Thailand has enacted the Ministerial Regulation Implementing the International Trademark Registration under the Madrid Protocol (the “Regulation”). It was published in the Royal Gazette on 18th December 2017 and became effective retroactively on 7th November 2017, which is the effective date for enforcing the Madrid Protocol System in Thailand.

According to the Regulation, an international trademark application under the Madrid Protocol filed with the Trademark Office in Thailand (the “Trademark Office”) must be based on either a trademark registration (the “Basic Registration”) in Thailand or a pending trademark application filed with the Trademark Office (the “Basic Application”) in which such Basic Registration or Basic Application will be used as a base for the international trademark application under the Madrid Protocol.

For a period of 5 years from the date of its registration, an international application remains dependent on such Basic Registration. If the Basic Registration ceases to have an effect, whether through cancellation following the Trademark Office’s decision, voluntary cancellation, or non-renewal, within this 5-year period, the international application will no longer be registrable.  Similarly, if the Basic Application is refused or withdrawn within such 5-year period, the international application will also be refused for registration resulting from the Basic Application ceases to have an effect within such period. After the expiry of the abovementioned period of 5 years, the international application will become independent from the Basic Registration or the Basic Application.

More importantly, in regard to the list of goods and/or services, although, WIPO has designated that the list of goods and/or services must be classified and specified according to the Nice Classification and Thailand has already adopted the same, the Trademark Office has not strictly followed the Nice Classification as they have their own practice and guideline for classifications and specifications of goods and/or services.

If the international application designated Thailand filed with a trademark office of any member state does not indicate the goods and/or services following such practice and guideline, it is possible that the international application will be refused for registration by the Trademark Office in which a provisional refusal will be issued ordering the applicant to comply with the same within a specified period of time.

Besides, the list of goods and/or services must be translated into Thai once it has entered into the local examination procedures. If such list of goods and/or services is unable to be translated and/or matched to the Thai words as a matter of differentiation of languages, such items of goods and/or services may also be ordered for amendment.

In order to solve this issue, the Trademark Office is now preparing for a guideline regarding the list of goods and/or services to facilitate the applicant for preparing its international application designed Thailand as one of the countries in obtaining protection of its trademark. For the said guideline, the Trademark Office will translate the list of goods and/or services in Thai used to be allowed for registration into English so that it will be easier for the applicant to consider and choose the terms of goods and/or services and designed the same in its international application.

Author: Panisa Suwanmatajarn and Jinnaphat Srithepthamrong

The Regulation of President of the Supreme Court on the Electronic Procedures B.E. 2563 (the “Regulation”) was published in the Royal Gazette on 30 September 2020 and has recently become enforced. The Regulation provides principles in regard to the court proceedings via electronic means (e.g. preparing documents for cases in an electronic data form, processing the court hearings and giving testimony via electronic procedures, and submitting evidence in an electronic data form).

Summary of key provisions of the Regulation is as follows:

  1. As the court thinks fit or upon the request of any party, the court may designate the proceedings via electronic means under this Regulation.
  2. In case of filing, sending, or receiving any document in an electronic data form, it may be performed by an e-mail, information technology media, or any method following the Office of Justice’s Regulation.
  3. Under the Regulation of the President of the Supreme Court on Submitting, Sending and Receiving Pleadings and Documents via the Electronic Filling System B.E. 2560, the court,  party, or relevant person may generate any document in an electronic data form which is accessible and usable for being subsequent reference without its meaning being altered, and it shall be deemed that such information is the original one and is made in writing according to the Civil Procedure Code.
  4. In the case where a person affixes his or her signature in an electronic data form, it shall be deemed that such data message bears his or her signature if (1) the method used is capable of identifying the signatory and indicating the intention of the signatory about the information contained in such data message, and (2) such method is a reliable one and appropriate for the purpose for which the data message is generated or sent considering on surrounding circumstances or an agreement between the parties, or such method is capable of identifying the identity of the signatory and indicating the intention of the signatory by itself or by other evidence.
  5. If a summary of court proceeding in an electronic data form is made in the presence of the party or the witness, who is in or presumed to be in the courtroom, in the trial made by applying a Video Conference. When the court reads out such summary to the party or the witness and when such person has followed the rules and methods given by the Office of Justice, such person shall be presumed to recognize the summary and has affixed his or her signature in acknowledgment of reading of the same.
  6. The court may fix the day for a hearing and testimony by the electronic method in whole or in part.
  7. The submission of evidence in electronic data shall not be denied solely on the ground that it is in the form of electronic data.
  8. In the case where the law requires any transaction to be made in writing, to be evidenced in writing or to be supported by a document, if the information is generated in the form of a data message which is accessible, and usable for being subsequent reference without its meaning being altered, it shall be deemed that such information is made in writing, is evidence in writing or is supported by a document.
  9. Documentary evidence and material evidence, which a party desires to allude, shall be filed with the court in an electronic data form via an e-filling system and such documents shall be deemed as or equal to the original one. In this case, the party shall not send a hard copy to another party, unless the other party is unable to access such a data message.
  10. After the electronic trial is over, a judgment or order shall be given and signed by an e-signature as required by the Office of Justice. Such judgment or order shall be deemed to be in writing and signed by the judge according to the Civil Procedure Code. However, reading of the judgment or order in an electronic form shall be governed by the Civil Procedure Code except following the Office of Justice’s requirement.

