Background Since Thailand’s accession to the Madrid Protocol in November 2017, the trademark registration landscape in the country has undergone significant transformation. Brand owners can seek trademark protection in Thailand through a streamlined international process in addition to the national route. This alignment with global practices has somewhat simplified the registration process, offering businesses a valuable pathway to safeguard their brands in this key Southeast Asian market. However, despite the streamlined process, a technical glitch at the Trademark Office in Thailand’s Department of Intellectual Property has caused delays in issuing local certificates and statements of grant following provisional refusals — commonly referred to as ‘Model Form 5’. These documents are crucial for finalising trademark registrations and confirming their validity within Thailand. It is important to note, however, that this technical issue did not affect the issuance of statements of grant for international registrations (IRs) that had not been provisionally refused. Recent developments The good news is that, as of 19 August 2024, the Trademark Office has successfully resolved the technical issues impacting the issuance of these essential documents. With the glitch now fixed, the office has begun to process the backlog of local certificates of registration and statements of grant for IRs designating Thailand following provisional refusals. What this means for brand owners The resolution of this technical issue represents a significant milestone for brand owners who have been waiting for their local certificates. As the Trademark Office works to clear the backlog, the issuance of certificates and statements of grant is likely to proceed more promptly. For those affected by the delay, the end is in sight. The issuance of these documents will enable brand owners to officially complete their trademark registration in Thailand and benefit from the protections offered under Thai law. In the meantime, brand owners

As part of its membership in Lex Mundi, Tilleke & Gibbins has published an updated edition of its Guide to Doing Business in Thailand for 2023. This guide outlines the key factors for starting and operating a business in the Thai market. Issues covered include: Investment incentives Financial facilities Exchange controls Import and export regulations Structures for doing business Requirements for the Establishment of a Business Operation of the Business Cessation or Termination of the Business Labor legislation, relations, and supply Tax Immigration requirements This publication is part of Lex Mundi’s Country Guides series prepared by member firms in more than 100 jurisdictions worldwide. The guides serve as a useful resource for planning international business strategy and researching new markets. The full Guide to Doing Business in Thailand is available through the button below.

In decisions dated 29 September 2022, the Lao Department of Intellectual Property (DIP) has cancelled two trademark registrations based on their confusing similarity to earlier marks. An official from the DIP unofficially confirmed that these decisions are the first of their kind in Laos and, as such, constitute a positive step that puts legal provisions into actual practice. Background In Laos, cancellation proceedings against a registered mark are not common, as the number of applications in the country is relatively low and thorough substantive examination only began to be carried out in recent years. There was previously no precedent for how cancellation decisions would be handled, despite the Law on Intellectual Property (No. 38/NA of 15 November 2017) allowing a third party to file a petition for the cancellation of a registered mark if it can be proven that the mark should not be granted registration. The Law on Intellectual Property states that a third party may object to, or request the cancellation of, a trademark registration within five years of its date of publication in the Official Gazette. However, it is difficult to ascertain how to calculate the five-year period if the mark was registered before June 2019, as publication in the Official Gazette was first made available at that time. This could mean that the five-year statutory limitation for trademark cancellation in Laos could start from June 2024, but how this will be applied in practice remains to be seen. The Case This case began when Siam Kubota Corporation Co Ltd took action against two marks that looked similar to its own earlier marks (see Figure 1): Figure 1. Earlier registered marks Siam Kubota registered its marks in 2009 for goods in Class 12, and has extensively used and protected the marks in Laos. After reviewing its