Trade Marks

Trade marks are statutorily governed under the Thai Trademark Act B.E. 2534 as amended by Trademark Act (No 2) B.E. 2543 and Trademark Act (No 3) B.E. 2559. The statute was last amended in 2016.

Common law trade marks have limited recognition under Thai law and practice, and the remedy for trade mark infringement is not available for common law trade marks. Owners of common law trade marks may only rely on a passing off claim under the Trademark Act.

Copyright

Copyright in Thailand is governed by the Thai Copyright Act B.E. 2537 (1994) as amended by Copyright Act (No 2) B.E. 2558 and Copyright Act (No 3) B.E. 2561.

As copyright arises immediately automatically upon creation and the subsistence of copyright is not subject to registration or any formality, common law copyrights are recognised.

Trade Mark

Thailand is a member of the following treaties/conventions:

• Paris Convention for the Protection of Industrial Property;
• Protocol Relating to the Madrid Agreement Concerning International Registration of Marks; and
• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Copyright

Thailand is a member of the following treaties/conventions regarding copyright:

• Berne Convention for the Protection of Literary and Artistic Works;
• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and
• Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired or Otherwise Print Disabled.

The treaties are not self-executing.

Please refer to 1.1 Governing Law and 1.2 Conventions and Treaties.

The Thai Trademark Act protects trade marks, service marks, certification marks and collective marks. A personal name or a surname, if represented in a sufficiently stylised manner and not having a direct reference to the designated goods or services, can be registered as a trade mark. Industrial designs, if found to be distinctive, can be registered as trade marks but, in general, 3D trade marks are difficult to register. Trade dress is not explicitly recognised under the Trademark Act.

The word “mark” under the Trademark Act covers a photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colours, figurative element, sound or a combination thereof. Certain kinds of marks such as series marks, non-traditional marks such as smell marks, trade dress, holograms, etc are not covered under the Act and cannot be protected.

Thailand does not accord protection to specific marks such as the Olympics. However, if a mark comprises the following elements, it is deemed prohibited and cannot be registered, in accordance with Section 8:

• state arms or crests, royal seals, official seals, Chakkri emblems, emblems and insignia of the royal orders and decorations, seals of office, seals of ministries, bureaus, departments or provinces;
• national flags of Thailand, royal standard flags or official flags;
• royal names, royal monograms, abbreviations of royal names or royal monograms;
• representations of the King, Queen or Heir to the Throne;
• names, words, terms or emblems signifying the King, Queen or Heir to the Throne or members of the royal family;
• national emblems and flags of foreign states, emblems and flags of international organisations, emblems of heads of foreign states, official emblems and quality control and certification of foreign states or international organisations, names and monograms of foreign states or international organisations, unless permission is given by the competent officer of the foreign state or international organisation;
• official emblems and emblems of the Red Cross or appellations “Red Cross” or “Geneva Cross”; and
• a mark identical with or similar to a medal, diploma or certificate or any other mark awarded at a trade exhibition or competition held by the Thai government or a Thai government agency for public enterprise or any other government organ of Thailand, a foreign government or international organisation unless such medal, diploma, certificate or mark has been actually awarded to the applicant for goods and is used in combination with the trade mark.

As for the protection of well-known or famous trade marks, Thailand follows a first to file principle. Any party may file an application for a mark and obtain registration for it, subject to the mark meeting the registrability requirements. However, if the mark is identical to or confusingly similar to a famous mark, the owner has the right to file an opposition against the published mark or a cancellation petition against the registered trade mark. But in the opposition or cancellation proceedings, the petitioner must prove that their trade mark is a famous mark by submitting evidence.

Thailand does not allow recordation of famous marks any more but, in contentious proceedings, can recognise a mark as a famous mark or well-known mark, if sufficient evidence is submitted.

Trade mark use is not a prerequisite for registration in Thailand, and there is no obligation on the registrant to demonstrate use of the registered trade mark, except in a cancellation petition on the ground of non-use. In order to be deemed registrable, a trade mark must meet three criteria, ie, distinctiveness, not comprising prohibited elements or characteristics, and not being identical or confusingly similar to a prior registered trade mark.

To prove acquired distinctiveness or secondary meaning in Thailand, applicants need to comply with the Announcement of the Ministry of Commerce Re: Criteria to Prove Acquired Distinctiveness and must meet the following criteria:

• the mark must have been used in Thailand continuously for a reasonably long period of time such that consumers to whom the goods or services are targeted would know that the goods or services are distinguished from those of others;
• the mark may be regarded only as distinctive for those goods or services of which such use is proven; and
• the trade mark shown in the evidence submitted to prove use of the mark must be identical to the mark shown in the trade mark application.

Registered trade mark owners have the exclusive right to use trade marks in respect of goods or services as registered with the Thai Trademark Office; however, such exclusive right only extends to the mark exactly as registered. Registered trade mark owners also have the right to license the use of their trade mark in respect of some or all of the registered goods or services. Finally, registered trade mark owners have the right to take civil and/or criminal action against infringers.

