Before introducing a new product to the market, it is a common practice for both domestic and international brand owners to file a trademark application, obtaining exclusive rights to use their new trademark and legally enforce it against any infringement.
The timeframe of the registration process for a new trademark varies in different countries depending on several factors such as the local procedure, capacity of the trademark office, number of new applications during that period, and backlog of pending applications under examination.
In Thailand, the normal trademark registration process, even without any obstacle (such as rejection or opposition), can take as long as 16-18 months from the date the application is filed to the date the certificate of trademark registration is issued.
It has become known within the business community that the examination process for a trademark application in the country is relatively long compared to other countries in Southeast Asia. Occasionally, this issue became a burden for brand owners urgently needing to launch a new product in the Thai market, or to license a new trademark or service mark to potential local licensees.
Fortunately, the government has realised it needs to catch up with the speed that modern business transactions are conducted nowadays, and must accommodate the needs and expectations of brand owners and their business partners planning to invest in Thailand.
Consequently, Thailand’s Department of Intellectual Property (DIP) launched the First Action Fast Track programme, effective from early 2022, to expedite the examination process.
Instead of waiting 10-12 months, as happened in the past, brand owners may now expect issuance of the first office action for a trademark application within six months from the date of filing an application, without having to pay any additional government fee.
The main objective of this programme is to automatically reduce the time in which the first office action is normally issued for trademark applications that match requirements for fast-track examination.
To be eligible for this expedited process, a trademark application must comply with all fast-track requirements specified in the official DIP’s announcement:
- While both single-class and multi-class applications are acceptable, the total number of the proposed goods and/or services for one new trademark application must not exceed 50 items;
- It is important to note that a strict practice on the description of goods and/or services is implemented in the First Action Fast Track programme. In other words, a trademark application that qualifies for a fast-track examination must contain goods and/or services listed in the DIP’s manual on the standard description of goods/services only; and
- On or after filing a new trademark application, any amendment, recordal of trademark assignment or inheritance of trademark rights, or request to prove acquired distinctiveness through use, must not be made.
If a trademark application complies with the above-mentioned requirements, the brand owner can enjoy benefits of the First Action Fast Track programme automatically, without having to explicitly request a fast-track examination in the application, or submit a separate request form. In addition, government fees are the same as for the normal trademark registration process.
This first fast-track filing programme immediately became attractive to many brand owners, and has proven to be useful and satisfactory in actual practice.
Following last year’s successful launch of the First Action Fast Track programme, the DIP took another remarkable step, in early 2023, by offering an upgraded fast-track filing programme to particularly support brand owners with an emergency need of a new trademark in Thailand.
This upgraded programme is designed to further expedite the examination process to be completed within just four months from the date of filing an application, provided that brand owners agree to comply with a set of requirements beyond the First Action Fast Track programme. There is also some additional specific information or evidence that must be submitted.
To enjoy advantages of the newly implemented fast-track filing for emergency use of a trademark, brand owners must file the trademark application following these strict conditions:
- The trademark application and all the supporting documents must be submitted through the DIP’s e-filing system;
- Under this upgraded fast-track filing programme, the DIP accepts only a single-class application that contains a maximum of 10 items of goods or services. A multi-class application is not acceptable;
- To ensure the trademark application qualifies for a fast-track examination, all the goods or services seeking protection must strictly comply with the DIP’s manual on the standard description of goods/services;
- In line with the First Action Fast Track programme, any amendment, recordal of trademark assignment or inheritance of trademark rights, or request to prove acquired distinctiveness through use, must not be made on or after filing;
- Brand owners must submit a document proving their urgent need to use the trademark in Thailand. For example, a business plan that clearly indicates the need to use or commercialise a new trademark urgently, or an upcoming marketing or product launch campaign within a short period;
- Brand owners must provide a search report on similar and/or identical prior marks based on the search results from the database of the DIP, the EU’s trademark database TMView, and the Global Brand Database;
- Late submission of required documents is not permitted.
When submitting a trademark application through the DIP’s e-filing system, the applicant is required to execute a special request form for fast-track filing for emergency use of the trademark, along with all the required information and supporting documents.
Within only 15 days from the date the application is filed, the DIP will then notify the authorised representative of the brand owner by email as to whether or not the request for fast-track filing for emergency use of the trademark is granted.
Although the procedure of the upgraded fast-track filing is slightly more complicated than the First Action Fast Track, brand owners know within a short period whether their trademark applications will indeed enter the expedited examination.
It is important to note that while Thailand is a member of the Madrid Protocol, applications under the International Trademark Registration system are ineligible for both the First Action Fast Track and upgraded fast-track filing programmes. Unfortunately, an official request to expedite the examination process of applications through the Madrid Protocol is not available under the current practice.
Therefore, if brand owners have an urgent need to commercialise or use a new trademark for any purpose in the country, they will need to appoint a Thai trademark counsel to file a local trademark application under the First Action Fast Track programme or upgraded fast-track filing programme directly with the DIP.
Since the First Action Fast Track and upgraded fast-track filing programmes both have different requirements, and offer slightly different advantages, brand owners can consider which path suits their situation best or better matches business objectives for their trademarks. Experienced local trademark lawyers are the suitable solution to advise and guide the new process step by step.
Considering continuing growth of business opportunities in the Thai market – and the fact that government DIP fees are still relatively low compared to many other Southeast Asian countries – it seems promising that the First Action Fast Track programme and fast-track filing for emergency use of a trademark will attract more and more brand owners to invest and protect their trademarks in Thailand.