WORLD TRADE  
ORGANIZATION  IP/C/W/417 
20 January 2004 
 (04-0156) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English 
 
 
 
NOTIFICATIONS UNDER ARTICLE 63.2 
  
Responses from Thailand
 
 
 
 The following communication, dated 22 December  2003, from the Delegation of Thailand, is 
being circulated following questions posed by Japan in document IP/C/W/409.  
 
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 A. P
ATENTS  
1. As regards division of a patent applicatio n, Article 2 of the TRIPS Agreement requires 
its contracting States to comply with Article 4G(2 ) of the Paris Convention which stipulates that  
"The applicant may also, on his own initiative, divide a patent application and preserve as the 
date of each divisional application the date of the initial application and the benefit of the right 
of priority, if any."  Under Section 26 of the Thai Patent Law, however, applicants are not 
allowed to divide an application on their own in itiative.  Please explain the consistency between 
Section 26 of Thailand's Patent  Law and the TRIPS Agreement. 
 Section 26 of the Thai Patent Act reads: 
 
 "In the examination of an application if it appears that the application relates to several distinct inventions which are
. not so linked as , to form a single inventive concept, the 
competent officer shall give a notice to th e applicant requiring him to separate the 
application into a number of applications, each  of which relates to a single invention. 
  If the applicant files any of the separate d applications within one hundred and eighty 
days. following the receipt of such notice under the preceding paragraph, he shall be deemed to have filed that application on the filing date of his first application. 
 
 The application shall be separated in acco rdance with the rules and procedures provided 
by the Ministerial Regulations.   If the applicant does not agree with the require ment to separate the application, he shall 
appeal to the Director-General within one hundr ed and twenty days.  The decision of the 
Director-General shall be final." 
  This Section is not inconsistent with the TRI PS Agreement.  If read carefully, it will become 
clear that the law does not expressly prohibit the appli cants to separate their applications on their own 
initiatives.  The law, however, merely grants the ex aminer a chance to recheck if any applications IP/C/W/417 
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 should be separated, as it seems not so link to form a single inventive concept.  In practice, it is quite 
unlikely that any applications be completed on the firs t filing attempt, so this measure is no different 
from the correction of an application under Artic le 20, which examiners are entitled to do so. 
 
2. Article 2 of the TRIPS Agreement requires it s contracting States to comply with 
Article 4A(3) of the Paris Convention which sti pulates, as a condition for applications with 
priority, "any filing that is adequate to establis h the date on which the application was filed in 
the country concerned, whatever may be the subseque nt fate of the application".  As an example 
of existing technologies to be applied as a basi s for refusing novelty, the following are listed in 
Section 6 of the Thai Patent Law: "an invention for which a patent or petty patent was granted 
in this or a foreign country before the date of  the application (Section 6(3))" and "an invention 
for which a patent or petty patent was applie d for in this or a foreign country and the 
application was published before the da te of application (Section 6(5))". 
 In addition, Section 19 bis provides that "A person under Section 14 who has filed a 
patent application for an invention in a foreign country may claim the first foreign filing date as 
the filing date in the country if the application is filed in the country within 12 months following 
the first filing date in the foreign country". 
 
 Please explain whether those applications th at deserve to enjoy the right of priority 
under the Paris Convention - i.e. those that a re firstly filed with and registered in Japan and 
then published on a JPO patent gazette within on e year from the filing date - can be judged as 
not having any novelty, when "the first foreign filing date" in Section 19 bis is not interpreted as 
"the date of the application" in Section 6 (3), (5). 
 
 Section 6 of Patent Act reads:  
 "An invention is new if it does not form part of the state of the art.  The state of art also includes any of the following inventions: 
 
 (3) an invention for which a patent or pett y patent was granted in this or a foreign 
country before the date of application;   (5) an invention for which a patent or petty patent was applied for in this or a foreign 
country and the application was publishe d before the date of application." 
 
 And Section 19 bis reads: 
  "A person under Section 14 who has filed a pa tent application for an invention in a 
foreign country may claim the first foreign filin g date as the filing date in the country if 
the application is filed in the country with in twelve months following the first filing 
date in the foreign country". 
 
