Haris & Associates Phuket Thailand Legal Blog

Your Reliable Source Of Legal Information in Thailand

Thailand’s Trademark Frequently asked Questions

1. Can my Mark / Trademark / Logo / Brandname be registered as a Trademark in Thailand?

What can be registered as a Trademark in Thailand?

1.1 Prerequisites:

must be distinctive;
not be prohibited under this Act; and
not be identical or confusingly similar to another registered Trademark.
1.2 What?

Section 7(1) TA 1991
Trademarks, Collective Marks, Certification Marks, Service Marks
May include 3D Designs, Photographs, Paintings, Device, Design, Words, Letters, Numerals, Phrases, Configurations of Goods, Unique Color Combinations
1.3 Must not include (inter alia):

national insignia; national flags; royal insignia; royal representation; medical emblems; contrary to public policy; national emblems and flags of foreign states, international organizations; geographical indications; other Trademarks prescribed by the Ministerial Notifications
2. Which class of goods or services does my product fall under?

What are the classes of goods and services?

The classification of goods and services in Thailand adheres to the International Classification System (Nice Agreement, 9th Edition). The list is annexed hereto as “Schedule A”.
The specification of goods or services must be specifically itemized in the application. Should the goods or services be too broadly specified, the Registrar may require further details and amendments.
3. Must I register my Trademark to use it in Thailand?

Are Trademarks required to be registered in Thailand? Does my brandname have to be registered? Can I use my Mark without registering it?

No. However, it is strongly advised.

4. Are multi-class applications available in Thailand?

Is there a route for a single application to cover various classes of goods?

No. Separate applications are required for each class and no single application can be filed for multiple classes.

5. What is a Trademark search?

What are Trademark or potential conflict mark searches?

A Trademark search is a search of the Trademark Register to ascertain whether there is any identical or confusingly similar Trademarks in all classes which applications have been pending or which have been previously registered.

6. Where and how can I conduct a Trademark search?

Where do I go to conduct a Trademark search? How is the Trademark search available? Can I perform / conduct a Trademark search by myself?

6.1 The Trademark search may be conducted in various forms:

Official Publication
Computerized Datum
Microfiche
Word Marks and Graphic Marks
6.2 The Trademark search may be conducted vide:

DIP
DIP’s online service / web portal (www.ipthailand.go.th)
6.3 The language used for Trademark search is Thai

6.4 There is an hourly official fee imposed by the DIP to conduct the search

6.5 Trademark searches may be conducted by the Applicant but it is strongly advisable to seek the assistance of a professional

6.6 Trade Name searches instead must be conducted at the Ministry of Commerce or via its Department of Business Development (DBD) website at www.dbd.go.th

7. Is a Trademark search necessary for the registration of a Trademark?

Must I perform a Trademark search before applying for registration of my mark? Is a Trademark search required / mandatory? Can I perform

No. However, it is prudent practice to avoid unnecessary cost, delay, objections, etc. It is strongly advised that Applicants perform a search prior to filing an application to avoid potential conflicts with former registered marks and possibly ultimately prevent the Applicant’s application.

8. What documents / information do I need to provide to file an application for registration of a Trademark in Thailand?

What are the filing requirements for a Trademark application in Thailand?

8.1 What particulars of the Applicant do I need to provide for an individual applicant?

What are the individual Applicant’s particulars required?

Name
Citizenship
Nature of business
Address
8.2 What particulars of the Applicant do I need to provide for an Applicant which is a corporate entity?

What are the corporate entity’s particulars required?

Name
Type of entity
Registered address
Nature of business
Country of incorporation
State of incorporation (for US Corporation)
8.3 What illustrations of the mark do I need to provide?

What sample / specimens of the mark is required?

Clear sample(s) of Trademark
Electronic form: TIFF, JPEG, other generally accepted forms
Physical form
Word mark: Typeface to be specified
Black & White mark: 5 copies to be provided
Colored mark: Provide 30 copies to be provided
Stylized and Device mark: 15 copies to be provided
3D Shape mark: Technical drawings of relevant perspective elevation views to be provided
8.4 What particulars of the mark am I required to furnish?

What details of the mark do I need to provide?

Goods / Services need to be precisely described and specifically itemized
International Class(es) where they fall within must be specified
8.5 What additional documents do I need to supply in respect of a Priority Claim based on an application in a foreign country?