Author: Panisa Suwanmatajarn and Jinnaphat Srithepthamrong

Thai Government has placed importance on an international standard of copyright protection. One of the key requirements of being a member of the World Intellectual Property Organization is to update the local rules and regulations to be complied with the WIPO Copyright Treaty (WCT).

On 29 September 2020, the Cabinet approved the Draft Act on Amendment to the Copyright Act (No. ..) B.E. …. (“Draft Act”) as proposed by the Ministry of Commerce in which the provisions contained on the Draft Act will bring the local standard on copyright protection to meet those of the international standard.

Summary of key provisions of the Draft Act is as follows:

  1. The definition of “Service Provider” to include an intermediate service provider, a temporary computer data storage service provider, a computer data storage service provider, and a computer data source searching service provider and “Service User” to include a service provider’s user whether such user pays for the service fee or not, will be added to this Draft Act and the definition of “Technology Protection Measure” will be revised to a technology that protects the rights of the copyright owner or the rights of the actor under this Draft Act, or effectively controls access to copyright work or performance recording.
  2. The duration for copyright protection in photography work will be revised to be throughout the life of the photographer and for the next 50 years from the photographer’s death.
  3. The duration for copyright protection in audiovisual, film, sound recording, or broadcasting work will be 50 years from the creation of those works. However, if such work was advertised during the said period, the duration for its copyright protection will be 50 years from the first advertised.
  4. A service provider, who will be exempted from conducting copyright infringement, must have clearly announced its service termination measure to its service consumers and that has followed such announced measure.
  5. The liability on copyright infringement of an intermediate service provider will be limited once such service provider has transmitted computer data through an automatic technical process. Such service provider must not be an originator of such transmission or select its recipients and change such computer data.
  6. The liability of copyright infringement of a temporary computer data storage service provider will be limited once the service provider transmits the data through its system or computer network without changing such data, not intervene using of technology in order to obtain data related to the usage of service users and having the system for keeping the data up to date.
  7. The liability on copyright infringement of a computer data storage service provider will be limited in case that such service provider does not know or does not have the reason to know that the data stored in the system or computer network under its operation is copyright infringement. Once knowing, such service provider must promptly remove such data from its system or computer network.
  8. A computer data source searching service provider will not be liable for copyright infringement in case that such service provider does not know or does not have the reason to know that there is the infringed computer data on its system or computer network. Such service provide must promptly remove such data and remove and disconnect to the source of such data from its system or computer network.
  9. Providing of service, manufacture, sale, or distribution of service, product, or equipment causing the result of the operation of technology protection measures will be considered as technology protection measure infringement.

This Draft Act will be submitted to the Parliament for its consideration and approval before publishing in the Royal Gazette and then become enforced.

Author: Panisa Suwanmatajarn and Jinnaphat Srithepthamrong

A Draft Royal Decree on Supervision of Services related to Digital Proofing and Authentication System B.E. …. (“Draft Royal Decree”) was proposed by the Ministry of Digital Economy and Society and was approved in principle by the Cabinet on 22 September 2020.The Draft Royal Decree is aimed to be legislated 1) to define the types of digital proofing and authentication system services (“Services”) which need to be licensed, i.e. identity proofing services, authenticator management services, authentication service and digital identity platform services and 2) to specify the rules for conducting such Services in order to make the Services more reliable and safer for electronic transactions under the Electronic Transactions Act B.E. 2544.Summary of the Draft Royal Decree are as follows:

  1. Digital proofing and identity verification is required to be consisted of at least three processes as follows:
    1. Identity proofing;
    2. Issuing proof of authentication; and
    3. Authentication
  2. A person or juristic person verified through the Services under this Draft Royal Decree is presumed to be real.
  3. A person or juristic person is prohibited from operating the Services in a monopolized manner unless approval from the Electronic Transactions Development Agency (ETDA) is granted.
  4. There are services which are not subjected to the Draft Royal Decree which are an e-signature certification authority service (CA) under the Electronic Transactions Act, digital proofing and authentication system service used only for the benefit of a person or juristic person own business, identity proofing service that does not require verification of identification evidence and verification of person identification (Identity Assurance Level Service) and service related to digital proofing and authentication system operated by the government agencies excluding the state enterprises.

