MINISTERIAL REGULATION (B.E (1992)) ISSUED UNDER TRADEMARK ACT, B.E (1991) 1

Transcription

1 Unofficial Translation * MINISTERIAL REGULATION (B.E (1992)) ISSUED UNDER TRADEMARK ACT, B.E (1991) 1 By virtue of section 5, section 11, section 29, section 30, section 35, section 40, section 41, section 43, section 48, section 51, section 52, section 54, section 57, section 59, section 68, section 71, section 72, section 80, section 81, section 86, section 92, section 94 of Trademark Act B.E (1991), the Minister of Commerce hereby issues Ministerial Regulation as follows: CHAPTER I GENERAL PROVISIONS Clause 1. In these Ministerial Regulations: Application means an application for registration of a trademark, service mark, certification mark, collective mark and other applications, and shall also include an objection, counterstatement and other requests. Certificate means a certificate of trademark registration, certificate of service mark registration, certificate of certification mark registration and certificate of collective mark registration. Registry means a registry of trademarks, registry of service marks, registry of certification marks and registry of collective marks. * Translated by Chandler and Thong ek Law Office Limited under contract for the Office of the Council of State of Thailand's Law for ASEAN project. -Initial Version pending review and approval by the Office of the Council of State. 1 Published in the Government Gazette Vol.109, Part 23, Page 1, dated 17 th March B.E (1992)

2 2 Clause 2. 2 All applications shall be in the forms as prescribed in a notification by the Director-General. Filling in an application shall be made in full in Thai by typing or printing and signed by the applicant. Submission of the application shall be made to the Registrar at Department of Intellectual Property, Ministry of Commerce, or the Provincial Commerce Office or other agencies as prescribed in a notification by the Director-General, or by registered mail with return receipt requested to the Registrar at Department of Intellectual Property, Ministry of Commerce, or by any other means as prescribed in a notification by the Director-General, together with fees, except as otherwise provided in other provisions of these Ministerial Regulations. In the case of submission by registered mail with return receipt requested under paragraph three, the date on which the application arrives at Department of Intellectual Property shall be deemed the date of submission of such application. Clause 3. In case an identification card is required to be attached to the application: (1) In the case of a natural person, a photograph of the citizen identification card or other identification card issued by a government agency, an alien identification card, or a passport, shall be acceptable. (2) In the case of a juristic person, an up-to-date juristic person certificate certified by a person with the authority to certify under the law not earlier than six month from the date of issuance of the certificate, except for a juristic person established under foreign law which submits the documents under clause 5 with a statement certifying it as a foreign juristic person. Clause 4. In the case of submission of an application by an agent or an attorney-in-fact, a copy of an agent appointment instrument or power of attorney and an identification card of the agent or the attorney-in-fact shall be attached. Clause 5. In the case of an agent appointment or granting of power of attorney made abroad, the agent appointment instrument or the power of attorney shall Trademark Act B.E (1992) 2 Clause 2 is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under

3 3 contain signature certification by the authorized official of the Thai embassy or consulate or the chief of the office attached to the Ministry of Commerce in the country of residence of the person who appoints the agent or grants the power of attorney or the person delegated to do so on behalf of such person, or must be certified by the person who was granted the power under the law of such country to certify the signature. In the case of an agent appointment instrument or power of attorney under paragraph 1 is made in Thailand but the person who appoints the agent or grants the power of attorney is not a resident of Thailand, a copy of the passport or a copy of the temporary residence certificate or other evidence demonstrating to the Registrar that at the time of appointment of the agent or granting of the power of attorney the person was actually present in Thailand. Clause 6. In submitting original documents accompanying the application, if the applicant concurrently submits a number of applications, the first application must be accompanied by original documents but other applications may be accompanied by copy documents with a statement specifying the application number to which the original documents were attached. Clause 7. In submitting a copy or a photograph of a document accompanying an application, the applicant must certify the genuineness of the copy or photograph. Clause 8. In submitting a document in foreign language accompanying an application, the applicant must have Thai translation of such document with certification of true translation thereof by the translator. Clause 9. The certificates and the substitute certificates shall be in the forms annexed hereto as follows: (1) Certificate of trademark registration shall be in the form of Form Khor.Mor. 1; (2) Certificate of service mark registration shall be in the form of Form Khor.Mor. 2; (3) Certificate of certification mark registration shall be in the form of Form Khor.Mor. 3; (4) Certificate of collective mark registration shall be in the form of Form Khor.Mor. 4;

