Thailand Intellectual Property – Enlarging the Scope of Trademark Protection?

by Joel on September 20, 2012

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Post-Application Amendments to Goods / Services in Thailand Trademarks

Distinct from other jurisdictions, the globally recognized doctrine against enlarging the scope of protection as applicable to Trademarks is much relaxed in its restrictiveness in Thailand, particularly in practice with the local Intellectual Property register, the Department of Intellectual Property (“DIP“). While it stands true that it would be perverse to allow a Trademark’s scope of protection to be enlarged after the same Trademark application ‘as applied for’ is entrusted from the proprietor’s hands to the DIP toward registration – it is debatable as to which point in the process this mousetrap is triggered.

Thailand’s Trademark Law dictates that no further amendments in relation to the goods / services for which the Trademark is applied shall be made: upon Publication. Of course, as Publication is, in essence the communication of the proprietor’s desire to register its Trademark to the public at large – allowing the proprietor to subsequently extend its Trademark’s reach ought be out of question.

Notwithstanding, proprietors can in effect enlarge the scope of protection as applied for prior to Publication, which in practice essentially constitutes a grace period of about 8 –  15 months for the proprietor to revist its application.

Amendments to Trademark applications in Thailand and specifically for the purposes of our discussion, amendments to the goods / services being covered by the Trademark application is effected by the general Amendment Application vide Form Kor.06.

Effectively, any amendment to the scope of goods / services which ultimate registration would grant protection over may be indulged in before the Publication phase commences, subject only to the class of goods / services itself, which upon application is set in stone as multi-class applications are not available in Thailand. Of course, the proprietor is at liberty to file a parallel application under a different class, irrespective of the application in question should it subsequently choose to do so.

This effectively grants the proprietor a rather wide frame to enlarge the scope of protection contemplated by its Trademark application after having parted with the same, which in this rapid commercial setting can make a world of difference.

Even where the amendment is a corrective one pursuant to a Registrar’s Office Action or a voluntary one, the proprietor is at liberty to add specifications of goods / services at its whim – so long as they take place before Publication.

This gives much room for the proprietor for its IP management, strategizing toward maximizing protection, by filing its Trademark application ahead of time and only subsequently, thoroughly considering what products the Trademark would be applied to. This ample opportunity is amplified considering the relatively low government fee per amendment application, which is THB 100 (approximately USD 3).

Without being shackled at the offset, proprietors are given much leeway to put their foot through the door, while retaining their hand at the drawing board.

Joel Loo is a Senior Consulant / Int’l Lawyer at McWalden & Bailey (Thailand), an International Law & Consultancy Firm based in Thailand, manages the BANGKOK LEGAL BLOG (BLB) and has much expertise in the International IP Management of the Thai Trademark portfolios of multinational corporations.

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