Licensing Facilitation Act to enhance trademark registration procedures
In an effort to reduce excessive bureaucratic procedures for obtaining registrations or licences, Thailand has recently enacted a new law called the Licensing Facilitation Act BE 2558 (2015), which came into effect on July 21 2015. The act requires government authorities to prepare a 'public manual'.
In Thailand, red tape is one of the main obstacles to doing business. Thai laws usually give the authorities broad discretion in granting licences, which ends up affecting business, because the costs, time and outcome are unpredictable. Therefore, the act aims to solve these issues by requiring the authorities to publish public manuals disclosing the rules, procedures, requirements, costs and periods of time for granting the relevant licences.
As required under the act, the Department of Intellectual Property has published 33 public manuals issued by five offices, including the Trademark Office. The public manuals mainly specify information based on the laws, but they also specifically list all of the steps, estimated timelines and workflow, which the laws do not provide. This article will focus on the timelines of six procedures, as discussed below.
- Trademark registration - the registrar must check the application for registration and relevant documents within one day of the submission, and then examine the registrability of the mark within 11 months. If the registrar accepts the registration, publication of the mark must be arranged within one month and the mark will be published in the Trademark Journal for three months. Once the three-month period has ended, if there is no opposition, the registrar shall order the mark’s registration and notify the applicant that it must pay the required fees within 15 days. If the fees are paid, the registrar shall issue a registration certificate within 15 days. The total period of time for all of these procedures is 16 months.
- Amendment of trademark registration information - if the owner of a pending or registered trademark requests the amendment of certain information in the trademark registration, the registrar must check the relevant documents within one day and consider the application within 60 days from the date of filing of the application. If the registrar approves the amendment, the information will be changed within seven days. Therefore, the total period of time from the submission of the application to the amendment of the information is 68 days.
- Assignment or inheritance of trademark rights - the assignment or inheritance of trademark rights must be registered with the registrar in accordance with ministerial regulations. Registration of the assignment or inheritance of trademark rights takes 68 days in total, which includes one day for checking the relevant documents, 60 days for consideration, and seven days for issuing a certificate of assignment or inheritance of trademark rights.
- Trademark licence registration - it is compulsory to register a licence agreement with the Trademark Office pursuant to the Thai Trademark Act. The public manual specifies that the documents must be checked within one day. The registrar has 90 days from the date of receipt to consider the application. If the registrar approves the registration of the licence agreement, the registrar has seven days to notify the applicant that it must pay fees within 30 days, and seven days to issue a certificate of trademark licence agreement after receiving the fees. The total period for a granting trademark licence registration is 105 days.
- Renewal of trademark registration - similarly to other procedures, the registrar must check the documents within one day and consider the application within 60 days. If the application is in accordance with the rules, the registrar shall renew the trademark registration within seven days. The total period of this process is 68 days.
- Cancellation of trademark registration by the owner - the trademark owner may request the cancellation of its trademark registration. This procedure takes 31 days in total, namely one day for checking the documents and 30 days for considering the request.
Below is a summary of the length of time required for each trademark registration procedure:
|Trademark registration||16 months|
|Amendment of trademark registration information||68 days|
|Assignment or inheritance of trademark rights||68 days|
|Trademark licence registration||105 days|
|Renewal of trademark registration||68 days|
|Cancellation of trademark by the owner||31 days|
In light of the above, it can be concluded that the act will make the registration of trademarks faster than the current procedure, which takes at least 24 months. However, this will depend on how the authorities implement these public manuals in practice. Further, the authorities may be subject to disciplinary penalties for violating the act and, therefore, can be expected to work more efficiently.
Thailand will become a signatory to the Madrid Protocol by the end of 2015 and may implement either a 12-month rule or an 18-month rule for examining international trademark registrations. Pursuant to the act, there is an obligation to complete a trademark examination within 11 months and trademark registrations must be finished within 16 months, according to the public manual. This means that trademarks can be registered through the Thai Trademark Office as an alternative to using the Madrid System.
Darani Vachanavuttivong and Ploynapa Julagasigorn, Tilleke & Gibbins, Bangkok
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