4 4 (5) Substitute certificate of trademark registration shall be in the form of Form Khor.Mor. 5; (6) Substitute certificate of service mark registration shall be in the form of Form Khor.Mor. 6; (7) Substitute certificate of certification mark registration shall be in the form of Form Khor.Mor. 7; (8) Substitute certificate of collective mark registration shall be in the form of Form Khor.Mor. 8. CHAPTER II TRADEMARK Part 1 Application for Registration Clause 10. In applying for registration, the applicant shall submit an application together with the following documents: (1) 3 Five copies of the application; (2) Identification card. Clause 11. The trademark affixed to the application for registration must be printed or otherwise impressed so that it is durable, clear and of the size that can be affixed to the application. 4 Where the trademark under the application for registration is in the form or shape of an object, the trademark must show the form or shape of the object in all material respects intended to apply for protection, which may be shown by photographs or drawings. Clause 11 bis 5 The applicant for registration of trademark with the form or shape of an object may submit a description of the form or shape of such object in support 3 Clause 10 (1) is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991) 4 Clause 11, paragraph two, is added by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991)

5 5 of the application for registration together with the application for registration provided that it contains no more than one hundred words. Clause 12. If the trademark under the application for registration is in foreign language, its pronunciation and translation in Thai shall also be specified, except where the text in foreign language cannot be translated, provided that certification as true pronunciation and translation by the applicant is also provided in the application for registration. Clause 12 bis 6 If the applicant for registration of trademark wishes to exercise the right under section 28 bis, the application for registration of trademark and the application for exercise of right under section 28 bis shall be submitted with the following documentary evidence attached: (1) Evidence demonstrating that the applicant has brought the goods bearing the trademark under the application for registration for display at an international exhibition; (2) Certificate of the international exhibition issued by the Thai Government in the case that the Thai Government endorses such international exhibition, or certificate of the international exhibition issued by a governmental agency, state enterprise or other state body of Thailand or a party to an international convention or international agreement with respect to trademark protection to which Thailand is a party where such governmental agency, state enterprise or other state body is the organizer of the international exhibition; (3) Copy of the application for registration of trademark submitted abroad for the first time certified as true copy by the authority of trademark registration in such country (if any); (4) Copy of translation of the documents under (1), (2) and (3) where such documents are in foreign language. The international exhibition under paragraph one means an exhibition held to display or sell goods to visitors to the exhibition and there are participants in the exhibition or sellers of goods from two countries or more. 5 Clause 11 bis is added by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991) 6 Clause 12 bis is added by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991)

6 6 Clause 12 ter 7 In the case of inability to submit the documents under clause 12 bis concurrently with the application, the applicant shall submit a written request for relaxation in the form prescribed in a notification by the Director-General concurrently with the application for registration and the application for exercise of right under section 28 bis. In such a case, the Registrar shall have the power to grant relaxation of no more than ninety days from the date of submission of the application for registration. In the case of failure by the applicant to submit the documents within the time under paragraph one, the Registrar shall continue to review the application for registration, in which case it shall be deemed that the applicant does not intend to exercise the right under section 28 bis. Clause 13. An application for change to particulars in the application for registration shall be submitted together with documentary evidence as follows: (1) 8 In the case of immaterial change to the trademark, five copies of the application for change to registration particulars; (2) In the case of change to other registration particulars, documentary evidence of change to such particulars in one copy with respect to each particular. Clause 14. In case the applicant intends to change any material part of the trademark the application for registration of which has been submitted, or to add items of goods in the same category, the applicant shall submit a new application. Clause The Registrar shall publicize the application for registration in the Applications for Registration Bulletin and post such application in a public place at Department of Intellectual Property, Ministry of Commerce. particulars: Clause 16. The publication under clause 15 shall contain the following 7 Clause 12 ter is added by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991) 8 Clause 13 (1) is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991) 9 Clause 15 is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991)

