Thailand’s Intellectual Property Regime
In recent years, Thailand has taken significant steps to boost their intellectual property (IP) regime toward international standards of protection and enforcement. This can be seen not only as a response to pressure from Western nations and multi-lateral organisations keen to protect their industries’ exports, but also in recognition of domestic businesses that wish to capitalise on their increasing innovation both at home and abroad.
In 1997, Thailand established the Central Intellectual Property and International Trade Court (CIPITC) which has exclusive jurisdiction to adjudicate civil and criminal cases involving IP. In 2008 and 2009, it signed the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty respectively, to move into line with the international standards set out in the Trade Related Aspects of International Property Rights (TRIPs) Agreement. Thailand is also now undertaking a vast programme of reforms as regards major IP laws, in particular the Trademark Act and the Copyright Act.
The recent launch of the National IPR Centre of Enforcement (NICE) in 2013 was a welcome development aimed at ensuring well-coordinated efforts in the prevention of IPR violations in Thailand. As an initiative of this, an IP database will soon be established to keep track of the status of infringement cases, court decisions and repeat offences, which should improve the overall level of IP enforcement in Thailand. Partly on the back of these advances in the IPR system, the EU and Thailand have now launched negotiations for a comprehensive Free Trade Agreement (FTA), which looks to strengthen the economic ties between Thailand and Europe significantly.
While there have been many official IPR developments, it is also worthwhile to know the realities of the system in practice. In this context, the ASEAN IPR SME Helpdesk provides an outline of the main types of intellectual property that can be registered in Thailand, with a number of tips and ‘watch-outs’ for foreign businesses.
A copyright protects intangible original intellectual creations, in the fields of literature, art or science that can be reproduced in a tangible form, from being reproduced without the permission of the copyright holder. Unlike trademarks and patents, registration of copyrights is not compulsory in order to obtain protection, but can help in proving the ownership of copyrights in cases of infringement. As per international standards, copyright protection lasts for the life of the author plus 50 years, or 50 years from the date of creation (for the work of a corporation), for original works.
- Software, music and movie piracy are still rampant in Thailand, and Thai government officials are fighting a long-running battle against pirated music CDs, DVDs and computer software. According to the Thai Department of Intellectual Property (DIP), over 360,000 pirated film DVDs, 140,000 pirated music CDs, and 54,000 pirated copies of software were seized in 2012. Despite automatic copyright in Thailand, it is still advisable for individuals or companies to register their works no matter what the form. Registration will help the rightful owner greatly in infringement cases where legal enforcement is required.
A trade mark is a visible sign composed of words, devices, letters, numerals or shapes, that indicates the source of goods or services, thus allowing consumers to distinguish the goods or services of one producer from those of another. Colour combinations and three-dimensional marks can also be registered in Thailand. The right to legal protection of a trade mark in Thailand lasts 10 years from the date of registration may be extended for consecutive 10 years periods indefinitely, subject to timely application for renewal. The registration process usually takes between 12-18 months.
Trade Marks Tips and Watch-outs:
- In Thailand, there is some protection for ‘well-known trade marks’, however in practice it can be difficult to prove that this applies to your trade mark before a court.
- A way to cancel a bad-faith registration is by proving that the mark was unused for a period of at least 3 years prior to the petition for cancellation, in which case you can file a petition of cancellation on the grounds of ‘nonuse’.
- Geographical Indications (GIs) – names or signs used on products which correspond to a specific geographical location or origin, (e.g. town, region or country) – are recognised and can be registered in Thailand as of 2004. Once obtained, these rights will last continuously, without the need to re-new the registration every 10 years. Thailand is one of the pioneers of GIs protection in Asia with several GIs already registered nationally and abroad.
A patent is an exclusive right granted for the protection of new inventions, which are products or processes offering new technical solutions or providing new ways of doing something. A product or process must be applicable in industry. In order to qualify for patent protection, inventors or owners must file a patent application as registration is a requirement in order to obtain protection. Invention patent protection lasts for a limited period of 20 years (‘petty’ or utility model patents last for an extendable period of 6 years). In return for this legal monopoly of limited duration, the owner of a patent must disclose the invention to the public.
Patents Tips and Watch-outs in Thailand:
- While applications for Design Patents and Petty Patents are still largely dominated by domestic applicants, applications for Patents of Invention are mostly filed by foreign applicants. Since 2011 the trend among foreign applicants has been to file fewer direct national applications, and instead there has been a sharp increase of applications through the Patent Cooperation Treaty (PCT) route. Accordingly, the backlog has been increasing over the years, which has become worrisome: among the 23,000 pending applications made in 2012, only 1,000 have been granted so far. Therefore it is recommended for EU SMEs to apply via the direct national application system rather than the PCT route where possible, as the application wait time may be reduced.
- Therefore, in most cases it is currently recommended for EU SMEs to make a direct national filing rather than to apply via the PCT route, if the objective is to obtain a quicker grant. This makes sense however only if parallel applications of the same patent which have been filed in other countries are expected to end up with quick grants, as in Thailand the examination of foreign patent applications depends on the outcome of any patent application already filed abroad at other Patent Offices. Otherwise, filing an application for a Petty Patent in place of a Patent of Invention should be considered, if the invention is eligible, and if a 10-year protection is sufficient.
Although the global integration of IP systems is underway, for the most part intellectual property rights remain territorial in nature, which means that registrations in one country’s jurisdiction are not automatically enforceable in others. Furthermore, Thailand operates under a ‘first-to-file’ system, meaning that generally the first person to file an IP right in the Thai jurisdiction will own that right once the application is granted. Whatever the efforts of the authorities to improve the implementation and enforcement of IPR in Thailand, timely application by businesses for grant and registration of their IP rights before the Thai Department of Intellectual Property (DIP) is still crucial in order for companies to have a chance of defending and enforcing them.
The ASEAN IPR SME Helpdesk is a European Union co-funded project that provides free, practical, business advice relating to ASEAN IPR to European SMEs. To learn about any aspect of intellectual property rights in Southeast Asia, visit our online portal at www.asean-iprhelpdesk.eu. For free expert advice on ASEAN IPR for your business, e-mail your questions to: email@example.com. You will receive a reply from one of the Helpdesk experts within five working days. The ASEAN IPR SME Helpdesk is jointly implemented by DEVELOPMENT Solutions, the European Business Chamber of Commerce Indonesia and the European Business Organisations Worldwide Network.
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