trademark registration and enforcement in thailand and myanmar

LAWPLUS

Trademark Registration and Enforcement in

Thailand and Myanmar

Kowit Somwaiya Managing Partner

How to Protect Your Trademark Cross Border?

China Trademark Association

Trademark Festival 2017

Guilin, China, 2 September 2017

The information provided in this document is general in nature and may not apply to any specific situation. Specific advice should be sought before taking any action based on the information provided. Under no circumstances shall LawPlus Ltd. be liable for any direct or indirect, incidental or consequential loss or damage that results from the use of or the reliance upon the information contained in this document. Copyright © 2017 LawPlus Ltd. www.lawplusltd.com

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Presentation Topics

• ASEAN

• Geography and Economies

• Trademark Registration and Enforcement

• THAILAND

• Geography and Statistics


• MYANMAR

• Geography and Statistics


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Association of Southeast Asian Nations (ASEAN)

source : http://www.matichon.co.th/online /2009/04/12390200461239020254l.jpg

Geography

Area: 4,435,618 sq km

Population: 639 M

Membership

- 10 states

- 2 observers (Papua New

Guinea and East Timor)

GDP (nominal)

2016 estimate

- Total: US$2.555 T

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ASEAN Trademark Registration

• Generally adopt the ‘first-to-file’ system.

• Registration gives better protection.

• Territorial registration.

• No international or regional trademark registration system.

• Harmonization under the Madrid Protocol

• The Madrid Protocol will come into force for Thailand on 7th November 2017.

• Indonesia, Malaysia and Myanmar are the only 3 ASEAN countries yet to join the

Madrid system.

• Commercial use of a trademark is not required before it can be applied for or

registered.

• Applications for registration should be filed with existing use or intention to use in

commerce.

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ASEAN Trademark Registration and Enforcement

Country Time (months) to

Complete Registration

Protection Term (Years)

Documents for Registration

Madrid System

Brunei 15-18 10 Notarized POA Yes

Cambodia 6 10 Notarized POA Yes

Indonesia 24 10 Signed POA No

Laos 6-9 10 Notarized POA Yes

Malaysia 12-24 10 Signed Declaration No

Myanmar 1-2 No expiration Legalized POA Notarized DTO

No

Philippines 6-18 10 Notarized POA Yes

Singapore 7-9 10 Signed Authorization

Yes

Thailand 12-18 10 Notarized POA Yes

Vietnam 12-15 10 Signed POA Yes

Sources: The South-East Asia IPR SME Helpdesk, Intellectual Property Rights in South-East Asia: FAQ to the Helpdesk, May 2016;

LawPlus Ltd.; August 2017

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ASEAN Trademark Enforcement

• In most countries, police or administrative raids are the most practical measure

against trademark infringement.

• Customs measures against counterfeits at port-or in transit are possible in most

countries.

• Some countries have police or enforcement offices specialized in IP enforcement.

• Panels of judges or courts specialized in IP cases are available in some countries.

• Criminal lawsuit is more practical than civil lawsuit.

• Punitive damages are rarely awarded.

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Thailand – Geography and Statistics

•source: http://www.operationworld.org/thai

Area: 513,115 sq km

Capital: Bangkok

Population: 67,959,000

GDP (Nominal) 2017 estimate

- Total: US$432.898 billion

- Per capita: US$6,265

source: http://www.operationworld.org/thai

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Thailand – Trademark Registration

• Established registration system (first law on Trade Marks and Trade Names B.E.

2457 (A.D. 1914)).

• Both multiple-class application and single-class application are allowed.

• Sound mark registration is allowed from 28th July 2017.

• Pending changes

- Accession to the Madrid Protocol coming into force on 7th November 2017.

- Elimination of too strict requirements for specification of goods/services.

• Suggestions and strategies:

- File at least 18 months before use.

- Before filing, obtain advice on distinctiveness, registrability and

specifications of goods/services.

- Before filing, conduct a trademark search and obtain advice on availability.

- Keep evidence of use.

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Thailand – Trademark Enforcement

• Four main routes for trademark enforcement:

(1) Police complaint.

(2) Customs measure.

(3) Criminal action in court by owner.

(4) Civil action in court by owner.

• The Intellectual Property and International Trade Court was established in 1996.

• Specialized Appeals Court was established in 2017.

• Court take-down order against online trademark infringement is available starting

May 2017.

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Police Complaint

Police asks for a court

search and/or arrest warrant.

Police searches or raids

premises of infringer, seizes

counterfeits and arrests infringer.

Police interrogates

infringer and sends case to public prosecutor.

Trademark owner joins

case as co-plaintiff

(optional).

Public prosecutor files a

criminal case against infringer.

Trademark agent files a

police complaint.


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Customs Measure

DIP records trademark

details for CD to access online.

CD records details of

trademark in CD database

accessible to CD offices throughout Thailand.

Customs officers watch

and seize suspected

counterfeits and contact

appointed agent of trademark owner.

CD confiscates

counterfeits and sends

case to public prosecutor

or settles the case and

destroy counterfeits.

Agent files action

request with CD within 24 hours.

Public prosecutor files

criminal case against infringer.

Trademark owner files

request with DIP to record

trademark for customs

measure protection.


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Action against Online Infringement

• Dissemination of computer data which is a criminal offense against trademark.

• Officer obtains approval from the Minister of Digital Economy and Society and files a

motion with court for a take-down order.

• Court issues a take-down order for ISP to take-down trademark infringement computer

data from the computer system.

IP owner notifies an

officer of the MDES Ministry.

The officer asks for

approval from the Minister.

Minister approves.

The officer files a motion to the court.

The court grants an order

The officer orders

the services

provider to remove

or delete the infringing data.


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Myanmar – Geography and Statistics

source: http://www.operationworld.org/myanmar

Area: 676,577 sq km

Capital: Naypyidaw

Population: 50,495,672

GDP (nominal) 2017 estimate

- Total: US$62.368 billion

- Per capita: US$1,374

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Myanmar – Trademark Registration

• No trademark law.

• Current trademark registration by registration of a Declaration of

Trademark Ownership with Registry Office and publication of a

Cautionary Notice in a newspapers.

• Draft TML published for public consultation in August 2017.

• Trademark search possible but results not accurate.

• Suggestions and Strategies:

– Register before use

– Register now. Do not wait for TML.

– Publish first cautionary notice once trademark is registered.

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Myanmar – Trademark Enforcement

• Criminal and civil actions are possible but slow.

• Criminal actions are more practical.

• Customs regulations are in place but implementation is rare.

• Suggestions and Strategies:

- Publish a cautionary notice every 3 years

- Closely monitor the market

- Take a swift and decisive action against infringement

- Cease-and-desist letter to infringer

- Public warning notice in newspapers.

LAWPLUS

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