7 7 (1) Application number and date of submission of the application; (2) Picture of the trademark; (3) Category and items of goods; (4) Name of applicant for registration and agent, if any; (5) Conditions or limitations, if any; (6) Date of publication; (7) Other particulars deemed appropriate by the Registrar. Clause 17. In publicizing the order for cancellation of the order for publication of any application for registration, the Registrar shall process according to clause 15. Clause 18. Publication of the cancellation of the order under clause 17 shall contain the following particulars: (1) Application number; (2) Date of publication of the application for registration; (3) Date of cancellation by the Registrar, together with the grounds for cancellation; (4) Other particulars deemed appropriate by the Registrar. Part 2 Assignment or Inheritance of Rights in Application for Registration Clause 19. Assignment of rights in an application for registration shall be processed as follows: (1) In case any one of the assignor and the assignee intends to make assignment of rights in the application for registration, the assignor or the assignee shall submit an application together with the following documents. (a) Assignment Agreement signed by the assignor and the assignee; (b) Identification card of the assignor and of the assignee. (2) In case the assignor and the assignee jointly submit an application for assignment of rights under the application for registration by signing thereon by both parties in the presence of the Registrar, the assignor and the assignee shall submit the documents under (1) (b) together with the application.

8 8 Clause 20. In the case of inheritance of rights in the application for registration, if the applicant dies without having made a will, or if no interested person files a motion with the court for appointment of an administrator, the heir who wishes to receive the estate shall submit an application together with the following documentary evidences: (1) A photograph of the death certificate or any documentary evidence showing that the applicant has deceased; (2) A written statement of the heir confirming that: (a) The deceased did not make a will; (b) No one filed a motion with the court for appointment of an administrator with respect to the deceased s estate; (c) Total number of the heirs and relationship between the deceased and the deceased s heirs; (3) Agreement among the heirs on distribution of the estate with regard to the marks of the deceased together with evidence proving the heirship; (4) Identification card of the heir who wishes to receive the estate. Clause 21. In the case of inheritance of rights in the application for registration, if there is an administrator under the will or under the court order, or if the applicant for registration made a will specifying any person to inherit the rights in the application, the administrator or the heir with regard to such rights shall submit an application together with the following documentary evidence: (1) A photograph of the death certificate or any documentary evidence showing that the applicant has deceased; (2) A photograph of the will or copy of the court order appointing the administrator; (3) Identification card of the administrator or the heir who wishes to receive the estate. Clause 22. Assignment or inheritance of rights in an application for registration of set of marks shall be made with respect to all of the marks in set. Part 3 Registration

9 9 Clause 23. When the Registrar has issued any ordered for registration, a registration number in order of the registration shall be given, and the registry shall be prepared having the following particulars: (1) Application number and date of submission of the application; (2) Registration number and date of registration; (3) Date of publication of application for registration; (4) Name, nationality, address and occupation of the owner of the trademark; (5) Name, nationality, address and occupation of the agent; (6) Office or contact address in Thailand; (7) Picture of the trademark; (8) Category and items of goods; (9) Conditions, limitations and disclaimer according to the meaning of section 17; (10) Validity term of the registration, commencement date and expiry date of the registration; (11) Other particulars deemed appropriate by the Registrar. Part 4 Objection to Registration and Contention against Objection Clause 24. In the case of objection to registration, the objector shall submit an objection together with the following documentary evidence: (1) One copy of the objection statement; (2) Identification card; (3) Documentary evidence in support of the objection statement. Clause 25. In the case of contention against the objection, the applicant for registration shall submit a contention statement together with the following documentary evidence: (1) A copy of the contention statement in the number of objectors; (2) Documentary evidence in support of the contention statement. Clause 26. In the case of inability to submit the documentary evidence in support of the objection statement under clause 24 (3), or the contention statement under

