Thailand – First Action Fast-Track Trademark Examination

Trademark applications filed with the Thai Trademark Office (the “Office”) usually take approximately 12 to 18 months for the Registrars to examine and issue a first office action; if they may find, among others, issues that need to be rectified, or trademarks unregistrable. In an attempt to accelerate this lengthy examination process, the Office has introduced a few options, most notably the two First Action Fast-Track Trademark Examination Programs.

The first program expedites the issuance of a first office action for qualifying trademarks to be within six months from the date of filing the trademark application, at no additional cost. To benefit from this expedited process, applications must comply with all of the conditions specified in the Department of Intellectual Property (“DIP”)’s notification titled “First Action of the Trademark Examination Result in Case of Urgency 2021”, which is summarised as follows:

1. Eligible trademarks must only be those of letters, words, device or a combination thereof (a combination of color, three-dimensional, sound, certificate and collective marks are not eligible);
2. There must be no amendment, recordal of trademark assignment, inheritance of trademark rights or a request to prove acquired distinctiveness through use made upon or after filing; and
3. The applications must contain no more than 50 items of goods/services, and the items must comply with the Office’s guidelines on its official website (https://tmsearch.ipthailand.go.th/).

If any trademark applications fall under the above criteria, the DIP intends to automatically allow them to be examined on an expedited basis, in which the owners or their agents will receive the first office action (or publication of the trademark, if there is no issue to be rectified) within six months from the date of filing the application. Unfortunately, due to the lack of any tracking system and publicly available information on the issuance of office actions, it is difficult to verify whether all eligible trademark applications have actually received the benefit from this expedited process.

The second program, i.e. “Notification regarding the First Notification of the Trademark Examination Result in the Case of Necessity for Urgent Use of Trademarks of 2023” later came into effect on January 3, 2023, and it contains additional requirements to be met. This second program does not eliminate the first, but rather added as another option for applicants to benefit from. To be eligible for this newer and faster expedited process, the applications must strictly comply with the following requirements:

The trademark applications must be submitted online along with a request and supporting evidence as listed below:

1. The applications must be for a trademark of letter(s), word(s), device or a combination thereof (again, a combination of color, three-dimensional element, sound, certificate and collective marks are not eligible);

2. The application must cover only one class with no more than 10 items of goods and services, which must be among the acceptable terms in accordance with the Office’s guidelines on its official website (https://tmsearch.ipthailand.go.th/);

3. There must be no amendment, recordal of trademark assignment, inheritance of trademark rights, or request to prove acquired distinctiveness through use made upon or after filing;

4. The applicant shall submit proof of the necessity for urgent use of the mark, e.g. a marketing plan;

5. The applicant must submit a search result conducted from certain databases, e.g. the Office’s online database, TMview and WIPO Global Brand Database; and

6. Submission of the notarized Power of Attorney.

Unlike the first program, applications that are eligible for the second fast-track route will receive email confirmation within 15 days after the filing of such applications. However, please be aware that publication or registration under these expedited processes may be cancelled at a later date if the DIP discovers applications for confusingly similar marks which claim priority of an earlier filing date, in accordance with Section 28 of the Thai Trademark Act.