The Trademark and Copyright Practice Group at Juslaws provides full support to clients in the licensing of trademarks and in registering trademark licenses.
The Thai Trademark Act of B.E. 2534 (1991) governs the licensing and sub-licensing of trademarks. The Act stipulates that the license of a registered mark must be in writing and registered with the Trademark Office before it is enforceable.
A license to use a trademark may be granted by the registered trademark’s owner to another person, and the license may apply to all or some of the goods included in the trademark registration.
If a license agreement permits the licensee to grant sub-licenses, any such sublicense agreement must be in writing and registered with the Trademark Office before it is enforceable.
One of the benefits of license registration for the owner of the trademark (the licensor) is that use of the trademark by a licensee or sub-licensee is deemed as use of the mark, and this can be a defense against an action of cancelation for non-use.
The Registrar will examine the trademark license registration application to ensure that the terms of the agreement are in compliance with the law. At the minimum the agreement must contain the following –
The terms and conditions under which the owner of the trademark (the licensor) is able to control the quality of the goods manufactured or the services rendered by the licensee. The goods or services for which the licensed trademark is to be used. Whether the owner of the trademark (the licensor) is granting the licensee the exclusive right to use the trademark or the owner retains the right to license the trademark to other parties as well. The duration of the agreement. In addition to the provisions of the Trademark Act, trademark license agreements are also governed by ministerial regulations, and the contract laws of the Civil and Commercial Code. Parties to the contract are permitted to include any terms and conditions they deem to appropriate, so long as none of the terms and conditions is contrary to the law, public order, morals, or Thai government policy.
If the Registrar rejects the license registration application, a notification will be sent and the licensor or licensee may appeal to the Board within 90 days of receiving the notification. Please refer to Flowchart Featuring Trademark Registration.