The anti-circumvention right is recognised under the Thai Copyright Act, not under the Thai Trademark Act.

To establish use of a trade mark either for the purpose of proving acquired distinctiveness, or in a defence against a non-use cancellation petition, the applicant or the defendant, as the case may be, must submit evidence of use of the trade mark in commerce in respect of the goods or services. It must be shown that the sign is being used as a trade mark, not as a bona fide descriptive term to describe the character or quality of the goods or services.

The trade mark owners may use the ® symbol on the registered trade mark to notify the public that such trade mark is a registered trade mark belonging to the owner. There are no specific rules concerning use of the ® symbol in Thailand. The only requirement is that a proprietor should not use the registered symbol ® with an unregistered trade mark, including a trade mark that is pending examination, as doing so is an offence under Section 111 of the Thai Trademark Act.

If it meets the requirements of copyrightability, a trade mark can also be protected by copyright, especially logos. This is particularly useful for owners who do not have registered trade marks in Thailand, but may rely on a copyright claim instead.

However, though there is no prohibition against protecting a trade mark by copyright, the IP courts have, in some judgments, ruled against IP overlapping. In a famous case, the court ruled that since the intention of the proprietor was to use the logo as a trade mark, he could not later claim copyright over such logo to overlap with trade mark rights.

Though Section 7 of the Trademark Act allows a personal name or a surname of a natural person to be registered as a trade mark, an important exception to infringement exists under Section 47 of the Act, which provides that a bona fide use by a person of their own personal name or surname shall not be deemed infringement.

Copyright works under the Copyright Act include works of authorship in the categories of literature, dramatic, artistic, musical, audio-visual, cinematographic, sound recording, sound and video broadcasting work or any other work in the literary, scientific or artistic domain, also including computer programs. Artistic work includes painting or drawing, sculptural work, work of lithography, work of architecture, photographic work, work of illustration and work of applied art.

The Copyright Act does not prohibit concurrent protection of a copyrighted work if the work is also protected by any other IP right.

The work must be an original work of authorship that is covered within the definition of the copyrighted work, and must be fixed in a tangible medium, in whatever mode of form of expression.

The Copyright Act defines an author as a person who makes or creates any work, which is a copyright work by virtue of the Act. A person can include a natural person as well as a juristic person. Copyright in a commissioned work or a work made for hire vests in the person who commissions such work, unless the author and the employer have an agreement to the contrary.

The Copyright Act does not specifically provide whether work generated by artificial intelligence (AI) is protected by copyright. However, since artificial intelligence itself has been classified as a computer program, the creator of the AI can claim copyright protection over the code and structure of the AI.

Authors can claim copyright protection anonymously or pseudonymously. A work created by an anonymous or pseudonymous author lasts for a period of 50 years from the date of authorship, but if the work is published during this period, the copyright protection lasts for 50 years from the date of first publication. If the identity of the author becomes known, then the copyright protection lasts for the life of the author and 50 years after the author’s death.

The Copyright Act neither provides a definition of a work of joint authorship nor the rules for management of joint owners’ rights, only stating “in case of a work of joint authorship, the copyright endures for the life of joint authors and fifty years from the death of the last surviving joint author”. However, there have been some court judgments observing that, in order to claim joint authorship, the person making the claim must contribute more than suggesting mere ideas, and be significantly involved in the creative process.

Pursuant to Section 15 of the Copyright Act, a copyright owner has the exclusive right to the following:

• reproduction or adaptation of copyrighted work;
• communication to the public;
• letting for hire the original or copies of a computer program, an audio-visual work, a cinematographic work and a sound recording;
• giving benefits accruing from the copyright to other persons; and
• licensing the rights under points one to three, with or without conditions, provided that the conditions imposed do not unfairly restrict the competition.

All of these rights, including the moral rights, persist throughout the term of the copyright.

Thailand recognises moral rights. The author of a copyrighted work is entitled to identify themself as the author and prohibit the assignee or any person from distorting, shortening, adapting or doing anything against the work to the extent that such act causes damage to the reputation or dignity of the author.

The synchronisation rights can be included in the copyright licence; there is no special synchronisation licence.

The term of protection of copyright is the life of the author and fifty years after the author’s death. For works of joint authorship, the copyright endures for the life of joint authors and fifty years from the death of the last surviving joint author.

If the author is a juristic person, the term of copyright protection is fifty years as from the authorship. If the work is published during such period, copyright protection lasts for fifty years from the first publication.

All types of copyrighted works terminate after the expiry of their respective terms of protection.

A special notice of copyright ownership is not mandatory in Thailand, but the copyright owner may deposit the copyright work with the Copyright Office to serve as notice of their copyright. The owner may also use the copyright symbol ©.