10 10 clause 25 (2), the objector or the applicant for registration shall submit a written request for relaxation together with the submission of the objection statement or contention statement. In such a case, the Registrar be authorized to grant relaxation twice of no more than thirty days each from the date of submission of the request each time. If the objector or the applicant for registration fails to submit the documentary evidence within the time under paragraph one, the Registrar shall consider continuing to review the application for registration without waiting for such documentary evidence. Part 5 Registration by Objector Clause 27. Where the objector has submitted an application for registration of a trademark like or similar to the trademark objected by it, and a final decision or judgment or order has been issued to the effect that the right of the objector is superior, the Registrar shall effectuate the registration of the objector according to clause 23 without publication of the application of the objector. Clause 28. The Registrar shall publicize the registration of the objector in a public place at Department of Intellectual Property, Ministry of Commerce, displaying the following particulars: 10 (1) Information regarding the application for registration of the original applicant for registration in summary; (2) Information regarding the objection by the objector and the grounds for objection in summary; (3) Information regarding the application for registration of the objector as follows: (a) Name of the objector; (b) Application number and date of submission of application; (c) Picture of the trademark of the objector; 10 Clause 28, paragraph one, is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991)

11 11 trademark; (d) Category and items of goods submitted for registration with such (4) Effect of the final decision, judgment or order with regard to the objection. Part 6 Certificate and Substitute Certificate of Registration Clause 29. Where the certificate becomes materially damaged or lost, the trademark owner may apply for a substitute certificate by submitting an application together with the damaged certificate or an evidence of a report to police of the loss of the certificate. Clause 30. Issuance of a substitute certificate in any case shall be deemed to have effect of cancellation of the original certificate. Clause 31. When the Registrar has issued the certificate or substitute certificate, the certificate or substitute certificate shall be sent to the applicant for the certificate at the office or the contact place in Thailand by registered mail with return receipt requested or delivered to the applicant for the certificate or the agent or attorney-infact who comes to take the delivery. Part 7 Assignment or Inheritance of Rights in Trademark Clause 32. The provisions of clause 19, clause 20 and clause 21 shall apply mutatis mutandis to assignment or inheritance of rights in a registered trademark with the certificate attached. Clause 33. When the Registrar has issued an order for registration of assignment or inheritance of rights in a trademark, the fact of such registration shall be entered in the registry and the certificate, and the certificate shall be returned to the assignee.

12 12 Part 8 Change to Registration Particulars Clause 34. In addition to those provided in section 52, an owner of a registered trademark may apply for change in the registration particulars with regard to the following matters: (1) Dismissal of the agent; (2) Appointment or change of the agent; (3) Nationality, address and occupation of the person licensed to use the trademark. Clause 35. For change in the registration particulars, the trademark owner shall submit an application together with the certificate and copies of other documentary evidences showing changes to such particulars. Clause 36. When the Registrar has effectuated the registration of change to the registration particulars, the fact of the change shall be entered in the registry and the certificate, and the certificate shall be subsequently returned to the trademark owner. Part 9 Renewal of Registration Clause 37. For renewal of registration, the trademark owner shall submit an application together with the certificate. 11 The trademark owner may pay fee for renewal of registration concurrently with the submission of application for renewal or within six months from the expiry date of the registration. 11 Clause 37, paragraph two, is added by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991)

13 13 Clause 38. When the Registrar has permitted renewal of the registration, the fact of the renewal shall be entered in the registry and the certificate, and the certificate shall be subsequently returned to the trademark owner. Clause 39. For renewal of the registration effectuated under Trademark Act B.E. 2474, the trademark owner shall submit an application for renewal, which clearly specifies each of the items of goods intended to bear the trademark classified in categories as provided in a notification by the Minister under Trademark Act B.E (1991), one application per category, and shall pay renewal fees at the rates of fees provided in the Ministerial Regulations issued under Trademark Act B.E (1991). Where the items of goods specified under paragraph one fall under the requirement for registration of marks inset under section 14, the trademark owner shall apply for registration of such trademarks as a marks inset. Clause 40. When the Registrar has permitted the renewal of registration under clause 39, a registration number shall be given and a new registry shall be made, and a certificate shall be issued with respect to each category of goods on category by category basis. When the certificate has been issued according to paragraph one, the original certificate shall be deemed canceled. Part 10 Cancelation of Registration Clause 41. An owner of a registered trademark may apply for cancelation of its trademark registration by submitting an application together with the certificate and documentary evidence as follows: (1) Identification card; (2) If the trademark is subject to licensing, all trademark license agreements shall be specified, in which case consent of each licensee to the cancelation shall be attached unless the trademark license agreement provides otherwise.