The Draft Royal Decree will be passed to the Council of State for its consideration together with relevant authorities and later it will be returned to the Cabinet for its reconsideration and approval before submitted to the Parliament for its final consideration.

Author: Panisa Suwanmatajarn and Jinnaphat Srithepthamrong

Updated List of Prohibited Diseases in Obtaining Visa and Residence Permit in Thailand

 

by Panisa Suwanmatajarn and Pithayut Ra-thee

 
On September 22nd, 2020, the Cabinet approved for the Draft Ministerial Regulations by adding Corona Virus Disease 2019 or COVID-19 to be one of the prohibited diseases in obtaining any Thai visa and residence permit under the Immigration Act B.E. 2522 (1979).
Therefore, the new list of prohibited diseases will be as follows:
A foreigner shall not be allowed to enter into Thailand if such person has been found to be infected with the following diseases:
 
  1. Leprosy
  2. Tuberculosis
  3. Elephantiasis
  4. Drug Addiction
  5. The third phase of Syphilis
  6. Coronavirus 2019 or COVID-19

 

A foreigner shall not beallowed to enter and have residencyin Thailand if such person has been found to be infected with the following diseases:
 
  1. Leprosy
  2. Tuberculosis
  3. Elephantiasis
  4. Drug Addiction
  5. Alcoholism
  6. The third phase of Syphilis
  7. Coronavirus 2019 or COVID-19

 

The draft Ministerial Regulation will become enforced once it has been published in the Royal Gazette.

A New Trademark Registration system/law in Myanmar


by Panisa Suwanmatajarn and Jasmine Pholcharoen

The Ministry of Commerce of Myanmar announced on August 28, 2020, the new trademark registration system/law. This new system/law will follow the first-to-file rules and rights.

The soft opening for filing of trademark applications under this new trademark registration system/law will be commenced from October 1, 2020, for a period of 6 months until March 31, 2021.

During the soft opening period, only below matters can be conducted.

  1. The trademark owners who have filed the applications and recorded their trademarks by filing the Declaration of Ownerships (DOs) at the Office of the Registration of Deeds and Assurances (ORD) are required to re-file their trademark’s applications under this new system/law preserving their priority rights (with no addition of class and list of goods/services);
  2. The Trademark owners who have not yet filed the applications and recorded their trademarks with the ORD are able to file the applications and DOs if their trademarks are being used in Myanmar together with substantial evidence in supporting of such use (such as cautionary notices (CNs) published in a newspaper(s); tax invoices/receipts; photos showing participation in exhibitions; expense vouchers; bills); and
  3. The trademark owners who have not fallen under either of the above conditions are required to file their trademark applications and DOs under the existing system/law in case that they would like to reserve their priority rights.

The trademark owners being not fallen under the above-mentioned conditions shall prepare their applications ready to be filed as soon as possible once the grand opening period commences.

Information/documents required for filing applications under the soft opening period

  • A trademark application;
  • A power of attorney duly legalized by the Consulate of Myanmar;
  • A copy of existing recorded DO along with CNs published in a local newspaper(s) (if any);
  • A specimen of the mark;
  • Owner’s information i.e. name, address, and nationality;
  • Classifications and list of goods and/or services under the Nice Classification

Under the new system/law, benefits for trademark owners are as follows:

  • The trademark renewal system is enforceable. The registration will be valid for 10 years and that it may be renewable every 10 years.
  • The trademark search system will be available.
  • The list of goods/services will follow the 11th edition of the Nice Classification.
  • The multi-classification application is available.
  • The opposition system will be used during registration processes.

Amendment on Provisions Related to Promotor, Dividend Distribution and Merger of Corporate Entities in Thailand as Approved by the Cabinet on 23 June 2020


by Panisa Suwanmatajarn and Pithayut Ra.thee

On 23 June 2020, the Cabinet has approved a Draft Act on Amendment to the Civil and Commercial Code (no. ..) B.E. …. and a Draft Amendment to the Act on Determining Offences Relating to Registered Partnership, Limited Partnership, Limited Company, Association and Foundation Act (no. ..) B.E. …. as proposed by the Ministry of Commerce.