The Copyright Act does not specifically provide for a Collective Management System. At present, there are over 29 collective management societies in Thailand, all having their own business rules, in the absence of a statutory provision.

Thailand is a signatory to the Berne Convention. Copyright arises immediately upon creation, and the subsistence of copyright is not subject to registration. A copyright owner may deposit copies of their work with the Thai Copyright Office to serve as public notice that they are the owner of the copyrighted work.

In the event of litigation, any person may contest the authorship or whether the work is indeed a copyrighted work. If contested, the owner needs to prove authorship, and that the work is original. A benefit of recording the copyrighted work with the Thai Copyright Office is that, in the event of a dispute or an infringement, the Thai authorities prefer seeing a locally registered copyrighted work.

The copyrighted works are recorded with the Thai Copyright Office, and are publicly available. The law does not prohibit a foreigner from registering the copyright directly with the Thai Copyright Office. However, in practice, since all the necessary documents to be submitted are in the local language, foreign applicants may appoint a local lawyer or a native speaker to assist with the documentation.

To apply for the registration of copyrighted work, the copyright owner needs to submit the following documents:

• a signed and notarised power of attorney from the copyright owner, if the owner is a foreign applicant authorising a local lawyer or a native speaker to deposit the work;
• a copy of the work;
• name and address of the copyright owner;
• name, address and a copy of passport of the creator of the work, if the copyright owner is not the author;
• date of creation of the work;
• date of first publication of the work;
• information behind creation of the work to prove originality;
• an affidavit of copyright ownership; and
• if the author/artist has assigned their rights, a deed of assignment to prove the transfer.

There is no official fee or filing fees for copyright applications.

After the application is filed, the Copyright Office will conduct a formality examination of the form and documents submitted, and may also make an inquiry as to whether the work would be considered copyrightable under the Thai Copyright Act. It usually takes about two to three weeks to complete the recordation process.

The copyright application form clearly states the penalty for providing an intentional false or misleading information at the time of recording the copyright. If the applicant provides a false or incorrect statement, they can be subject to penalty under the Thai Penal Code and the Computer Crime Act.

If the work is not a copyrightable work, the Copyright Office will simply return the application to the applicant, refusing to record the copyright. There is no appeal process.

A copyrighted work might be able to be protected by trade mark, depending on the work. In order to be protected as a trade mark, the copyrighted work must fall within the definition of a mark under the Trademark Act. Please see 2.6 Related Rights in relation to the IP overlapping issue.

Since Thailand follows the first-to-file principle, it is essential to obtain a trade mark registration to have the maximum rights under Thai law. Mere use of the unregistered trade mark grants very limited rights to take action on the ground of passing off, but the owner cannot rely on a trade mark infringement claim for an unregistered trade mark.

All trade marks are recorded at the Thai Trademark Office, which maintains its database containing details of all the trade marks filed, as well as other details. There are no principal or supplemental register systems used in Thailand. The Thai Trademark Office database is online and is publicly available for anyone to see the details of the trade marks.

It is recommended to check for prior trade marks before filing a new application to register a mark, to avoid complications arising during the examination stage. The search is conducted in the Thai Trademark Office’s online database.

Series marks are not available in Thailand.

A trade mark is registered for a period of ten years from the filing date, renewable every ten years. A renewal application may be filed at any time within three months before the expiry of the trade mark.

There is a late renewal grace period of six months to renew trade marks. If the trade mark is not renewed either within three months before the expiry or during the six-month grace period, the registration lapses and cannot be revived.

There are no specific requirements for renewing the registered trade mark. At the time of renewal, a trade mark registration cannot be updated or refreshed. The registrant cannot make any material alterations to the registered trade mark or add any new goods or services; they may only delete items of goods or services from the specification.

Both single class and multi-class trade mark applications are available. An applicant must file a new application for their trade mark with the Thai Trademark Office either directly or via the e-filing system.

The applicant needs to submit the new trade mark application form, a specimen of the trade mark, and the full list of goods or services compliant with the Thai Classification Handbook. If claiming priority, the applicant must also submit a certified copy of the priority application and a signed priority statement. The agent must submit a signed and notarised power of attorney confirming appointment as the applicant’s representative.

At the filing stage, the Trademark Office charges the official fee of USD33 per item for five items or less. If the particular class comprises more than five items, then a lump sum fee of USD290 is charged instead. At the registration stage, the official fee is USD20 per item for five items or less, or a lump sum fee of USD175 for over five items.

Anyone can file an application to register a trade mark. If a foreigner is an applicant, they must appoint an agent in Thailand in order to have an office or address for communication. The appointment of a qualified IP lawyer as an agent is recommended.

There is no requirement to use the trade mark or submit evidence thereof before the registration is issued.

The examiner checks for prior rights during examination of an application for registration, and cites such prior rights, if raised. Prior rights include any prior identical or confusingly similar trade marks in the same class or in a closely related class having goods or services of the same character.

