Multi-Class Applications vs Single-Class Applications
The new Trademark Act, which came into effect on 28 July 2016, introduced multi-class trademark applications in Thailand for the first time. This alert addresses whether applicants should consider filing multi-class applications or continue to file single-class applications in Thailand.
The multi-class application system was introduced to meet the requirements of the Madrid Protocol, which Thailand is preparing to join soon. The primary benefit of a multi-class application is the convenience offered by a single filing number covering all classes for which registration is sought.
Despite the convenience a multi-class application may offer, difficulties can arise in the case of partial refusal. That is, if the registrar has objections to registration in some classes but not others. Under the current practice of the Thai Trademark Office towards multi-class applications, any objections raised against one particular class will cause delays to all other classes in the application as the registrar will not allow the separate prosecution of those classes for which no objections were raised. Likewise, if any class encounters absolute rejection grounds, the whole application will be rejected and it will be necessary to file an entirely new application covering all other classes for which no rejection grounds were raised, meaning delays and added expense. This practice is different than that of a number of other jurisdictions where it is possible to split-off those classes of a multi-class application which are subject to Trademark Office objections and separately prosecute the others.
Applicants may expect that official fees for filing a multi-class application in Thailand will be less than those for several single-class applications. However, the same official fees will apply irrespective of the application type. Therefore, official fees should not be key factor in deciding between a multi-class application and single-class applications.
Until the Trademark Office establishes a practice that better comports with the intended purpose of multi-class applications, we recommend that applicants continue to file single-class applications in Thailand. Despite any inconvenience posed by continuing this approach, at least it will ensure that a rejection in one class would not affect applications for the same mark in all other classes.