What are the additional documents required for if I am claiming priority based on an application in a foreign country?

CTC of Priority Application (within 90 days of filing of Application): If in a language other than English, a Verified English translation need to be supplemented
Statement of Priority Claim: which is a declaration from the Applicant certifying that the basis application has neither been rejected nor withdrawn
Priority of Particulars: date, application number, country of filing
Mark must be identical to the mark where priority is based on
An official notification issued by the chief of the foreign Trademark office indicating that the jurisdiction of first filing grants the same rights of priority to Thai Applicants filing applications in that country, i.e. a Reciprocal Agreement (note that member countries of the WTO and the Paris Convention are exempt from this requirement)
8.6 What documents are to accompany a Trademark application in Thailand?

What are the forms required to be submitted along with an application?

i) Notarized POA (note that the Application may be filed first and extensions of time granted for this to follow)

8.61 Must the POA be original?

Is the original POA required to file a Trademark application in Thailand?

A copy notarized as a CTC is sufficient.

8.62 What in the POA has to be notarized?

What are the requirements for notarization in respect of the POA for a Trademark application in Thailand?

All signatures and every page needs to be notarized.

8.63 What form of the POA is required for multiple / future Trademark applications in Thailand?

Are copies sufficient for multiple/future applications?

One POA (original / copy notarized as a CTC) form is sufficient for multiple and future applications.

8.64 Must the POA be legalized?

Is there a requirement for legalization of the POA for Trademark applications in Thailand?

No.

ii) Copy of Certificate of Registration (if any)

9. Are there any other specific requirements for application to register a Certification Mark?

Are there special requirements to register a Certification Mark? How to register a Certification Mark in Thailand?

Apart from the normal requirements, the following are required:

The Applicant must submit regulations concerning the uses of the Certification Mark along with the application. These regulations must indicate the following:

The origin, composition, production method or manufacturing method, quality or other characteristics of the goods or services to be certified; and
The rules, procedures and conditions for authorizing uses of the Certification Mark.
The Applicant must also demonstrate that the Applicant does in fact have the ability to certify the characteristics of the goods or services as provided in these regulations or to demonstrate that the Applicant is well qualified to certify the merits of the goods or services.
10. Must there be use of the mark before Application?

Is it compulsory to file a Declaration of Use? Does the mark have to be used previously to be able to be registered in Thailand?

No. However, submission of Evidence of Use or Proof of Use may be submitted together with the Application or within 30 days of the filing for the purpose of establishing ‘distinctiveness’ under Section 7(2) TA. This is not normally done until an OA is issued or an Opposition is received.

11. Must I register my mark in different colors if I intend to use it likewise?

Must I file separate Trademark applications if I wish to use my mark in different colors in Thailand?

No. Where a Trademark is registered without limitation of color, it is deemed to be registered for all colors. – Section 45 TA 1991.

12. Where do I apply for the registration of Trademarks?

Where do I file an application for registration?

DIP
By registered mail with payment of fee by money order to the DIP
Online at www.ipthailand.go.th, thereafter a hard copy of the Application form must be submitted to the DIP within 15 days of the online filing
13. Can I file the Trademark application myself? Can I file the application if I am not in Thailand?

Who is allowed to file an application for registration of a Trademark in Thailand?

Yes. However, note:

The Applicant or his agent needs to have a fixed place of business or a contact address in Thailand
Non-resident Applicants can only register a Trademark by appointing an Agent who is a Thai resident and granting him/her a POA
The Application needs to be done locally
The language of prosecution is Thai
14. What is the procedure/process involved in filing a Trademark application in Thailand?

What is the procedure to file a Trademark Application?

Please see the flowchart annexed hereto as “Schedule B”

15. What does the ‘examination’ stage in a Trademark application in Thailand entail?

What is the function of the Registrar during the examination?

The registrar will examine the Trademark application to determine:

whether the Application is in compliance with the formalities
whether the mark is identical or confusingly similar to any prior registered Trademark
16. What is the usual timeline for this ‘examination’ stage?

How long does the examination stage take in Thailand? How long will it take for it to commence?

Generally:

It takes 4 – 7 months from the date of filing till the commencement of the examination stage
The ‘examination’ stage normally takes 2 – 4 months
All in all, it generally may take 6 – 11 months before an Office Action or a request to pay the Publication fee is received, but sometime it can take up to 18 months
17. What is an Office Action? How do I deal with an Office Action issued upon my Thai Trademark Application?