A letter of consent or a co-existence agreement from the owner of a prior trade mark cannot facilitate the registration of another trade mark owner’s subsequent registration. However, as an exception, under Section 51/1 of the Trademark Act, examiners may accept a letter of consent in the event that the citation is a result of assignment or assign-back procedure.

Third-party observations are not allowed during the trade mark registration procedure. However, a party may file an opposition against the published trade mark during the opposition period, pursuant to Section 35.

After an opposition is filed, the examiner serves a notice of opposition to the applicant. The applicant must file a counter-statement to the opposition within 60 days from the date of receiving the opposition notice. Failure to file the counter-statement within 60 days results in the application being deemed abandoned.

An opposition can be filed by any person on any of the following grounds:

• the opponent has a better title to the trade mark than the applicant;
• the trade mark lacks registrability requirements under Section 6 (provided in 2.2 Essential Elements of Trade Mark Protection); and/or
• the application is not in conformity with the provisions under the Trademark Act.

The opponent need not show that they have any sort of standing or commercial interest.

The applicant cannot make any material alterations to the trade mark after filing. An amendment as to the specification of goods or services filed can be done after the examiner issues an office action for the same. Any other changes such as change of applicant’s name or address, change in ownership of the trade mark, change in the appointed local agent, etc can be made at any time.

There is no provision under the Trademark Act or supporting regulations to split or divide a multi-class trade mark application.

The trade mark examiner in charge of the application examines the information provided in the application form as well as other details. A person who makes a false statement in an application for registration is liable to imprisonment not exceeding six months or a fine not exceeding THB10,000 or both, in accordance with Section 107 of the Trademark Act.

The examiner may refuse registration of a trade mark on the ground of lack of inherent distinctiveness under Section 7, or if the trade mark is composed of any prohibited characteristics under Section 8. If a refusal is raised by the examiner based on absolute grounds, it is not possible to file a response to the examiner; the only recourse available is to appeal against the refusal to the Trademark Board.

An applicant has the right to file an appeal against the examiner’s refusal to register a trade mark, either on absolute or relative grounds. The Trademark Board is an administrative body within the Department of Intellectual Property.

The appeal must be filed to the Trademark Board within 60 days from the date of receipt of the notice of refusal. The applicant cannot seek an extension to file the appeal; however, they may submit additional arguments or evidence within 60 days after filing the appeal.

Thailand is a signatory to the Madrid system. The statutory provisions for registration of trade marks under the Madrid system are provided under Section 79 of the Act. In order for a person to become eligible to file an international application in Thailand, they must have either a national application in Thailand or a registration therefor, and must meet the following criteria:

• being a Thai national or a juristic person having a principal office in Thailand; or
• being domiciled in Thailand; or
• having an effective industrial or commercial establishment in Thailand.

A party is permitted to file an opposition to a trade mark after it is published in the Thai Trademark Gazette. The opposition period is 60 days. The potential opponent cannot request an extension of time to file the opposition.

There is no provision under the Trademark Act for a cooling-off period. Nonetheless, during the opposition proceedings, the parties are not prohibited from conducting informal discussions and withdrawing the opposition proceedings.

Please see 4.8 Consideration of Third-Party Rights in Registration for the legal grounds to file an opposition. Trade mark dilution is not specifically defined or mentioned in the Trademark Act. However, an opponent may base their arguments on dilution of their trade mark in an opposition proceeding or to prevent use of a mark in a lawsuit. However, in the absence of a specific dilution law, the courts are unlikely to recognise the principle of dilution.

Any person may file an opposition petition. It is not strictly necessary to hold a trade mark or a trade mark registration to file the opposition, especially if the ground of opposition is that the trade mark to be opposed lacks registrability requirements under Section 6, or that it is not in conformity with the provisions of the Act. But if the opponent claims to have a better title to the trade mark, then they should have a trade mark, either through registration or prior use in commerce. The opponent should have a qualified IP lawyer as their representative to help avoid any pitfalls.

Attorney fees may range between USD800 and USD1,000, excluding tax and miscellaneous costs. The official fee is around USD65.

Please see 4.8 Consideration of Third-Party Rights in Registration for the brief opposition procedure. Each party is allowed to submit additional arguments or evidence in support of their claims within 60 days of filing the opposition and the counter-statement respectively. After the documents are submitted, there is no hearing process. The examiner will issue the decision in around 12–14 months.

The losing party may appeal against the examiner’s decision to the Trademark Board within 60 days from the date of receipt of the decision. The winning party is not allowed to rebut or submit any arguments during the appeal. The Trademark Board after conducting the review, issues its decision in around 20–24 months.

The Trademark Board’s decision can be appealed to the CIPIT Court within 90 days from the date of receipt of the decision. The CIPIT Court will issue its decision in around one to two years after the complaint is filed. The decision of the CIPIT Court can be further appealed to the Court of Appeal for Specialized Cases, which will issue its decision in around one year after the appeal is filed.

