Significant Characters of Marks for Commercial Use

For business operation, nowadays trademarks are used as business symbol to convey to the consumers to recognize the products, origin of products and the owner of products. As times go by, trademarks are widely used for other interests. They are used to communicate the image or the value of business organizations who are the owners of such trademarks as well as communicate status and taste of the consumers who use those trademark products or services.

World Intellectual Property Organization has placed the importance of trademarks in playing a significant role in macroeconomics to show the origin and technology for consumers’ creditability. In addition, trademarks play an important role as marketing strategies of business organizations, for example, the use of trademark in promotional advertising and hinder an effort of unfair competitions, market shares expansion and maintenance, product differentiation, new product launch, receipt of payment from authorize others to use trademark including the indication of financial value of the organization. Trademarks then become necessary ingredients in business operation.

Marks for Commercial use protection law in Thailand contain the protection provision in criminal code and the protection under Trademark Act. To be protected, trademarks must be registered with Department of Intellectual Property, Ministry of Commerce. There are 4 types of marks under protection:

Trademark means a mark used or proposed to be used on or in connection with goods to distinguish the goods with which the trademark of the owner of such trademark is used from goods under another person’s trademark;

Service mark means a mark used or proposed to be used on or in connection with services to distinguish the services using the service mark of the owner of such service mark from services under another person’s service mark;

Certification mark means a mark used or proposed to be used by the owner thereof on or in connection with goods or services of another person to certify the origin, composition, method of production, quality or other characteristics of such goods or to certify as to the nature, quality, type or other characteristics of such services

The special characteristic of certification mark is that only the owner of a registered certification mark can use the mark to certify goods or services of another person but can not use the mark on his own goods or services.

In addition, for the registration of certification mark, the applicant must submit the regulations on use of the certification mark such as:-

• The origin of production or operation of goods or services which are to be certified,
• Composition or other components of goods or services which are to be certified,
• Quality, good characteristic or permanent characteristic of goods or services which are to be certified,
• Regulation of application to use and license the use, method of application to use and license the use, condition of application to use and license the use, measure on quality control of goods or services which are to be certified, etc.

Collective mark means a trademark or service mark used or proposed to be used by companies or enterprises of the same group or by members of an association, cooperative, union, confederation, group of persons or any other state or private organization.

The four categories of marks have similar and different attributes as follows:-

Use of marks

When the Registrar accepts the registration of the trademark to any person, he shall have an exclusive right to use such trademark for products or services in the categories and lists which are registered.

In case that any person intentionally counterfeits or imitates the registered trademark, the owner of such trademark shall be entitled to prosecute to the Central Court of Intellectual Property and International Trade both criminal and civil case.

Transfer of right to use trademarks

The owner of a registered trademark may transfer its trademark to another person to use under the following conditions:-

• Register the transfer of right to the Registrar.
• Must specify whether the transfer is together with the transfer of the operation or transfer only the trademark.
• If the transferred trademark is associated trademark, other trademarks in the same group must be transferred.
• In case of transfer of certification trademark, it is required a showing by the transferee that he has sufficient ability to certify the characteristics of the goods or services as indicated in the regulations on use of the certification mark.

License others to use the trademarks

The owner of a registered trademark may license another person to use the trademark. As for trademark and service mark, license agreements shall be in writing and registered with the Registrar.

For certification mark, only the owner of a registered certification mark can be certifier of goods or services of others and cannot license other persons to act as certifier by authorizing the use of the certification mark. As the owner of a certification mark has certified any goods or service, the owner of such goods or service shall be entitled to use the certification mark together with his own trademark or service mark. The owner of the certification mark shall provide the certification in writing and with signature to the certified person. No registration is required.

For collective mark, there is no license registration the use of collective mark because the registration of collective mark means that the owner of the mark allows other persons to collectively use of mark. In case of license other persons to use the collective mark; the owner shall file an application to amend the registration statement.

As indicated above, it is shown that characteristics of each mark are similar and different so the acquisition, registration and the intention to use the mark for which trade category mainly depend on the objectives of business operation and the criteria stipulated by law.