What essentially is an Office Action?

The term ‘Office Action’ generally is used for an official notice issued by the DIP
Office Actions are generally either instructions or objections
The correct method of responding to an Office Action is by submitting a formal reply, adhering or responding to the instruction or objections, e.g. amending the Application if there are instructions or objections, amending the Application if there are instructions as to mere formalities or replying to an Office Action stating that the mark is descriptive, filing a disclaimer statement where instructed, and so forth
A Final Office Action is effectively and commonly known as a Filing Refusal
18. When are Office Actions Final Office Actions or Filing Refusals?

When can you no longer ‘respond’ to your Office Action? Has my Trademark registration been rejected?

Final Office Actions / Filing Refusals are incurred when (inter alia):

The Registrar decides that you have made too many attempts or have exhausted your options and no longer states that you have an option to amend / fix it in the Office Action
The Registrar cites another Mark against yours
There is an inherent defect in your application and the Registrar does not state that you have an option to amend / correct the defect
However, do note that if there is a genuine error in the Registrar’s decision, such Final Office Actions / Filing Refusals may be withdrawn in the Registrar’s own discretion. In Thailand, continuous, professional liasion with the Department of Intellectual Property is strongly advised for smooth sailing of Trademark Applications.

19. What is the typical Office Action issued in Trademark applications in Thailand?

What is the Office Action commonly issued by the DIP?

That the formalities have not been adhered to, the Application is not in order
That the mark being applied for is descriptive (of the nature and quality of the goods/services)
That the classification of goods / services is erroneous
That the mark being applied for is identical or confusingly similar with a prior registered mark
20. What is the deadline to reply / respond to an Office Action and is this deadline extendable?

What is the given time frame to reply / respond to an Office Action? What is the timeline to adhere / comply with the Registrar’s instructions / objections?

The time frame varies according to the type of Office Action; generally:

Office Action regarding the amendment of specification of goods, instructions to file disclaimer statements, instructions to file mark association applications = 90 days
Office Action concerning the submission of Evidence of Use = 60 days
These deadlines are non-extendable

21. Can I Appeal against a filing refusal or objection by the Department of Intellectual Property in Thailand?

What is the Appeal process against a filing refusal or objection by the DIP?

An Appeal from the DIP has to be taken to the Trademark Board within 90 (ninety) days
On Appeal, the Board will decide whether to overturn the DIP’s decision or dismiss the Appeal
It will take about 12 (twelve) months for the Trademark Board to deliver its decision
The decision of the Trademark Board is ‘final’ – Section 18 TA 1991
However, an ‘Appeal’ lies with the CIPITC where the Board’s decision is ‘unlawful’ or ‘illegitimate’ – Case No. (Red) IP 106/2546; Societe BIC v Department of Intellectual Property (Supreme Court Case No Tor Por 38-41/2547)
Subsequenty, the Applicant may Appeal against the CIPITC’s unfavorable decision to the Supreme (Deeka) Court
22. Where is the mark published?

What does the publication stage for a Trademark application in Thailand entail?

Upon approval by the Registrar, the Mark is published in the Thai Trademark Gazette for a period of 90 (ninety) days.

23. How do I lodge an opposition?

How can I oppose the registration of a Mark?

During the publication stage, an Opposition can be lodged with the Trademark Registrar, i.e. filing a Notice of Opposition stating one or more of the following grounds reproduced below.

24. Am I entitled to oppose? What are the grounds for Opposition?

Will my Opposition be considered? Are my reasons for Opposition valid?

An Opposition can be lodged by ‘any person’s – Section 35 TA 1991, although in the DIP guidelines and general IP literature there seems to be a qualification on who is ‘interested’. It is submitted then that any person who is merely ‘remotely affected’ satisfies this qualification. In any event, it is doubtful that a Registrar would ignore a legitimate objection merely on this ground as if indeed the mark should not be registered on the provided grounds (except perhaps ‘better title’), for it is the Registrar’s oversight and the Opposition should be allowed. Hence, it is my opinion that an Opposition can be lodged by any person, so long as the Opposition is not merely fanciful or frivolous.

