Thailand Introduces Fast-Track Procedures for Trademark Examination and Renewal

Thailand’s Department of Intellectual Property (DIP) has introduced ‘fast-track’ procedures to significantly expedite trademark renewals and new trademark examination processes.

Fast-track renewals

The first of these was launched on 1 March 2021, when the DIP instituted a fast-track option for the renewal of qualifying trademarks in Thailand. When a trademark renewal application is processed through the fast-track channel, examination of the application and grant of a certificate of renewal will be completed within just 45 minutes of filing. This expedited process incurs no additional official fee.

To benefit from this, renewal applications must comply with a few specific requirements laid out in the DIP notification. First, the total number of goods or services on the application must not exceed 30 items, and no changes may have been made to the particulars of the registration. The application must also be filed at the DIP by either the owner or an appointed attorney. In the latter case, the power of attorney must authorise the attorney to collect the certificate on the owner’s behalf. Finally, fast-track examination must be requested when the renewal application is submitted.

We have submitted a test case with the DIP and can confirm that, when the above conditions are met, the DIP can complete and issue a certificate of renewal within 45 minutes of the renewal application being submitting.

Fast-track examination

After the successful implementation of the fast-track renewal process, the DIP then turned its attention to the trademark application examination process and the issuance of initial office actions, launching the “First Action Fast Track” programme on 16 April 2021.

Under this programme, a first office action for qualifying trademarks in Thailand will be issued within six months of the filing of an application – again at no additional cost. To benefit from this expedited process, applicants must ensure that their trademark applications comply with a list of conditions specified in the DIP notification. These include limiting the total number of goods or services to a maximum of 10 items, and employing descriptions of the goods or services in keeping with the suggested description manual available on the DIP website. In addition, no amendment (eg, recordal of name and address change), recordal of assignment or inheritance, or request to prove acquired distinctiveness through use may be made on the application.

If an application meets all of these conditions, it will be eligible to enter the new fast-track process. Though not stated in the notification, it is recommended that applicants or representatives who wish to benefit from a fast-track examination explicitly indicate this on their application.

Comment

These new expedited practices are positive, brand-friendly steps from the DIP that are aligned with international benchmarks. The fast-track renewal – while a welcome improvement in itself – will also allow for smoother and more seamless trademark-related transactions, such as trademark assignments and recordals of change of name or address, which can be complicated when attempted while a renewal is pending. The fast-track examination procedures will provide faster initial examination of trademark applications and thus enable businesses to implement their IP strategies with fewer delays and obstacles. Together, these business-friendly developments from the DIP have the potential to boost trademark-related activities in the country to enhance Thailand’s competitiveness.

By Somboon Earterasarun, Tilleke & Gibbins, a Transatlantic Law International Affiliated Firm. 

For further information or for any assistance please contact thailand@transatlanticlaw.com

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