Finally, the party receiving an unfavourable decision from the Court of Appeal may submit a petition to the Supreme Court to hear its case. If the petition does not raise any new or significant issues, the Supreme Court will dismiss the petition. The Court will issue an order either accepting or dismissing the petition in around eight to ten months. If the petition is dismissed, the decision of the Court of Appeal will be final.

For a trade mark cancellation on the ground of bad faith, morality or being contrary to public policy, there is no statutory limitation or time period. A trade mark cancellation on the ground of non-use can only be filed after a minimum period of three years after registration of the trade mark. A trade mark cancellation petition on the ground of the petitioner’s better right in the trade mark must be filed within five years from the date of the examiner’s order to register the trade mark.

A cancellation petition can be filed due to any of the following reasons:

• trade mark lacked distinctive character (Section 61(1));
• trade mark contained prohibitory characteristics (Section 61(2));
• trade mark was identical with a prior registered trade mark for goods in same class or different classes but of the same nature (Section 61(3)); or
• trade mark was so similar to a prior registered mark that it would confuse or mislead the public (Section 61(4));
• trade mark was registered in bad faith and contrary to public policy, morality (Section 62);
• trade mark was not put to use by the owner, or the owner had no bona fide intention to use the registered trade mark at the time of registration (Section 63);
• at the time of filing the cancellation petition, the registered trade mark had become common to the trade or lost its meaning as trade mark (Section 66); and
• petitioner had better right in the trade mark than the registered owner (Section 67).

There is no expungement or re-examination procedure.

A cancellation petition may be initiated by either any person, an interested person or the examiner, depending on the ground on which the petition is filed. In order to prove that the petitioner is an interested person, the petitioner must actively demonstrate that they are affected by the continued registration of the registered trade mark.

Except for a cancellation petition on the ground of better right, which must be filed directly at the CIPIT Court, cancellation petitions (on all the other grounds) must be filed with the Trademark Board.

A partial revocation/cancellation is only possible in a petition based on better right in the trade mark. If the petitioner can prove that they have better rights for only some of the goods of the class in which the mark has been registered, the court shall restrict the registration to only those goods in relation to which the petitioner cannot prove that they have better rights than the trade mark owner.

An amendment to the revocation or cancellation proceedings is not possible.

There must be separate proceedings for a cancellation petition and infringement of a trade mark; they are not heard together. The revocation proceedings are filed with the Trademark Board whereas the infringement proceedings are filed with the CIPIT Court, hence they are not heard together. The timing of the respective decisions depends on when the cases were initiated. Generally it is around 18–24 months from the date of filing.

There are no special procedures to cancel fraudulent or bad faith trade marks. The rightful owner must rely on the opposition and/or cancellation proceedings provided under the law to invalidate the fraudulently filed or registered trade marks. There is no formal procedure of investigation of a fraudulently filed or registered trade mark, nor are there any consequences for the applicant. The applicant is not barred from filing new applications.        

Assignment recordation for a trade mark or a copyright is a simple process. The assignment must be recorded in writing with the Trademark or Copyright Office, along with submitting other necessary documents. Both registered and pending trade marks can be assigned or transferred by succession. After submission of the documents, it usually takes three to four months to approve the assignment and update the details.

Both trade marks and copyright can be assigned in whole or in part. A copyright assignment by other means, except by inheritance, must be in writing.

Trade Mark

It is mandatory to record a licence agreement for a registered trade mark with the Thai Trademark Office, pursuant to Section 68. The Licence Agreement must state the mark(s) to be licensed, the goods or services with which the licensee may use the mark(s), and the manner by which the licensor will effectively control the quality of the goods or services produced by the licensee. The Agreement should also state whether the licensee is an exclusive or a non-exclusive licensee, and the duration of the agreement.

Copyright

Copyright assignment must be in writing and submitted to the Copyright Office. The licence can be exclusive or non-exclusive.

Assignment of pending trade marks can be recorded with the Trademark Office, but a pending trade mark cannot be included in a licence agreement to be registered with the Trademark Office. Until the trade mark is registered, the licence agreement will be governed by the contractual provisions under the Civil and Commercial Code.

The Trademark Act does not provide for any penalty if a licence is not recorded. However, an unrecorded licence agreement cannot be introduced in court as evidence. For an unrecorded licence, the licensee’s use of the registered trade mark will not be considered as use of the registered mark by the registrant, and the mark might be vulnerable to cancellation on the ground of non-use.

An assignment should also be recorded with the Trademark Office. In the absence of such, if there is a dispute and the ownership details have not been updated, the other party may contest the new owner’s right to take action.

The Copyright Act does not specifically provide for the recapturing of transferred rights.

The Business Collateral Act B.E. 2558 (2015) allows for using IP assets as collateral to secure loans. The secured parties must be either financial institutions or other persons as specified by the Ministerial Regulations. To use the IP assets as collateral, the IP owner must execute a security agreement with the secured party. The security agreement must be in writing and registered with the Department of Business Development.