  1. Draft Act on Amendment of the Civil and Commercial Code (no. ..) B.E. ….
Matter Summary
1. Formation of Limited Company, General Meeting and Limited Company Dissolution

 

 

Amending of the provision regarding formation of limited company: Minimum 2 promoters may form a limited company (currently requires for minimum 3 promotors)

 

Amending of the provision regarding general meeting: A general meeting may not transact any business unless shareholders or proxies representing at least 2 persons attend the meeting

 

Amending of the provision regarding limited company dissolution: A limited company may also be dissolved by the court’s order if the number of shareholders has been reduced to 1 person or any other reasons causing that company to become un able to continue the business

2. Period of Dividend Distribution Dividend payment shall be distributed within 1 month from the date of general meeting or the date of approval of the board
3. Merger of Limited Companies One of the companies among the combining companies will be remained while the others will be being ceased to be existed.

 

  1. Draft Amendment to the Act on Determining Offences Relating to Registered Partnership, Limited Partnership, Limited Company, Association and Foundation Act (no. ..) B.E. ….

The Cabinet has approved for adding the provisions specifying offenses and penalties on the cases of not paying dividend within its period of time and not sending a special resolution or not publishing a special resolution on merger of the limited companies.

 

Draft Act for Amendment to the Civil and Commercial Code (as approved by the Cabinet on 9 June 2020)


by Panisa Suwanmatajarn and Pithayut Ra.thee

The Cabinet, on 9 June 2020, has approved a Draft Act for Amendment to the Civil and Commercial Code (no. ..) B.E. …. (“Draft Amendment to the CCC”) to amend some provisions of the Civil and Commercial Code in regard to partnership and company in which the Draft Amendment to the CCC will be proposed to the House of Representatives for its further consideration and approval before publishing in the Government Gazette

Summary of the amendment are as follows:

1. The application for incorporation of partnership or company can be submitted at any of the Office of Business Registration Service as prescribed by the Minister.

2. The Minister has its authority to reduce or exempt government fees for registration, requesting for copies of documents with certification and other fees related to partnership and company matters.

3. The registered Memorandum of Association would be expired if it has not been registered for company incorporation within three years. However, if any Memorandum of Association has been registered before the effective date of this Draft Amendment to the CCC and that its validity period (3 years) has lapsed, the validity period of such Memorandum of Association will be extended for another 180 days.

4. The company seal must be affixed on every share certificate only in the case that the company has its company seal.

5. The board meeting may be conducted by any form of technology in which the directors will not need to appear in the meeting unless prohibited by the provisions of the Articles of Association of the company. However, the said meeting must be conducted in accordance with the rules, procedures and conditions prescribed in the Ministerial Regulations. This shall be deemed that the directors using that technology have joined the board meeting, been counted to constitute a quorum and been entitled to vote at the meeting.

6. The notice of a general meeting of shareholders shall be sent by returned registered post to all shareholders unless the company has its shares in the type issued to holders, in that case, an advertisement in a local newspaper is also required.

 

Draft Act on Amendment to the Revenue Code in Regard to Value Added Tax (VAT) Applied to E-Services Industry


by Panisa Suwanmatajarn and Pithayut Ra.thee

The Thai government has realized on a global expansion of the e-service industry. In order to update rules and regulations to have it more appropriate and create fair treatment between the local and overseas e-service operators, on 9 June 2020, the Cabinet approved the Draft Act on Amendment to the Revenue Code in Regard to Value Added Tax (VAT) Applied to E-Service Industry (No. [..]), B.E. [….] (“Draft Act”).
Summary of the Draft Act are as follows:

  • The definition of “Goods” shall be revised to include e-service and e-platform.
  • A service provider fallen under the provisions of this Draft Act shall be the provider operating its businesses abroad, but providing its service to a consumer/user who is a non-VAT registrant and that the service provided has been used in the Kingdom. In case that the overseas service provider using an overseas e-platform in providing the service to the non-VAT registrant and that such service has been used in the Kingdom, the overseas e-platform operator shall also has its obligation under this Draft Act on behalf of such overseas service provider.
  • Such foreign service provider / e-platform operator needs to have its income more than 1.8 million baht per year in regard to the said service and then it is required to file VAT registration and have the responsibility to pay VAT in which VAT shall be calculated based on sales tax without deduction of purchases tax. In this case, the VAT statement can be submitted in an electronic form.

This Draft Act will be submitted to the Parliament for its consideration and approval before publishing in the Royal Gazette and then become enforced.