 It is a common practice that authorities will reject a novelty on patented products on the basis of Article 6(3). 
3. Section 19 bis provides that "A person under Section 14 who has filed a patent 
application for an invention in a foreign country may claim the first foreign filing date as the filing date in the country if the application is f iled in the country within twelve months following 
the first filing date in the foreign country".  Regarding such an application filed in the country claiming "the first filing date in the foreign co untry as the filing date in the country", please 
clarify that the actual filing date of the application in Thailand, not "the first foreign filing  IP/C/W/417 
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 date" (i.e. the priority date), corresponds to "the  date of filing of the application in the country" 
under the meaning of Section 35, which triggers th e patent term available.  In addition, please 
provide an explanation of the consistency between Section 19 bis and Article 33 of the TRIPS 
Agreement, which provides that "the term of protection available shall not end before the expiration of a period of 20 years counted from the filing date," in light of Article 2(1) of the 
TRIPS Agreement and Paris Convention Article 4 bis(5). 
 Section 33 of TRIPS reads "The term of pr otection available shall not end before the 
expiration of a period of twenty years counted from the filing date."   Section 19 bis of the Patent Act reads "A person un der Section 14 who has filed a patent 
application for an invention in a foreign country may claim the first foreign filing date as the filing 
date in the country  if the application is filed in the country  within twelve months following the first 
filing date in the foreign country."   Section 35 of Patent Act reads "An invention pate nt shall have a term of twenty years from the 
date of filing of the application in the country …" 
  Section 19 bis is not inconsistent with TRIPS as it stated clearly that the applicant may claim 
the first filing date as the filing date in Thailand.  B. T
RADEMARKS  
4. Under Article 2(1) of the TRIPS Agreement (Article 6 bis(3) of the Paris Convention), no 
time limit is fixed for requesting the cancellation of marks registered in bad faith.  In Section 67 
of Thai Trademark Law, however, the time limit of "five years from the date of the registrar's order to register a trademark under Section 40" is stipulated for requesting "the court to cancel a trademark registration by showing that he has better rights in the trademark than the person 
registered as its owner".  Please explain the consistency between Article 67 of Thailand's 
Trademark Law and the TRIPS Agreement. 
 Under Thai law, there are two sets of grounds for cancellation of registered trademarks; first 
is under section 67 regarding the question of having a better right in the trademark;  second is under 
section 61.  In the case of bad faith, an interested  person or the registrar may petition the Board to 
order the cancellation using section 61 and 8(9) as there was a court interpretation that bad faith 
registration is considered as a mark contrary to public order, morality, or public policy. 
5. As regards the scope of trademark protection, Article 16(1) of the TRIPS Agreement 
provides as "identical or similar signs for goods or services which are identical or similar to 
those in respect of which the trademark is registered".  However, Section 44 of Thailand's Trademark Law stipulates that "a person who is registered as the owner of a trademark shall 
have the exclusive right to use it for the goods fo r which it is registered".  The Thai Trademark 
Law does not clearly provide for the scope of pr otection against the use of a similar trademark 
by a third party for the goods/services designated  in the trademark application concerned.  
Please provide an explanation of the consiste ncy between Section 44 of Thailand's Trademark 
Law and the TRIPS Agreement. 
 Under Thai TM law, once a trademark is registered, there are two rights established;  first 
under section 13 the right to prevent other people from  registration of a sign which (1) is identical 
with a trademark already registered by another person or (2) is so similar to a registered trademark of 
another person that the public might be confused or misled as to the owner or origin of the goods, 
and such application is for goods of the same cl ass or for goods of a different class found by the 
Registrar to be of the same character;  second unde r section 44, 108, 109 the right to prevent other IP/C/W/417 
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 people from using a similar or identical mark.  Al so under the Penal Code sec tions 272, 273 and 274, 
it is a criminal offence to use, to forge or to imita te a registered trademark without any legal consent. 
 
6. Articles 16(2) and 16(3) of the TRIPS Agreement in light of the Paris Convention 
Article 6 bis require a Member not only to refuse or to  cancel the registration of a well-known 
mark but also to prohibit the use of such ma rk.  While Section 8(10) of the Trademark Act 
provides that the registration of a well-known mark is to be denied, please explain which law or regulation in Thailand prohibits the use of a well-known mark. 
 Looking thoroughly at Thai laws, it appears that  there are many provisions that provide the 
protection of well-known marks.  For example, sect ion 8(10) of the Trademark Act, on the one hand, 
provides a prevention from registrations of any identical  or similar sign.  On the other hand, there is 
both general law and specific law that provides th e prohibition of use of well-known TM, i.e. section 
46 which states that there is no provision affect the right of the owner of an unregistered trademark to 
bring legal proceedings against any person for passing off goods as those of the owner of the 
trademark, section 18 of the Thai Civil and Co mmercial Code which provide s the general protection 
of names, section 420 of the Thai CCC referring to  Tort law, and the section 272-274 of the Thai 
Penal Code.  C. I
NDUSTRIAL DESIGNS  
7. Article 26(1) of the TRIPS Agreement extends protection to the owner of a protected 
industrial design against "a copy" and "substantially a copy of the protected design".  Under 
Section 63 of the Thai Patent Law, however, de sign protection can be extended to those that 
embody a patented design.  Please explain wh ich law or regulation in Thailand provides 
protection of industrial design against "substantially a copy of the protected design". 
 Section 26(1) of TRIPS reads "The owner of a protected industrial design shall have the right 
to prevent third parties not having the owner's consent from making, selling or importing articles 
bearing or embodying a design which is a copy, or s ubstantially a copy, of the protected design, when 
such acts are undertaken for commercial purposes." 
 Section 63 of the Thai Patent Act reads "No other person except the patentee shall have the 
right to use the patented design in the manufacture of  a product or to sell, have in possession for sale, 
offer for sale or import a product, embodying the pate nted design, except the us e of the design for the 
purpose of study or research." 
 
