Thailand - Are You Truly Covered by Your International Registration?
Legal News & Analysis - Asia Pacific - Thailand - Intellectual Property
1 June, 2019
Thailand joined the Madrid Protocol for the International Registration of Marks on 7 August 2017, and it was possible to designate Thailand as of 7 November 2017. Since then we have seen an increasing number of applications designating Thailand, but few notices of objection have been raised by the Thai Trademark Office so far. Given that the Trademark Office has 18 months from the date on which Thailand was designated on any applications to raise objections, this means we are likely to see a flood of notices over the next few months.
Despite the lack of objections being raised by the Thai Trademark Office so far, we have managed to study a number of applications and one issue immediately stands out. Applicants may not be obtaining the protection they have sought and this could have serious implications in the enforcement of their trademark rights.
When applications are submitted via the IR route and designate Thailand, the section tasked with handling such applications translates the specifications from English to Thai and it is here we have seen a problem. While we have had many years experience in translating specifications of goods and services from English to Thai and are proficient and accurate in this task, officers of the Trademark Office have been limited to reviewing specifications in Thai language. They do not have much, if any, experience translating specifications from English to Thai. As a result, of those applications which the Trademark Officers have already completed the translation into Thai and which can be checked online, we have noted that the translations do not always fully or accurately represent the goods or services as listed in English in the original application. It should also be noted that the Trademark Office requires that specifications of goods/services be much more detailed than most other jurisdictions. As a result there is a greater chance of mistakes being made in translation into Thai. This is especially so when the specifications relate to new technologies for which there are no corresponding Thai words and descriptions in Thai become convoluted.
Now, if the translations are incorrect but objections are raised, then the discrepancies are likely to be caught and addressed when local agents are appointed to handle objections. Furthermore, according to the responsible officers of the Trademark Office, they will allow agents to make corrections to other Thai language specifications at that time, even if no objections were raised against those particular items. However, what about those cases where no objections are raised and the applications proceed directly to registration? The trademark owners would normally have no need to appoint an agent in these cases, so unless they have Thai language capabilities, they would not know whether or not the Thai language specifications actually correspond with the original English language specifications. Now in many cases this should not really be a problem as it is anticipated that for the most part the Thai version will be reasonably accurate. However, if the goods as registered in Thailand do not correspond with the English version, the registrant may not have the protection it believes. For example, the registrant may believe it has protection for a specific item of goods, as that is what is written in English, but if it is translated incorrectly into Thai, the registrant would in fact have no such protection, nor exclusive right to prevent others from using the mark with such goods. As a result, it may be unable to enforce its rights against infringers for such particular goods/services as the registrant only has protection for the goods or services as registered. It is also worth noting that once a trademark is registered, the law does not provide room to revise or correct the specification of goods or services. In such a case, the only option would be to file a new application covering the actual goods/services as intended.
As a result, it is worth considering whether it may be better to actually follow the national route rather than the international registration route, as experienced agents would be able to properly translate the specifications to obtain the coverage intended by the applicants. Alternatively, applicants may seek the assistance of Thailand based agents to check their IR applications to make sure the specifications of goods/services are being translated correctly and that they have the protection sought. If any errors are then found, they can be addressed before the applications mature to registration and it is too late.
For further information, please contact:
Dhiraphol Suwanprateep, Partner, Baker McKenzie