A claim for trade mark or copyright infringement must be brought within a specific period of time, as per the prescription period provided under the Thai Civil and Commercial Code. If the prescription period lapses before the claim is made by the trade mark or copyright owner, then such claim is barred and the owner cannot bring an infringement lawsuit.

A claim of trade mark infringement can only be pursued by the owner or exclusive licensee of a registered trade mark. Owners of unregistered marks cannot claim infringement, but must rely on the common law right of passing off. Both trade mark and copyright laws allow direct and contributory infringement.

Unauthorised use of an identical or a confusingly similar trade mark in respect of the registered goods or services constitutes trade mark infringement.

Reproduction or adaptation, and communication to the public without authorisation is deemed copyright infringement. If the copyright work is an audio-visual work, a cinematographic work, a sound recording or a computer program, letting for hire of the original or copies of the work without authorisation is also infringement. For a copyrightable sound and video broadcasting, making an audio-visual work, a cinematographic work, a sound recording or a sound and video broadcasting work whether in whole or in part; rebroadcasting whether in whole or in part; or making a sound and video broadcasting work to be heard or seen in public by charging money or other commercial benefits is deemed infringement.

For trade mark dilution, please refer to 5.2 Legal Grounds for Filing an Opposition.

Rights management information is defined under the Copyright Act as the information which indicates an author, works of authorship, performer, performance, copyright owner or terms and conditions for use of the work as well as numbers or codes signifying such information on which such information is attached or appeared in connection with the copyright work or recording material of the performance.

Any deletion or modification of rights management information with the knowledge that such act may induce to cause, cause, facilitate or conceal an infringement of copyright or the performer’s rights is deemed an infringement of rights management information, pursuant to Section 53/1 of the Act.

A trade mark counterfeiting offence is a straightforward case with no burden of proof on the owner, whereas to prove trade mark imitation, the IP owner needs to prove that the two marks are confusingly similar and the infringer’s intent to mislead the public (see 8.12 Counterfeiting and Bootlegging for counterfeiting and imitation).

A trade mark infringement lawsuit must be filed either by the registered owner or the exclusive licensee (if the licence agreement allows them to do so). A non-exclusive licensee cannot file an infringement lawsuit in their own name. The trade mark or copyright owner may send a cease-and-desist letter to the infringer but, until the mark is registered, the owner cannot take any enforcement action. Third parties cannot join a trade mark or copyright infringement lawsuit.

Class action lawsuits can be filed for trade mark or copyright proceedings. The plaintiff may file a complaint together with a request to the court to conduct the case as a class action. If the plaintiff can prove that there is a common basis for claim for all members, ordinary lawsuit would be inconvenient and a class action would be more efficient, the court may allow a class action, subject to objection from the other party.

There are no specific prerequisites to filing a trade mark or copyright lawsuit. There are no specific provisions on actions against groundless threats in the Thai Trademark Act or the Thai Copyright Act. However, if groundless threats are raised against a party, they may take a legal action against the owner under the Thai Civil and Commercial Code, claiming that such assertion injures their reputation, credit, earnings or prosperity.

The Central Intellectual Property and International Trade Court (CIPIT) is a specialised court responsible for handling all IP and trade disputes and is the court of first instance. A decision of the CIPIT is appealable to the Court of Appeal for Specialized Cases, which is the appellate court. Finally, the decision of the Court of Appeal for Specialized Cases may be appealed further to the Supreme Court of Thailand. However, the losing party needs to file a petition along with the appeal to the Supreme Court, urging the court to hear the case. The Supreme Court will accept the petition to hear the case only if the petition raises any new or significant issue to be heard. If the Supreme Court dismisses the petition, then the decision of the Court of Appeal for Specialized Cases will be final.

The typical costs that arise before an official complaint or lawsuit is filed include costs for sending cease-and-desist letters (not mandatory but recommended), physical investigation, gathering evidence for submission, etc, as well as the costs of the legal representative. The parties in trade mark or copyright litigation matters need to be represented by a lawyer licensed to practise law in Thailand.

A foreign trade mark owner cannot bring an infringement claim without having a valid Thai registration. However, they may rely on passing off under the Thai Trademark Act, and relevant provisions under the Thai Penal Code. A copyright owner may bring infringement claims in Thailand.

The complaint filed to initiate a trade mark or copyright lawsuit contains the facts and allegations to constitute the basis of claims. The complaint must set out all the claims specifically, and no new claims can be introduced later. During the pretrial hearing, the CIPIT Court lists the issues to be heard in the dispute. The parties may introduce evidence during the trial, including affidavits by witnesses. Lawsuits for trade mark proceedings have their own procedures and guidelines, which are different from non-IP related proceedings.

The defendant can initiate a cross-claim or a counterclaim in response to the owner’s infringement lawsuit. 

The alleged trade mark or copyright owner cannot start declaratory judgment proceedings, as they are not available in Thailand.

