanese company with a basic application or registration in Japan can designate Thailand through WIPO, or file directly at DIP.

WIPO also records a Thai declaration that a license recorded in the International Register has no effect in Thailand. A parent licensing the mark to its Thai subsidiary should plan for a Thai-side step.

If you filed in Japan first, Section 28 lets you ask DIP to treat that Japanese filing date as your Thai filing date. You have to file in Thailand within 6 months of the first filing abroad. You also need one of the section's listed qualifications. A company with a real business in Japan has one, because WIPO lists both Japan and Thailand as parties to the Paris Convention. The right is lost if that first application was refused, withdrawn or abandoned, apart from narrow exceptions in the section. The claim goes on Form Kor 10.

What a foreign company prepares for trademark registration in Thailand

DIP's citizen guide and manual list these for a foreign company filing through an agent:

• Application Form Kor 01, with the mark attached
• A certificate of the company's legal existence in its home country. You don't need it if the power of attorney made abroad already certifies that the company exists. The company can make that statement itself, above the signature.
• A power of attorney appointing the Thai agent, with a copy of the agent's ID and stamp duty paid under the Revenue Code
• A Thai translation of every foreign-language document, with the translator's certification that it's accurate. Certified translation in Thailand: why yours gets sent back explains where translations usually go wrong.

Getting the power of attorney certified abroad

The person certifying must be in the country where your director signs. DIP accepts:

• For the signature only: an official of the Thai embassy or consulate in that country
• For the signature or the appointment of the agent: the head of a Thai Ministry of Commerce office in that country, a notary public, or a person whom local law authorizes to witness documents

For signing in Japan, China or Korea, DIP's manual accepts a certification that covers only the signature or the seal. If your director signs during a visit to Thailand, no certification is needed. Attach a copy of the passport or other evidence that they were in Thailand when they signed.

More on signing: Power of Attorney in Thailand: What Foreign Nationals Need to Know Before You Sign.

Thai-language rules for Japanese brands

The application itself is written in Thai, except for a Madrid application. Your company name goes in as a Thai transliteration. DIP's own example turns "KAWASAKI KABUSHIKI KAISHA" into "คาวาซากิ คาบูชิกิ ไกชา".

If the mark contains foreign words, including Japanese, the application gives a Thai reading and a Thai translation of each word, unless the word can't be translated. DIP's manual treats "DIOR" and "ดิออร์" as similar marks because they sound alike.

Deadlines after you file

• At the filing counter: if a document is missing and can't be fixed on the spot, the officer records the deficiency. You then have 90 days from the filing date to submit everything at once, or DIP treats the application as abandoned.
• During examination: if the application doesn't comply with Section 9, Section 10 or the ministerial regulation, Section 15 gives you 60 days from receiving the Registrar's order to correct it. Section 18 lets you appeal to the Board of Trademarks within the same 60 days. Do neither, and Section 19 treats the application as abandoned.

Registration is the Registrar's decision, so no agent, including us, can guarantee the outcome.

How WPK helps foreign companies register a trademark

• A pre-filing search of similar marks at DIP, with a short risk summary
• A power of attorney drafted for the certifier in your country, plus a sub-power of attorney that lets the person filing at DIP sign the deficiency record
• Certified Thai translation of corporate documents in many languages, such as English, Japanese, Chinese, Korean and Spanish, with every legal translation reviewed by a lawyer
• Filing the application at DIP on your behalf
• Drafting the trademark license between the parent and the Thai subsidiary, and filing the license or an assignment for registration at DIP

Frequently asked questions

Can a foreign company register a trademark in Thailand?

Yes. Under Section 10, the applicant or its agent needs an office or contact place in Thailand, usually the Thai agent's.

Should the parent company or the Thai subsidiary own the trademark?

Either can. The applicant becomes the owner. If the parent owns it and the subsidiary uses it, the license has to be in writing and registered under Section 68.

Is my Japanese trademark registration valid in Thailand?

No. A Japanese registration covers Japan. For Thailand, file at DIP or designate Thailand through the Madrid system.

Can a foreigner act as attorney for a trademark filing in Thailand?

Under DIP's practice, no. Its examination manual says a foreign individual can't act as an agent or attorney-in-fact, so use a Thai agent.

Conclusion

For trademark registration in Thailand, a foreign company's first decision is who files. Make it before anyone drafts the power of attorney.

Tell us who should own the mark and where your director will sign. We'll send the document list for that route.