Background
A Spanish apparel company successfully launched branded-clothing shops in Indonesia, and next planned to open a new branch in the south of Thailand. The company's owner was aware of the value of a trade mark, and had already registered his trade mark in Indonesia for his goods in International Class 25 for 'clothing', 'headgear', and 'footwear.'
From his experience of registering his trade mark in Indonesia, he already knew that the registration process can take up to two years. Thus, as soon as he started thinking of opening his branch in Thailand, he filed a trade mark application in Thailand. The designated goods for this application were the same as those in the Indonesian trade mark registration (i.e., 'clothing', 'headgear', and 'footwear'). However, his Thai trade mark application was rejected by the Registrar for the reason that the description of the goods was too broad under the Thai trade mark registration practice.
Advice
Although Thailand claims to adhere to the 10th Nice Classification system for the description of goods and services, Thai trade mark Registrars have their own set of manuals which list the description of goods and services that are acceptable for registration in the country. Any goods and services that are not listed in this manual are unlikely to be accepted for registration.
The goods and services listed in the Registrar's manual are very specific. For example, the word 'clothing' is not listed in the manual, simply because it is too broad a term. Instead, the applicant of a trade mark in Thailand must specify the word 'clothing' to a finer degree, such as 'shirts' (except sports shirts), 't-shirts', 'skirts', 'casual long-legged trousers', 'formal trousers', 'casual shorts', and so on (note that 'shirts' and 'pants' are still considered too broad and must be further specified to be 'shirts [except sports shirts]', 'casual long-legged trousers', etc.).
Furthermore, it is not possible to amend the description of goods after the application is filed, except when such amendment will result in a narrowing down of the scope of protection of the trade mark. Therefore, you must plan carefully as to what specific goods and/or services you want to be covered by the trade mark application, so as to ensure that you receive sufficient protection and can enforce your rights to the fullest extent.
In any case, an applicant may not wish to list too many items of goods and/or services in their trade mark application, since another characteristic of trade mark registration practice in Thailand is that the official fees are charged based on the number of goods and services written in the application, at the rate of THB 500 (approximately EUR 11 at the time of writing) per item of goods and/or services. Listing too many items could amount to a large sum of official fees.
Outcome
The company's trade mark application that included the broad terms 'clothing', 'headgear', and 'footwear' was provisionally rejected. It was necessary for the clothing company to amend the description of goods to be very specific, in accordance with the list of goods in the Registrar's manual. The clothing company also had to pay extra official fees for each item of goods added to the application.
Since the official fees in Thailand can amount to a large sum, European companies registering trade marks there must carefully list down the goods that they really plan to sell, rather than filing a wide-sweeping trade mark application that covers a large variety of goods, which would result in high fees. The key is to strike a good balance between the cost of trade mark filing and the scope of protection that you seek to obtain from your trade mark registration in Thailand.
Lessons Learnt
- Broad descriptions of goods and services are not acceptable in Thailand.
- Even if the description is not broad, it may not be accepted if it is not listed in the Registrar's manual. Applicants are advised to obtain the assistance of local experts to help draft a detailed description of the goods that would be acceptable to the Thai Registrars.
- Official fees for trade mark registration in Thailand are charged based on each item of goods and services at THB 500 (EUR 11) for filing, and THB 300 (EUR 7) for granting registration.
- Applicants must plan before filing a trade mark application in Thailand, since amending a description of goods and services is generally not allowed, unless the description was too broad.