IP is a valuable asset that can support you when doing business overseas. An Australian patent, trade mark, design or plant breeder’s right does not secure your rights outside of Australia. You should consider IP protection in the countries that you are planning on doing business, including manufacturing, or selling products online.
Please note, IP registration and protection can be a complex process, especially in an international context. It is recommended that you seek advice from an IP professional.
Thailand has an estimated population of over 69 million, is Australia’s ninth largest trading partner and Australia’s second largest trading partner in the Association of Southeast Asian Nations (ASEAN). In 2017-18, two-way trade in goods and services between Australia and Thailand totalled A$24.7 billion. Thai is the official language of Thailand and a number of other languages are spoken.
IP protection in Thailand
You can register IP rights in Thailand for trade marks, patents, designs, plant varieties, and geographical indications. The Department of Intellectual Property (DIP) oversees Thailand’s IP System.
An address for service in Thailand and a local agent or attorney is generally required when seeking IP registration.
Thailand is a member of international agreements for the protection of IP rights as administered through the World Intellectual Property Organization. See below for further details.
- Trade mark applications can be made directly to DIP or through the Madrid System for the international registration of trade marks. Applications can be filed online.
- When deciding on whether or not to enter Thailand with your trade mark (and ideally before you apply for a trade mark in Australia), you should consider two things when applying for an international application through the Madrid system.
- Firstly, you may wish to search the Global Brands Database to make sure your chosen trade mark is available to be registered.
- Secondly, acceptable claims for goods and services vary across the world. Consider consulting the Madrid Goods and Services Manager database, which outlines what claims are acceptable in various jurisdictions globally.
- The official language of Thailand is Thai and a number of other languages and dialects (e.g. Lao) are used. Registration of a mark in the Roman alphabet is not sufficient to protect the transliterated version of that mark. Applicants using word elements in their trade marks may need to consider protecting relevant character trade marks, as well as translations and transliterations.
- Unlike Australia, Thailand has a “first to file” rule for obtaining trade mark rights. This means that, if there is a dispute between you and another party over a trade mark, whoever filed for registration first will generally have superior rights, regardless of who developed or first used the trade mark.
- Note that trade marks which are contrary to moral standards, public order, religion or containing elements related to the royal family are not registrable.
- A trade mark registration is valid for 10 years and may be renewed indefinitely for successive 10 year periods upon payment of fees.
- Trade mark registrations may be removed from the register if they are not used within three years of the date of registration.
- A trade mark’s validity cannot be challenged on the grounds of prior rights after five years from the initial registration date. There is no deadline for bringing a cancellation action on different grounds.
- There are other circumstances under which a trade mark may be challenged, cancelled or removed. Please check the relevant requirements prior to application.
- Applications may be made directly to DIP or can enter through national phase entry via the Patent Cooperation Treaty (PCT). A Thai translation of the application text must be filed on the national phase entry date.
- Thailand has a “petty patent” system which has similar provisions to a regular patent, but only lasts for an initial six years with the potential to extend an additional two years twice, providing a maximum of 10 years’ protection.
- Thailand has a 12-month grace period where details of a patent are disclosed due to unlawful disclosure or where disclosure occurs at prescribed exhibitions.
- Patent protection lasts for 20 years from the date of application; however fees must be paid throughout that period.
- Applications may be made directly with DIP.
- The term of protection for registered designs is 10 years, subject to payment of the required fees.
- Like Australia, copyright arises automatically at the time of creation of an eligible work.
- Thailand also operates a system of recordation. Copyright can be recorded at DIP and can assist third parties seeking permission to use the work and may be used as evidence of ownership.
- The term of protection varies depending on the type of work. In general, most published works are protected for the life of the author plus 50 years.
- Applications may be made directly to DIP.
- Protection is granted for up to 12, 17 or 27 years, depending on the length of time it takes for the plant to mature for cultivation and whether the plant is wood based. Rights are maintained through annual fees.
- Thailand has special laws for the protection of geographical indications or appellations of origin.
- Geographical indications must be registered directly with DIP and can be protected only if is clear that it is a geographical indication protected under the laws of the country of origin (for example, Australia) and has been in continuous use until the date of application in Thailand.
- Geographical indication protection is available for goods including natural products, agricultural goods, handicrafts and industrial goods.
- Geographical indications are valid from the date of application and remain valid as long as they are not cancelled. No renewal is required.
Enforcing your IP rights in Thailand
It is your responsibility to protect your IP. You should actively monitor the marketplace for any unauthorised use of your IP.
IP law is complex. If legal action is necessary, you should consult a legal professional who specialises in IP law.
Doing business in Thailand
Before entering the business market in Thailand, there are a number of factors to take into account including culture, politics and business etiquette.
You can start by taking a look at the extensive information about doing business in Thailand on the Austrade website.
- Department of Intellectual Property
- Madrid System
- Patent Cooperation Treaty (PCT)
- DFAT – Country Brief
- Export Council of Australia
- Professional advice - If you are considering exporting to Thailand, it is recommended that you contact an IP professional experienced in Thai IP law and trade to advise on local IP, customs and other laws regulating imports and trade in Thailand. Australian IP professionals can facilitate this contact.