There are no alternate avenues to resolve small trade mark or copyright claims.

The Trademark or Copyright Office do not make decisions on infringement. Infringement of a trade mark or a copyright is decided by the court.

Unauthorised use of an identical trade mark in respect of exactly the same goods or services as registered under the rightful owner’s trade mark is deemed trade mark counterfeiting.

Though bootlegging is not defined under the Act, the law provides for penalty against trade mark imitation. Imitation refers to unauthorised use of a confusingly similar trade mark in respect of exactly the same goods or services as registered under the rightful owner’s trade mark.

Both counterfeiting and imitation are criminal offences.

Please see 8.7 Lawsuit Procedure on the specialised IP Court for trade mark and copyright cases. Copyright and trade mark cases are determined by technical judges, having expertise in IP laws. The parties do not have any influence on who is the decision-maker.

A trade mark registration grants exclusive rights to the registrant to use the trade mark for the registered goods or services, and is prima facie evidence of their established rights in Thailand. In order to be held liable for infringement, the infringer must be using the same or a similar mark for the same goods and services as those listed in the trade mark registration only. The scope of infringement does not extend to related goods or services.

There are no pretrial discovery procedures in Thailand in IP infringement cases by which the trade mark or copyright owner can obtain relevant information and evidence from the other party directly. However, the owner may file a motion in the court demanding that the other party produce the evidence or known documents. The owner must show good cause for filing such motion.

Expert witnesses and/or surveys, while not strictly necessary, are allowed for trade mark or copyright infringement claims, and are frequently introduced by the parties during the trial. Expert opinion or a survey result may help support arguments that there is a likelihood of confusion between the trade marks, or there is no copyright infringement, as the case may be. The expert opinion and/or survey results are persuasive at most, and are not binding on the courts.

Typical costs for bringing a trade mark or copyright infringement lawsuit depend on the legal representatives handling the case. The main factors that may impact the expected costs include unforeseen delay in the timeline, change in the number of witnesses due to testify, tactics by the other party to delay the case, unavailability of the judges, etc.

A trade mark or copyright infringement is a criminal offence, not an administrative one, and the remedy for infringement can only be enforced through the courts.

Certain exceptions to trade mark infringement exist under Section 47, and parties using the trade marks under these exceptions can claim a defence against trade mark infringement. Any bona fide use by a person of their own personal name or surname or the name of their place of business or that of any of their predecessors in business or the use by any person of any bona fide description of the character or quality of their goods is not considered trade mark infringement.

For exceptions to trade mark infringement, see 10.1 Defences to Trade Mark Infringement.

The Copyright Act provides for various exceptions to copyright infringement. Section 32 provides that an act against a copyright work of another person which does not conflict with a normal exploitation of the copyright work by the owner of copyright and does not unreasonably prejudice the legitimate right of the owner of copyright shall not be deemed an infringement of copyright. All the other exceptions listed in the statute must definitively comply with Section 32 first and foremost, failing which the acts will be deemed as infringing copyright.

Reproducing a copyrighted work for research or study of the work not for profit or use for personal benefit or for self-benefit together with the benefit of other family members or close relatives is not deemed infringement of copyright.

The Trademark Act does not specifically contain a provision on contributory infringement by intermediaries such as ISPs, and parties need to rely on provisions under other laws such as the Civil and Commercial Code.

However, a recent amendment to the Copyright Act includes safe harbour provisions, stating that ISPs are not liable for copyright infringement, as long as they meet with general and specific requirements under the law, such as implementing the notice and take-down system. The ISPs must also explicitly announce the policy to terminate services to repeat infringers.

Trade Mark

Though the first sale doctrine or parallel import is not explicitly provided under the Thai Trademark Act, Thailand recognises the principle of international exhaustion of trade mark rights, based on a 2000 Supreme Court judgment. Thus, the first sale of an item bearing a trade mark exhausts the owner’s right to that specific item.

Copyright

For copyright as well, Thailand recognises the principle of international exhaustion of rights, which is statutorily provided under Section 32/1 of the Thai Copyright Act, stating “A distribution of an original or copies of a copyright work by any person who lawfully acquires the right of ownership in such original copyright work or copies of such original copyright work shall not be deemed an infringement of copyright.”

Section 34 of the Copyright Act allows a librarian to reproduce a copyright work for use in the library or another library, or a reasonable reproduction in part of a work for another person for the benefit of research or study, provided that the reproduction is not for profit.

Preliminary injunctions are available to trade mark and copyright owners under Sections 116 and 65 of the Trademark Act and the Copyright Act respectively. A trade mark or copyright owner needs to establish that there are sufficient reasons to grant the injunction, and that the nature of the injury incurred is such that the owner cannot be restituted by monetary measures or any other form of indemnity, or it might be difficult to enforce the judgment against the defendant afterwards.

