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Thailand: Fast Track Examination for Trademark Applications

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In the past few years, the Department of Intellectual Property of Thailand has introduced two fast track examination schemes in order to speed-up trademark applications in Thailand. The first, which applies to applications filed from 1st January 2022 onwards is the First Action Fast Track examination process, and the second is the Accelerated Examination of Trademark Applications for Urgent Use which took effect on the 3rd of January 2023.

The First Action Fast Track (FAFT) Examination Process

The Department of Intellectual Property (“DIP”) of Thailand launched the First Action Fast Track examination process for trademark applications filed with the Trademark Office (TMO) of the DIP from 1st January 2022 onwards. Under the FAFT examination process, applications examined will receive the first office action order from the TMO within 6 months from the filing date. However, in order to be eligible for the FAFT examination process, several requirements must be met.

Requirements for the FAFT:

  1. The application covers only 50 items or less of goods and services, more than 50 will not be eligible.
  2. The specifications of goods or services stipulated in the application must be compliant with the suggested specifications of goods and services of the DIP which is provided on the DIP website (https://tmsearch.ipthailand.go.th).
  3. Once the application is filed, the applicant must not request any amendments to the application. This includes, requests to amend any particulars of the application or an assignment or inheritance of rights over the application, or submit any evidence to prove distinctiveness of the trademark which affects the length of the application examination period.
  4. The application must be filed with the TMO at the DIP, a provisional commercial office, other government offices designated by the DIP, by post or through the e-Filing System of the DIP.

The FAFT examination process does not apply to the examination of applications for the international trademark registration under the Madrid Protocol.

The Accelerated Examination of Trademark Applications for Urgent Use

The DIP announced on the 22nd of December 2022 that starting from the 3rd of January 2023 trademark applicants may requests the TMO to accelerate the trademark examination process within 4 months from the filing date if the applicant urgently needs to use the trademark applied for in Thailand. Similar to the FAFT, to qualify for the scheme, the application must meet certain requirements.

Requirements for the Accelerated Examination of Trademark Applications for Urgent Use:

  1. The application must be submitted through the DIP or TMO e-filing system.
  2. The application must cover no more than 10 items of goods and services in a single class.
  3. The specifications of goods or services stipulated in the application must be compliant with the suggested specifications of goods and services of the DIP which is provided on the DIP website (https://tmsearch.ipthailand.go.th).
  4. All required documents in support of the application must be filed with the application.
  5. Once the application is filed, the applicant must not request any amendments to the application. This includes, requests to amend any particulars of the application or an assignment or inheritance of rights over the application, or submit any evidence to prove distinctiveness of the trademark which affects the length of the application examination period.
  6. A request must be submitted (in the form provided by the DIP) for the accelerated examination with evidence to express the urgency to use the mark.
  7. The applicant must conduct trademark searches in the DIP trademark database, the TM View database and the Global Brand database and submit a report of the results along with search evidence to the WTO.
  8. The applicant must undertake that, in the event that the applicant’s application is published or the applicant’s trademark is registered under the accelerated examination procedure for urgent use, however its publication or registration is subsequently cancelled due to the priority claim of another party who subsequently files an application for the same or similar trademark on the basis of a foreign priority application or an international exhibition of goods or services under that priority trademark, the applicant will not possess any rights to damages against the State or DIP.

Applicants of the accelerated examination will be notified by the TMO of the outcome of their application within 15 days from the receipt of the required documents. If the TMO determines that the application does not satisfy the criteria for accelerated examination as outlined above, it will proceed to examine the application through the standard examination process.

Thailand has been actively improving its Intellectual Property (IP) laws to encourage more innovation and foreign investments. There are many other new intellectual property provisions established by the DIP of Thailand such as the fast-track program for examination of patent applications in the medical science field; the patent to be examined within 12 months from the date of filing. Further, the Copyright Act was also updated to incorporate new clauses, such as acknowledging various types of online service providers, extending safe harbor protections to these providers, and implementing a fresh Notice and Takedown mechanism for handling copyright infringements without requiring court intervention.

Those interested should seek experienced IP practitioners to assist in their Trademark, Patent or Copyright applications in order to fully utilize the new benefits provided by the DIP of Thailand. For more information, contact Pintas IP Group today.