14 14 Clause When the Registrar has permitted cancelation of any registration, the fact of the cancelation shall be entered in the registry and the certificate shall be canceled, and publication of the cancelation shall be posted in a public place at Department of Intellectual Property, Ministry of Commerce. Clause 43. In publicizing that the registration will be canceled under section 59, paragraph three, the Registrar shall process according to clause 15. The publication under paragraph one shall contain the following particulars: (1) Application number and trademark registration number; (2) Name of trademark owner and its agent; (3) Office or place registered in Thailand; (4) Fact as believed by the Registrar to demonstrate that the trademark owner or agent has ceased to have office or place registered in Thailand; (5) Other particulars deemed appropriated by the Registrar. Clause 44. When the Registrar has ordered cancelation of any registration, the fact of the cancelation shall be entered in the registry, and it shall be deemed that the certificate issued is cancelled. 13 The order for cancelation under paragraph one shall be posted in a public place at Department of Intellectual Property, Ministry of Commerce. Part 11 Application for Registration of Trademark License Agreement Clause 45. For registration of a trademark license agreement, a trademark owner and an applicant for registration as the licensee shall submit an application together with the trademark license agreement affixed with signatures of the trademark owner and of the applicant for registration as the licensee and the certificate. 12 Clause 42 is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991) 13 Clause 44, paragraph two, is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under Trademark Act B.E (1991)

15 15 In the application under paragraph one, apart from the particulars under section 68, paragraph three (1) and (2), it shall be stated whether the applicant for registration is entitled to use the trademark as an exclusive licensee or the trademark owner may also grant trademark license to other persons. Clause 46. When the Registrar has ordered the effectuation of registration of the trademark license agreement, the fact of the registration shall be entered in the registry and the certificate, and the certificate and the trademark license agreement shall be subsequently returned to the trademark owner. Part 12 Change in Registration Particulars of Trademark License Agreement Clause 47. For change in registration particulars of a trademark license agreement, the trademark owner and the licensee shall jointly submit an application, which clearly specifies the part that is changed from the original, together with the following documents: (1) Trademark license agreement, as amended, affixed with the signatures of the trademark owner and of the licensee; (2) Certificate. Clause 48. When the Registrar has ordered the effectuation of registration of the change in registration particulars of the trademark license agreement, the fact of the change shall be entered in the registry and the certificate, and the certificate and the trademark license agreement shall be subsequently returned to the trademark owner.

16 16 Part 13 Cancelation of Registration of Trademark License Agreement Clause 49. For cancellation of registration of the trademark license agreement under section 72, paragraph one, the trademark owner and the licensee shall jointly submit an application together with the certificate and the trademark license agreement. Clause 50. For cancellation of registration of the trademark license agreement under section 72, paragraph two, the trademark owner or the licensee shall submit an application together with the document demonstrating that the trademark license agreement has been terminated. Clause 51. For cancellation of registration of the trademark license agreement under section 72, paragraph three (1) and (2), it shall be processed as follows: (1) If the applicant is an interested person, the application shall be submitted to the Registrar demonstrating reasons for cancelation of the trademark license agreement. Upon receipt of the application, the Registrar shall submit the application to the Board. (2) If the applicant is the Registrar, the Registrar shall submit the application to the Board demonstrating reasons for cancelation of the trademark license agreement. Clause 52. When the Registrar has ordered the cancelation of registration of the trademark license agreement under clause 49, the fact of the cancelation shall be entered in the registry, the certificate and the trademark license agreement, and the certificate and the trademark license agreement shall be subsequently returned to the trademark owner. Clause When the order of the Registrar or the decision on the appeal by the Board has been final according to section 74, or the order of the Board has been final according to section 75, or the court has given a final judgment to cancel the registration of the trademark license agreement, the Registrar shall demand the trademark owner to deliver Trademark Act B.E (1991) 14 Clause 53 is amended by Ministerial Regulations No. 4 (B.E. 2543) issued under

