TM & IP in Thailand

As of today, there’s no particular piece of legislation preventing licensees from contesting foreign licensors’ TM registration in the Kingdom of Thailand. Thus, for the duration of the validity of agreements & upon their expiration, parties aren’t allowed to agree on & assume obligations under agreements forbidding licensees to contest licensed patents’ validity.

Registration of IPR in the Kingdom of Thailand: Expiration

Invalid or expired TM registration in the Kingdom of Thailand can impact validity of applicable license agreements. However, parties can agree that licenses remain valid even after licensed TMs are deemed expired. As far as patents are concerned, parties are at liberty to choose for how long their licenses will be valid. The same rule applies to circumstances under which each of them can terminate a contract.

Register IP in the Kingdom of Thailand: Requirements for Foreigners

Requirements for foreigners are pretty much the same, except that PoA & additional documentation must bear signatures of IP holders with foreign citizenships & be notarized. At the same time, PoA issued by local authorities needn’t be notarized. Foreign applicants must also hire a local representative who’ll be responsible for IP registration in the Kingdom of Thailand.

Thailand: Licensing of an Unregistered TM

To use a TM in the Kingdom of Thailand, one must register a license agreement with the local TM Office. If no such agreement is registered, a license will be deemed invalid. That said, entrepreneurs can obtain a license authorizing the use of unregistered TMs in the Kingdom of Thailand. While there’s no particular piece of legislation regulating the procedure for licensing unregistered IPR in the Kingdom of Thailand, other unregistered IPR may be licensed as well.

Specific Requirements for Business Security

Ensuring the security of a company’s activities requires concluding business security agreements. To be deemed valid, they must be concluded in written form & submitted to the BSRO & EDD. Financial institutions or any other entities specifically mentioned in the BSA should be designated as a supervisory authority.

Sublicensing of TMs in the Kingdom of Thailand

Unless otherwise specified in license agreements, licenses can’t be transferred to 3rd parties; licencees aren’t allowed to sublicense 3rd parties to use a TM in the Kingdom of Thailand either. Assigning or licensing IP to 3rd parties requires IP co-owners to act together. Submitting assignment or licensing agreements for registration requires them to mutually sign them. 

Changing this clause in a contract is forbidden. For either of co-owners to be able to act independently, they must secure consent of the other co-owner & obtain a PoA.