26 February, 2017
Multiple-class trademark applications became available in Thailand for the first time by virtue of the Thailand Trademark Act (No. 3) B.E. 2559, which amended the Thailand Trademark Act B.E. 2534, and which came into effect on July 28, 2016. The amended Trademark Act allows you, as a trademark owner, to file one application to cover goods and/or services in more than one international class. This provides an important new option, but there are still circumstances in which you may prefer to file separate single-class trademark applications. This article will provide an overview of your options under both approaches.
In the past, if you wanted to register one trademark in many classes in Thailand, you were required to file separate single-class applications for each class. Under the new law, you can simply file one multiple-class application for all the intended classes at once.
A multiple-class application may be administratively more efficient than separate single-class applications, because your multiple-class application will have one application number and registration number, and one application and registration date. You will therefore have less administrative work when maintaining your multiple-class applications. Similarly, if you need to change your name or address, or assign the application/registration to another party, only one filing will be necessary, rather than separate filings for each classification. Thus, a multiple-class application can be an attractive option.
But there are also drawbacks to filing a multiple-class application in Thailand. One drawback is that you may face delays in obtaining registration in certain circumstances. For example, in the event that the Thai Trademark Registrar issues a notification relating to one or more classes covered by your application, the entire application will be delayed until the matters raised in the notification are resolved. Currently, it is not possible to divide a multiple-class application after filing. Thus, there is a risk that all classes will be delayed if one or more classes encounter a problem. Under the existing practice, your only available option to move the application forward is to delete the problematic class(es) from the application.
When seeking trademark registration, you will naturally be concerned about the costs of the process. The government fees for filing, registration, and renewal of both single- and multiple-class trademark applications are based on the number of items of goods/services in each classification. This means that the government fee will not differ if you choose to file a multiple-class application rather than a single-class application.
Therefore, as explained above, the main benefit of the new system allowing for the filing of multiple-class applications is improved efficiency in the application, registration, and renewal of a mark that is filed in more than one class. However, there may be drawbacks to multiple-class applications during the application phase.
The availability of multiple-class applications in Thailand is a positive development and will certainly be welcomed by trademark owners and practitioners as another option within the trademark system. When applying for a new mark, your decision about whether to file a single- or multiple-class trademark application will depend on several variables, such as whether you need the registration to be issued speedily, the chances that your application will encounter problems in some classes, and your own preferences with respect to administration of your marks. In certain circumstances, you may decide to file separate single-class applications to ensure that your specific objectives can be achieved.
For further information, please contact:
Teerin Chanwatana, Tilleke & Gibbins
teerin.c@tilleke.com