 Section 63, therefore, is consistent with TRI PS as it does protect all the rights of the Patentee 
as required by Article 26(1).  Substantial copying of  the protected design would amount to a violation 
of Article 63 and subject to a penalty under Article 85. 
D. COPYRIGHT  
8. Concerning Article 15 of the Copyright Law, please explain if the exclusive right of 
communication to public covers the broadcasting right stipulated in Article 11 bis of the Berne 
Convention. 
 The exclusive right of communication to the pu blic explicitly includes the broadcasting right 
stipulated in Article 11 bis of the Berne Convention.  The defin ition of the communication to public in 
Section 4 as stating "making the work available to public by means of performing, lecturing, 
preaching, music playing, causing the perception by sound or image, constructing, distributing or by 
any other means" is broad enough to encompass pub lic performance, public recitation, public display 
and broadcasting or transmission of work to  the public by wire or wireless means.  IP/C/W/417 
 Page 5 
 
 
 9. Concerning Article 15 of the Copyright Law,  please provide an explanation as to 
whether the exclusive right of adaptation c overs the cinematographic right stipulated in 
Article 14 of the Berne Convention. 
 The Copyright Act of 1994 grants cinematographic right to the copyright owner as stipulated 
in Section 4, Section 15 and Section 11 of the Copyri ght Act.  The copyright owner of the pre-existing 
literary work shall have the exclusive right to  authorize cinematographic adaptation, public 
communication and the transformation of his original work into any other form.   Also, cinematographic adaptation can be clearl y construed through the definition of adaptation 
in Section 4. 
 
 The cinematographic work itself is protected by virtue of the Copyright Act and the copyright owner of cinematographic work will enjoy the same exclusive rights as the copyright owner in 
program computers, sound recordings, and audio-visual works as stipulated in Section 15.  However, Section 11 prescribes that the copyright in the work  of adaptation shall not prejudice the rights of the 
copyright owner in the work created by the original author that is adapted. 
 
10. Please provide concrete examples adapted to Article 39 of the Copyright Law. 
Furthermore, please explain the consistency of Article 39 of the Copyright Law with Article 13 
of the TRIPS Agreement. 
 Section 39 of the Copyright Act prescribes that a photocopying or cinematographing or video 
broadcasting of work of which an artistic work is a component  shall not be deemed an infringement of 
copyright in the artistic work.   To make an example, producing a documentary concerning an autobiography of an important 
person, who passed away, by using his house as th e documentary's scene, the video recording and 
broadcasting of the copyright works such as work of architecture, work of sculpture, work of painting 
including in the documentary will not be deemed infringement.   Section 39 clearly complies with Article 13 of the TRIPS Agreement.  
11. According to Article 32 (7) of the Copyright La w, a reproduction, adaptation in part of 
a work or abridgement or making a summary by an  instructor or an educational institution so 
as to "sell" to students in class or in an educat ional institution is not deemed an infringement of 
copyright provided that the act is not for prof it.  Please explain the consistency of this 
stipulation and Article 13 with the TRIPS Agreement. 
 The required conditions for being exempted from infringement of copyright in this case 
includes four necessary elements.  The first element is the act against the copyright work must be 
reproduction, adaptation in part of a work or abridgement or making a summary by a teacher or an educational institution so as to distribute or sell to students in a class or in an  educational institution. 
The second element is that the act must not be made for profit.  And the last two elements are prescribed in paragraph one of Article 32, namely, the act must not conflict with a normal exploitation 
of the copyright work by the owner of copyright and must not unreasonably prejudice the legitimate 
right of the copyright owner.  This e xpressly conforms to Ar ticle 13 of TRIPS. 
  Paragraph two (1) to (8) of Section 32 of the Copyright Act 1994 is the list of "certain special 
cases";  when adding two conditions as prescribed in Article 13 of TRIPS will form an exclusive list 
of acts exempted from infringement.  IP/C/W/417 
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 12. Japanese Law stipulates that the time-limit sha ll be lost at the earlier day when three 
years have passed after a right holder became aware of the infringement or of the identity of the 
infringer" or "when 20 years have passed after th e infringement takes place" and a right holder 
can claim for injunctive relief whenever.  In the case that the infringement has lasted more than 
[…] years, a right holder can be allowed to cl aim for damage only for the past 20 years ago 
[previously].  The recovery  for the past three years ago can be  allowed to demand even if a 
right holder has been aware of the infringement or  of the identity of the infringement [for] more 
than three years.  Please provide us with a detailed explanation about the interpretation of Article 63 of the Copyright Law. 
 Section 63 prescribes the time-limit for filing co pyright infringement case. In this regard, each 
country has the right to set its own general principl e.  There is no legal oblig ation regarding time-limit 
for filing copyright infringement case under TRIPS. 
 
 
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