Satyapon & Partners

Trademark

Our specialists handle a huge volume of Madrid Protocol provisional refusals,
reach out to us for help with your trademark

Over 28,000+ Trademarks Registered

Trademark Search Services:

Trademark Prosecution:

Litigation & Enforcement:

Our Trademark Team has an unrivalled depth of experience protecting world renowned brands in Thailand and the surrounding region. From initial selection and search services through prosecution to enforcement our team handles the complete lifecycle of a Trademark. We understand that your brand can often be one of your company’s most valuable assets and that infringement can cost your company millions, and damage your brand’s image, especially in Asian markets where counterfeiting is prevalent and enforcement can be lax.

Starting from expert advice on which marks are most suitable for the home market to tailoring an existing mark’s application to meet the highly conservative standards of the Thai Trademark Office, our team can help your application navigate the prosecution process with the least resistance. With over 20 years experience and over 28,000 successful trademark registrations in Thailand alone, including landmark decisions at the Supreme Court level, our team is clearly a leader in the field.

Our founder has spent over 30 years building up a globe spanning network of the highest calibre legal professionals in the world. Whether you are taking a domestic mark international or bringing your mark to the ASEAN region, starting in Thailand, we can manage your global portfolio through our network. In particular we handle a large number of outgoing matters to the surrounding developing markets of Cambodia, Laos, Myanmar and Vietnam. Tailoring your protection to maximize your protection, counselling when to use direct filing versus instruments like the Madrid Protocol and European Union Trademark, risk assessment, enforcement, litigation and more are all part of the comprehensive service we offer our clients.

Our litigation team excels at out of court settlement, negotiation and arbitration. We pride ourselves on our ability of bringing even the most contentious cases to conclusion outside the courtroom thereby mitigating costs for our clients.

However, when action is the only way to resolve the matter, Satyapon & Partners is a market leader in brand enforcement and trademark litigation working hand in hand with the highest levels of the courts, Royal Thai Police, Customs, and the Department of Special Investigations (DSI). Our team is one of only a handful of firms with an in house enforcement team. We are passionate about combating piracy, counterfeiting, infringement and dilution of not only our client’s brands but also in improving the overall IP rights environment in the Kingdom for all rights holders. Our partners sit on the drafting committees aimed at revising Thailand’s intellectual property laws, guest lecture at a multitude of government, educational and private sector events, participate in and lead Thailand’s IP Associations and promote IP rights. Which is why many of the world’s most famous brands entrust us to protect their marks in Thailand and the surrounding region. Our success rate in contentious matters is unrivalled. Please see our enforcement page for more details on what we are doing to combat infringement in Thailand.

The Trademark Process in Thailand

Trademark is governed by Trademark Act B.E. 2534 (1991) as amended by Trademark Act (No. 2) B.E. 2543 (2000) and Trademark Act (No. 3) B.E. 2559 (2016).

Thailand is a Madrid Protocol member as of November 7, 2017.

Effective July 28, 2016, multi-class applications are allowed. Despite this possibility, there is no provision to voluntarily divide a multi-class application or registration. Thus, if there is an Office Action or opposition for one or more classes, the entire application will be delayed. If the applicant wants the remaining classes to proceed first, the problematic class(es) must be withdrawn. However, if the objected class(es) is/are the applicant’s products of interest, the applicant may not want to withdraw the problematic class and this would result in a delay for all classes.

In order to make sure that an application in one or more classes would not be cited against a prior mark or to anticipate any possible issues, trademark search is highly recommended. The Thai Trademark Office uses the Tenth Edition of the Nice Agreement as a guideline. However, Examiners have the discretion to deviate from those guidelines and generally require a very clear description for each of the goods and services in each class.

To claim priority, an application must be filed in Thailand within 6 months from the first foreign filing date (priority date). For priority claims we will need a signed statement and a certified copy of the priority application.

If there is any objection, the Trademark Office will issue an Office Action. The deadline to respond to the Office Action under the amended Act is 60 days from receipt of the Office Action. If there are no objections, the application will be published for opposition. If no opposition is filed within the opposition period, we will be instructed to pay the registration fee. After the registration fee is paid, the registration certificate will be issued.

The official fee at the filing, registration, and renewal stages is calculated per class. Thus, there is no difference in the official fees for a single class and multi-class applications at those stages.

At present, in view of complications that could arise from a multi-class application, filing an application based on the single class system might be more favourable.

We are required to submit a notarized power of attorney at the time of filing, or within 90 days of the filing date.

Under the amended Trademark Act, partial assignment is possible. The Assign Back Strategy is also a viable solution for overcoming unreasonable office actions citing similar marks.

The term of registration is 10 years from the filing date, and is renewable every 10 years. We can file a renewal at any time within the 90 day period before the date of expiry. There is a grace period of 6 months with a 20% surcharge on official fees.