The Trademark Act allows all goods which are imported for distribution or had in possession for distribution in violation of this Act to be confiscated whether or not anyone has been convicted of the offence. Under the Copyright Act as well, infringing work made in or imported into the Kingdom, and things used for committing an offence, are confiscated or, where the court considers it appropriate, destroyed or rendered unusable at the infringer’s expense.

The court may require the applicant to deposit a sum of money as a guarantee to the court, and the amount is determined by the court at its discretion, pursuant to Section 257 of the Civil Procedure Code.

Trade Mark

The Trademark Act does not specify the type of damages that can be claimed in infringement. The CIPIT Court applies civil tort law and uses its discretion and facts of the case to determine the damages to be awarded. Punitive damages are not allowed in trade mark infringement cases under Thai law and practice. To claim damages, the IP right owner must file a civil case separately or simultaneously with the criminal case, and prove actual damages suffered. If the owner cannot prove damages, then the court may not grant any damages. If the owner can prove the damages sustained but not the exact amount, then the court may award damages as per its discretion.

Actual damages are based on the amount of actual loss resulting from such infringement. Costs for enforcement and lawsuit may also be included.

Copyright

Unlike trade mark law, the Copyright Act clearly stipulates the damages payable under Section 64, with the court having authority to compensate the owner of copyright or performer’s rights with damages of the amount which the court considers appropriate by taking into account the gravity of injury, including the loss of benefits and the expenses necessary for the enforcement of the right.

If there is explicit evidence that the infringement has been committed intentionally, causing a copyright work or performer’s rights to be widely accessed by the public, the court can impose higher damages, but not over twice the amount as specified in Section 64 paragraph one.

In a civil action, the court has discretion to award the costs and attorney fees against the losing party or to order that each party be liable for their own cost.

Please refer to 11.1 Injunctive Remedies.

The Thai Customs Department has power under the Customs Act to seize counterfeits coming in or going out of the country. In 2022, the Customs Department issued a Notification concerning Control of Export, Import and Transit of Trademark and Copyright Infringing Goods, pursuant to which new regulations came into force.

It is not obligatory for trade mark owners to record the application for customs registration with the customs authorities, but it is recommended. Both copyrighted work and registered trade marks can be recorded with the Customs Department by submitting the necessary documents provided in the Notification.

Please refer to 12.2 Alternative Dispute Resolution.

Arbitration and mediation processes are available as alternative dispute resolution mechanisms, but are not mandatory. For infringement related disputes, usually the CIPIT offers mediation procedure before the trial takes place, which may or may not be accepted by the parties. If the mediation is successful, the owner may withdraw the infringement lawsuit and agree to execute a settlement agreement, which is binding upon the parties.

Apart from the court appointed mediation process, the Department of Intellectual Property also offers mediation to resolve infringement disputes amicably.

Generally, an infringement proceeding and a revocation proceeding are initiated in different forums and therefore are independent, so they will not have an influence on each other. But if a civil case and a criminal case are proceeding simultaneously, the civil case will be suspended until there is a decision on the criminal case.

A decision on trade mark or copyright infringement made by the CIPIT Court can be appealed to the Court of Appeal for Specialized Cases.

The losing party may file an appeal within 30 days upon receiving the decision of the CIPIT Court, or may request additional extensions of 30 days or 60 days. The CIPIT Court usually grants up to two or three extensions.

Please see 13.1 Appellate Procedure and 13.2 Timeframes for Appealing Trial Court Decisions.

The appellate court will review the full facts of the case as well as the legal grounds. However, no new facts or legal grounds can be introduced at the appeal level.

Thailand currently does not have a well-defined or a unified regulatory framework on the right of publicity or personality. To protect their image or likeness, a celebrity or a public figure may invoke the right to privacy provided in the Constitution of the Kingdom of Thailand under Section 35: “A person’s family rights, dignity, reputation and the right to privacy shall be protected.”

Unauthorised use of the image of an individual, including a public figure, may also be claimed to violate Sections 420 and 421 of the Thai Civil and Commercial Code, if the person can prove that as a result of use of unauthorised exploitation of their image, the person suffered damages, in which case the act will be deemed wrongful.

However, a celebrity may trade mark their representation, or a person may trade mark the name or representation of such celebrity upon seeking their necessary permission. Such name or representation, if found to be distinctive, can be registered as a trade mark. There are quite a few registered trade marks in the names of celebrities in Thailand, including “Jennifer Aniston”. 

Thailand does not have any specific unfair competition law vis-à-vis intellectual property rights.

There are no specific laws, regulations or court cases concerning artificial intelligence in respect of trade mark and copyright laws. Thailand being a civil law country, the courts may take into consideration foreign court rulings, but they are only persuasive in nature and not binding upon the courts.

Please see 10.4 Intermediaries.

There are no special rules or norms as such. Trade mark registration is not required or a prerequisite to affixing the trade mark on the products while manufacturing, but is recommended for safe use of the trade mark.