Thailand is one of the most popular destinations to start a business in Southeast Asia. Before entering your business into the market, there are number of factors to consider including culture, politics, business and among others, Intellectual Property (IP). IP, including patents, trademarks, copyrights and trade secrets, are valuable assets that can support you when doing business in Thailand and overseas. With your business plan, you should consider IP protection in the countries that you foresee as your targets, which including but not limited to the countries that might be your manufacturing hub, or the e-Marketplace platforms, or through modern trade and local distribution. However, the language barrier and the lack of understanding of the local IP laws and enforcement options have proven to be the main challenges for foreign enterprises. Let us share a brief overview of the main IPRs in Thailand and tips on protecting them.
Thailand is a member of international agreements for the protection of IP rights as administered through the World Intellectual Property Organization (WIPO). If you would like to protect your IP in Thailand, you can apply for registration at The Department of Intellectual Property (DIP) in Thailand or you can select to register your IP rights through the international route administered by WIPO, including the Madrid System and PCT system which can be done electronically.
It is highly advised, before applying for registration of your own trademarks, invention patents, petty patents or industrial designs, to conduct preliminary searches through the Official IP databases to analyze the availability of such IP. Early understanding of the availability or registrability of your own IP means less frustration in the future management of your portfolio. Then, you can determine which route would be the more efficient application, directly or internationally. Either way, we suggest that you should consult your local attorney as Thailand has adopted several formalities, regulations, and practices of its own, and maybe different from your origin.
Enforcing Your IP Rights In Thailand
Thailand and many countries have adopted the “first-to-file” rule when examining for the registrability of most IP, including trademarks and patents . This means that, if there is a dispute between you and another party over a trademark or patent, it is presumed that the one who has applied for registration first would have a better stand over the dispute, regardless of the origin or genuineness of the ownership, hence filing as early as possible is beneficial for the legitimate IP holders/owners, even before entering Thailand market. In addition, filing the application is only the beginning, you should actively monitor the Official IP databases and marketplaces for any unauthorized use of your IP in order to prevent infringers before they can pose any threat to your business.
Our Concerns & Suggestions For Foreign IP Owners
For foreign IP holders/owners, there are some challenges concerning the IP protection of your IP in Thailand that we would like to bring forward.
Firstly, the documentation and forms which can lead to greater issues if not appropriately prepared. Each type of IP requires different information and set of documents to be submitted. Most of foreign documents are still required to be translated into Thai or support by and authorized notarization/legalization. This can be a time-consuming process if you lack understanding of the practices.
Secondly is the proceedings of IP examination itself. Registration of IP in Thailand takes quite long time, for example; your trademark applications may take from 10 to over 15 months, not to mention the 90-day publication period and the waiting of the issuance of the certificates. The examination procedure is another criteria that may raise complexity during the application. In case the IP application is found non-compliance with the practices or in contrary with the laws, an office action can be issued. Most of the time, foreign applicants would fail to handle or to file a response against the office actions, from the lack of understanding of the appropriate responses or not knowing the deadline to do so. Failure to act against these office actions will result in abandonment of your IP applications, which is unfortunate since some of them can be overcome when appropriately handled.
Therefore, it is essential for business owners to consider IP protection in Thailand as their priority, and must plan before entering Thailand, otherwise, your IP can be simply hijacked by third parties. Apart from disputes against infringers and hijackers, there are lots of business-related regulations you need to see through for doing business in Thailand, anything that you could do it before hand, like applying for the protection of your intangible assets, should be done in the early stage of your business plan to launch your business in Thailand, at least the IP protection will ensure a peace of mind that you won’t have to deal with all the possibilities in having to pursue legal actions, allowing you enough time to concentrate on promoting your businesses.