Recordal of well-known marks introduced

At the initiative of the director of the Intellectual Property Department, a new regulation on the recordal of well-known marks came into force on August 1.

While such recordal is not mandatory, a recorded well-known mark will assist in fortifying and promoting the value of an opposition or claim against other similar trademarks. Any trademark for which an application has been filed and that is similar or identical to a recorded well-known mark will be rejected and considered by the examiner to be unregistrable under the Trademark Act BE 2534 (1991) as amended by the Trademark Act (2) BE 2543 (2000).

To qualify as a well-known mark, the mark:

• must be a trademark, service mark, certification mark, collective mark or "a mark used with other things apart from goods and
  services" (the regulation does not specify what type of mark will fall within the scope of this catagory);
  
  
• may be registered or unregistered;
  
  
• must be the same mark as the one notified;
  
  
• must have been widely used in good faith in relation to goods or services through sales, in advertising or by other means;
  
  
• must have been widely used in good faith, within Thailand or in foreign countries, so as the public or the relevant group of people in Thailand know the mark well; and
  
  
• may have been used by the owner directly, or through agents or licensees in Thailand or foreign countries.

To notify a well-known mark, an applicant must submit an application together with collateral evidence showing significant sales or use or advertising of goods or services used with the mark, or use of the mark by any other means. The collateral evidence can be:

• documents evidencing the perception of the mark by the public such as journals, periodicals, newspapers or catalogues;
  
  
• documents evidencing sales such as receipts, invoices, import-export documents and tax receipts;
  
  
• documents evidencing market activity such as advertisements, and retail and wholesale information;
  
  
• documents evidencing the size of the business in relation to which the mark is used;
  
  
• any other document evidencing use, registration, reputation or protection and maintenance of the reputation of the mark, such as:
  
  
  • price assessments;
    
    
  • certificates issued from entrusted institutes (the regulation does not clearly define what these 'institutes' are but they are likely to include any foreign trademark office or court); or
    
    
  • documents from enforcement proceedings.
    

The director general of the Department of Intellectual Property and a committee will decide whether a mark is well known upon consideration of the depository collateral evidence. The committee will consider, among other things, the following facts:

• the period of time, range and area of use of the mark;
  
  
• the period of time, range and area of advertising promoting the mark;
  
  
• the period of time and area of registration of the mark;
  
  
• the history of success in exercising rights in the mark, especially cases where the mark has previously been accepted as a well-known mark by relevant institutes;
  
  
• the value of the mark;
  
  
• the level of inherent distinctiveness and distinctiveness gained through use; and
  
  
• the results of a consumer survey conducted by the entrusted institute assessing the popularity of the mark.
  

Dej-Udom & Associates, Bangkok