WORLD TRADE
ORGANIZATIONIP/C/W/409
6 November 2003
(03-5940)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
NOTIFICATIONS UNDER ARTICLE 63.2
Questions posed by Japan to Thailand
By means of a communication from the Permanent Mission of Japan, dated
29 September 2003, the Secretariat has received the following questions that Japan has communicated
to Thailand with a request that they be circulat ed to Members.  These questions relate to the
notification of certain Thai laws and regulations circulated on 21 and 28 March 2003.
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THAILAND
A. PATENTS
1. As regards division of a patent application, 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 applica tion 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 his own initiative.  Please explain the consistency between Section 26 of Thailand’s Patent Law
and the TRIPS Agreement.
2. Article 2 of the TRIPS Agreement requires its contracting States to comply with Article 4A(3)
of the Paris Convention which stipulates, as a condition for applications with priority, "any filing thatis adequate to establish the date on which the application was filed in the country concerned, whatever
may be the subsequent fate of the application."  As an example of existing technologies to be applied
as a basis 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 applied for inthis or a foreign country and the application was published before the date 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 that deserve to enjoy the right of priority under the
Paris Convention - i.e. those that are firstly filed w ith and registered in Japan and then published on aIP/C/W/409
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JPO patent gazette within one 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).
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 firs t foreign filing 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."  Regarding such an applicati on filed in the country claiming "the first filing date
in the foreign country as the filing date in the country", please clarify that the actual filing date of the
application in Thailand, not "the first foreign filing 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  the
patent term available.  In addition, please provide an explanation of the consistency between Section19bis 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).
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 trademar k than the person registered as its owner."  Please
explain the consistency between Article 67 of Thailand’s Trademark Law and the TRIPS Agreement.
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 the 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 for which it is registered."  The Thai Trademark Law does not clearly provide for the scopeof protection against the use of a similar trademar k by a third party for the goods/services designated
in the trademark application concerned.  Please provide an explanation of the consistency between
Section 44 of Thailand’s Trademark Law and the TRIPS Agreement.
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 mark.  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 Thailandprohibits the use of a well-known mark.
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, design protection can be extended to those that embody a
patented design.  Please explain which law or regulation in Thailand provides protection of industrial
design against "substantially a copy of the protected design."
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.IP/C/W/409
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9. Concerning Article 15 of the Copyright Law, please provide an explanation as to whether the
exclusive right of adaptation covers the cinematographic right stipulated in Article 14 of the Berne
Convention.
10. Please provide the 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 theTRIPS Agreement.
11. According to Article 32 (7) of the Copyright Law,  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 educational institution is not deemed an infringement of copyright provided
that the act is not for profit.  Please explain the consistency of this stipulation and Article 13 with the
TRIPS Agreement.
12. Japanese Law stipulates that the time-limit shall 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 the 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 claim 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 theinfringement 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.
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