17 17 the certificate and the trademark license agreement and enter the fact of the cancelation in the registry, the certificate and the trademark license agreement and subsequently return the certificate and the trademark license agreement to the trademark owner. CHAPTER III SERVICE MARK AND CERTIFICATION MARK Clause 54. The provisions of Chapter II Trademark shall apply to the service mark mutatis mutandis and the term goods in such Chapter shall mean service. Clause 55. The provisions of Chapter II Trademark, Part 1 through Part 10 only, shall apply to the certification mark mutatis mutandis. Clause 56. For registration of amendment to the regulations governing the use of the certification mark, the certification mark owner shall submit an application together with documentary evidence as follows: (1) Certificate; (2) Regulations governing the use, as amended, or only the amended parts; (3) Documentary evidence demonstrating the capability to certify according to the regulations to be amended; (4) Documentary evidence or explanation demonstrating that the amendment to the regulations will not affect the public interest. Clause 57. When the Registrar has ordered the effectuation of registration of the amendment to the regulations governing the use of the certification mark, the Registrar shall enter the fact of the amendment to the regulations governing the use in the registry and the certificate, and shall publicize material contents of the regulations as amended and give a notice thereof to the certification mark owner, and the certificate shall be concurrently returned to the certification mark owner. Clause 58. For permission to assign rights and registration of assignment of rights in a certification mark, the assignor shall submit an application together with the following documentary evidence: (1) Certificate;

18 18 (2) Assignment of rights in certification mark agreement affixed with signatures of the assignor and of the assignee or documentary evidence showing such assignment; (3) Certificate of capability of the assignee together with the rules and procedures for certification of the characteristics of the goods or services provided in the regulations governing the use of the certification mark; (4) Identification cards of the assignor and of the assignee. When the Registrar has ordered the permission to assign rights under paragraph one, the registration of the assignment of rights in certification mark shall be effectuated, and the fact of the registration shall be entered in the registry and the certificate, and subsequently the certificate shall be delivered to the assignee. CHAPTER IV COLLECTIVE MARK Clause 59. The provisions of Chapter II Trademark, Part 1 through Part 10 only, shall apply to collective mark mutatis mutandis. Clause 60. For registration of a collective mark, an application shall be submitted by the following persons: (1) Where the collective mark is used or will be used by persons or juristic persons of any group formed in the manner which does not constitute a new juristic person separately from the original persons or juristic persons, the application may be submitted by all persons or juristic persons in the group, or by any person or juristic person in the group and if any person or juristic person in the group submits the application, the applicant for registration shall specify the persons or juristic persons who use or will use the collective mark. (2) Where the collective mark is used or will be used by members of an association, co-operative, union, federation, group of persons or any other body of the State or private sector, the association, co-operative, union, federation, group of persons or any other body of the State or private sector shall submit the application for registration, and the applicant for registration shall state whether the collective mark is used or will be used by all members or any specific members.

19 19 For registration under paragraph one, documentary evidence or explanation demonstrating the relationship among the persons entitled to use such collective mark shall be attached to the application. Clause 61. For change in registration particulars relating to the collective mark, renewal of the collective mark and cancellation of the collective mark, the joint applicants for registration of such collective mark shall submit an application to the Registrar. In case the applicant for registration is any person under clause 60 (1) and such person is unable to process, the majority of other persons in the group entitled to use the collective mark may grant power in writing to any one person in the group to process in place of the original applicant for registration. Given on the 13 th Day of March B.E (1992) Amaret Sila-on Minister of Commerce