25. What are the grounds for Opposition?

Which grounds are normally invoked for an Opposition against a Trademark application in Thailand?

An opponent has a better title to a Trademark than the Applicant does
The Trademark is not registrable under Section 6 TA, namely:
It is not distinctive
It is a prohibited mark (e.g. identical with or confusingly similar to a well-known mark)
It is identical with or confusingly similar to a prior registered mark
The Trademark is contradictory to any registrability requirements
26. What are the common grounds for opposition?

Which grounds are normally invoked in lodging an Opposition against a Trademark application in Thailand?

The grounds commonly used by opponents are:

The published mark is identical or confusingly similar to their marks
The published mark does not fulfill the registrability requirements
27. Can the ‘owner’ of a Trademark which is not registered in Thailand file an Opposition against a similar Trademark Application in Thailand?

Can the ‘owner’ of an unregistered Trademark file an Opposition against a similar Trademark Application?

Yes, such ‘owner’ is entitled to do so on the following grounds:

He has a better title to the Trademark than the Applicant
The Trademark is not registrable, as in it is not distinctive, prohibited, identical to a well-known mark, similar or identical with a prior registered mark
27. What is the Opposition process/procedure like?

What happens after I file an Opposition? What happens after an Opposition is filed against my Trademark application in Thailand?

After the Opposition is lodged, the Trademark Registrar shall send a Notice of Opposition to the Applicant
Evidence supporting the Opposition must be submitted along with it (at the time of filing). However, an extension of 30 (thirty) days from the date of filing may be granted, whereupon another extension of 30 (thirty) days may be granted (0 + 30 + 30 days)
The Applicant is entitled to file a Counter Statement thereto, defending/arguing against the Opposition. This counter-statement has to be filed with the Trademark Registrar within 90 (ninety) days from the receipt date of the Notice of Opposition
Failure of the Applicant to file this counter-statement will cause his Trademark application to be automatically dismissed
Upon receipt of the Applicant’s counter-statement, the Trademark Registrar will take approximately 8 – 12 (eight – twelve) months to render his/her decision
The Registrar will normally dismiss the Opposition or the Application, or odirect that amendments be made to the Application
28. I have failed to file my Opposition within time, can I seek an extension?

Is the Opposition period for filing an Opposition against a Thai Trademark application extendable?

No.

29. Is the decision of the Trademark Registrar in determining the Opposition final?

Can I Appeal against an unfavorable Registrar’s decision after an Opposition?

Any party who diasgrees with the Trademark Registrar’s decision may file an appeal with the Trademark Board within 90 (ninety) days
It generally takes around 12 (twelve) months for the Trademark Board/Committee to adjudicate and rule on the Appeal
Thereupon, any party who disagrees with the Trademark Board/Committee’s decision may file a complaint with the CIPITC within 90 (ninety) days from receipt of the said unfavorable decision
If the CIPITC’s decision is unfavorable, an Appeal thereupon can still be taken to the Supreme (Dika) Court whose decision is final
30. Does the Thailand Trademark system give priority to the first-to-file or the first-to-use?

Does Thailand practice the first to file or first to use system in respect of Trademarks?

First to file.

31. Since the Thailand Trademark system gives priority to the first-to-file, what can I do if another person first registers the Trademark that I have been using?

What is the aggrieved first user of a Mark’s recourse in Thailand’s Trademark Law?

Filing an Opposition claiming better right, the mark is unregistrable because it is identical or confusingly similar to their mark, etc.
Petition to the CIPITC a Cancellation Action claiming a better right (within 5 (five) years) to the Trademark – Section 67 TA 1991
Filing a Cancellation Action claiming that the mark is identical or very similar to a well-known mark – Section 61(2) and Section 8(10) TA 1991, etc.
Filing a Cancellation Action for Non-Use – Section 63 TA 1991
Common-law ‘Passing Off’ – Section 46 TA 1991
32. What is the evidentiary threshold required of Evidence / Proof of Use?

How much Evidence of Use is needed to satisfy Section 7(2) TA 1991?

