Thailand Law Library

by Thailand Lawyer

Part 5 Trademark Licensing

The owner of a registered trademark may license another person to use the trademark for all or some of the goods for which the trademark is registered.

Trademark license agreements under the first paragraph shall be in writing and registered with the Registrar.

Applications to register a license agreement under paragraph two shall comply with the rules and procedures prescribed in the Ministerial Regulations and shall show at least the following particulars:

1. conditions or terms between the trademark owner and licensee to insure effective control by the registered owner of the trademark over the quality of the goods of the licensee;
2. the goods for which the trademark is to be used.

In the case where the Registrar finds that Section 68 would not cause the public to be confused or misled and is not contrary to public order or morality or to public policy, the Registrar shall order registration of the agreement and for such purposes may impose conditions or restrictions. But if the Registrar finds that the license agreement will confuse or mislead the public or is contrary to public order or morality or to public policy, the Registrar shall refuse to register the license.

Orders of the Registrar under the first paragraph shall be promptly notified in writing to the owner of the trademark and persons who have applied to be registered as licensees. In the case where the Registrar has imposed conditions or restrictions or has refused registration, the said persons shall also be informed of the reasons for such refusal.

The trademark owner or licensee applicant may appeal the order of the Registrar under the first paragraph to the Board within ninety days from the date of receipt of the notification. If no appeal is filed within the prescribed period, the order shall be deemed final.

Decisions of the Board under paragraph three shall be final.

The use of the trademark on goods by the licensee in his business shall be deemed as the use by the trademark owner.

The trademark owner together with the licensee may apply to the Registrar to amend the registration of a trademark license agreement in respect of the goods covered by the license or other conditions and restrictions included by the owner and Section 69 shall apply mutatis mutandis.

The application to amend the registration of a license agreement under the first paragraph shall comply with the rules and procedures prescribed in the Ministerial Regulations.

The trademark owner together with the licensee may apply to the Registrar to cancel the registration of a license agreement.

Either the trademark owner or the licensee may apply to the Registrar to cancel the registration of a license agreement if it can be proved to have expired.

Any interested person or the Registrar may petition the Board to cancel the registration of a trademark license agreement if it is shown that: (1) the use of the trademark by the licensee has confused or misled the public or is contrary to public order or morality or to public policy, or (2) the trademark owner can no longer exercise effective control over the quality of the goods under the license.

Cancellation of trademark licenses under this Section shall comply with the rules and procedures prescribed in the Ministerial Regulations.

After the receipt of an application under Section 72 paragraph two or three, the Registrar or Board, as the case may be, in writing shall notify the trademark owner or licensee, as the case may be, to submit a reply within a prescribed period of not less than fifteen nor more than sixty days from the date of receipt of the notification.

In considering applications under Section 71 and 72, the Registrar or Board, as the case may be, may require any person concerned to submit evidence or additional information.

When an order is made under Section 72 paragraph two by the Registrar, the order together with the grounds thereof shall be promptly notified in writing to the trademark owner and licensees. The order shall take effect from the date of receipt of the notification.

The trademark owner and licensee may appeal the order of the Registrar under the first paragraph to the Board within ninety days from the receipt of the notification. If no appeal is submitted within the prescribed period, the order of the Registrar shall be deemed final.

Decisions of the Board under paragraph two shall be final.

Orders of the Board under Section 72 paragraph three, together with grounds thereof shall be promptly notified in writing to the trademark owner, licensees, petitioning interested person and Registrar. Such orders shall take effect from the date of receipt of the notification.

The interested person or the Registrar may appeal the order to the Board to the court within ninety days from the date of receipt of the notification. If no appeal is submitted within the prescribed period, the order of the Board shall be deemed final.

If a trademark registration is cancelled, the licensing of such a trademark shall also cease to have effect.

If not otherwise provided in the license agreement, the trademark owner shall have the right to use the trademark himself and to license persons other than such licensee to use the mark.

If not otherwise provided in the license agreement, the licensee shall have the right to use the trademark throughout the country for all the goods for which the trademark is registered and for the entire term of the trademark registration and its renewals.

If not otherwise provided in the license agreement, the licensee may not transfer the license to third persons nor sublicense others to use the trademark.