Applications for GIs now accepted
The Thai Department of Intellectual Property (DIP) is now accepting applications to register geographical indications (GIs) following the implementation of the Geographical Indications Act. GI registrations will protect any sign capable of conveying that specific goods originating from a geographical area have a given quality, reputation or other characteristics attributable to that area. (The term 'specific goods' used in the GI Act has been clarified in a separate ministerial regulation as 'rice, silk, wines and spirits'.)
The DIP will check that:
- the sign applied for is not a common name for the goods in relation to which registration is sought;
- the sign does not contravene morality, or public order and policy; and
- the applicant is either: (i) a governmental agency, governmental office, state enterprise, local administration or any other state body located in the geographical area using the GI; or (ii) a natural or legal person engaged in the business concerned with goods to which the GI applies, or a group of consumers of the goods to which the GI applies.
A foreign GI can be protected under the new act subject to the following conditions:
- It must be protected in its country of origin.
- It must have been used continuously in Thailand prior to the filing of the application.
- The applicant must either (i) be a national of a contracting state to a convention or an international agreement concerning the protection of GIs to which Thailand is also a contracting state, or (ii) have a domicile or a permanent business establishment in Thailand or in a contracting state to a convention or international agreement concerning the protection of GIs to which Thailand is also a contracting state.
If the application complies with the above criteria, it will be published for 90 days for opposition. If no opposition is filed, the GI will be deemed registered. If the application is successfully opposed, the applicant can appeal to the GI Board within 90 days of the decision. An appeal of the board's decision can be filed with the IP and International Trade (IT) Court within 90 days of its release.
Minor mistakes or discrepancies in the application details may be amended after registration. A GI can be cancelled if (i) the application is made or registration granted unlawfully or as a result of non-disclosures or false statements, and (ii) a change of circumstances makes the GI registration unlawful. The applicant may file an appeal of the cancellation decision to the IP and IT Court within 90 days of its release, except where cancellation has been granted on the basis that the GI is against public order or morality.
The DIP may suspend use of a registered GI for two years if it finds that use does not comply with the conditions stipulated in the registration. The applicant may appeal the suspension decision to the GI Board and subsequently to the IP and IT Court.
The GI Act provides that the following constitute unlawful use of a GI, punishable by a fine of up to Bht200,000:
- a claim or misrepresentation that goods emanate from the geographical area stated in the application when they do not;
- the use in any manner creating confusion as to the geographical origin or quality, reputation or characteristic of goods that damage other traders; and
- the use on specific goods not emanating from the geographical area stated in the application, even where the true geographical origin of the goods is in some way indicated, unless such use has taken place continuously for 10 years before April 15 1994 or in good faith after that date.
For background information on the GI Act, see GIs soon to be protected in Thailand.
Dej-Udom & Associates, Bangkok
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