The threshold required for Evidence of Use is relatively high:
Voluminous evidence showing long-term, consistent use of the mark is required
If the Applicant wishes to show use of the mark vide advertisements and publications, these have to have been made consistently through-out the long period of use
The Courts have opined that the minimum period of use should be 2 (two) years. Nonetheless, Applicants are advised to submit evidence showing the use of their marks for a period of 5 (five) years and above to increase the chance of cloaking the mark with Section 7(2) ‘distinctiveness’ – “JobsDB” Case, Supreme Court Decision 5403/2551
Further, the Evidence of Use submitted must show usage of the mark in the exact same manner of style, shape, form and content that has been applied for registration. If this is not so, the Courts may be reluctant to grant monopoly rights to the mark even where evidence makes it obvious that a variation of the mark has been used for a very long term – Evidence of Use of a variation of the mark for 50 years was held to be insufficient in the “Maggi” Case, Supreme Court Decision 2044/2552
33. How long does a Trademark registration last in Thailand?

What is the validity period of a Trademark registration?

10 years from the date of filing (deemed as registration date – Section 42 TA 1991)

34. What are the effects of Trademark Registration?

What rights does Trademark Registration confer upon the owner?

Legal Ownership: The exclusive right to use the mark for the registered goods or services – Section 44 TA 1991

Legal Protection: Any other person whom wrongfully uses the mark are infringing upon the Intellectual Property rights of its owner and are subject to both civil and criminal liability. Expedited enforcement of these rights. Increased fines for infringement of Trademarks which are registered.

Legal Certainty: Assurance of the owner that he is not unknowingly infringing on an existing mark

Legal Proof: An unregistered mark’s owner will find it very difficult to enforce their proprietary rights to retaliate against infringement proceedings brought against them.

35.   Is Thailand member of the Paris Convention?

Has Thailand acceded to the Paris Convention in regards to Trademark Registration?

Yes.

36.  Is Thailand member of the Madrid Protocol?

Has Thailand acceded to the Madrid Protocol as pertains to Trademark Registration?

No. However, the Thailand Government has declared its intention to do so by 2015.

37.  Is Thailand member of the WTO and the TRIPS Agreement?

Is Thailand part of the WTO and has Thailand acceded to the Agreement on Trade-related Aspects of Intellectual Property Rights?

Yes.

38.  What International Conventions / Treaties / Agreements affect Thailand?

What International Conventions / Treaties / Agreements are Thailand’s Intellectual Property system member of?

Rights).

39.   Is home registration required?

Is it necessary to register my Mark in my own country first before applying for registration of the same in Thailand?

No.

40.  Does Thai Trademark law allow Priority Claims based on foreign applications?

Are Priority Claims based on an application to register the same in a foreign country? Can I use the date of / keep the date of my foreign application when I apply in Thailand?

Yes. Priority Claims are allowed based on an application filed in a foreign country.

  • To claim priority, an application has to be filed in Thailand within 6 months from the filing date of the application in the foreign country (emphasis added).
  • The filing date of the application in the foreign country may be claimed as the filing date of the application in Thailand, provided that such foreign country gives reciprocal treatment to the Thai applicants with head offices in Thailand.
  • To date, this last requirement does not apply to member countries of the WTO nor the Paris Convention [For the lists of member countries, please visit the WIPO website at www.wipo.net].
  • The ‘country of first filing’ and therefrom the ‘date of first filing’ has to be the country oif the applicant’s head office, domicile, or nationality. This means that only the date of filing in the applicant’s own country can be claimed priority to.

41.   What are the additional filing requirements for a priority claim based on a foreign application?

What are the additional documents needed to be filed to claim priority based on a foreign application?

Please see above at Question 8.5.

42.  Is there any special provision in Thai Trademark Law providing special privileges to ‘Well-Known’ Trademarks?

What is the ‘Well Known Status’ that is attainable for Trademarks in Thailand?

Trademark owners can get their Trademarks registered as ‘Well Known’. This ‘Well-Known Status’ had been introduced in Thailand vide the Regulation of the Department of Intellectual Property (“DIP”) Regarding Well-Known Marks B.E. 2548 (2005).

43.   Is my Trademark not ‘Well Known’ without the ‘Well Known Status’ in Thailand?

Does my Trademark lose out on the protection of ‘Well Known’ Trademarks if it is not registered as ‘Well Known’?

No. The Trademark Act (“TA”) and general Trademark practice also protects ‘Well Known’ Trademarks without the ‘Well Known Status’ by preventing the registration and/or use of Trademarks which are identical with or confusingly similar to Well Known Trademarks (without the need for conferment of the ‘Well Known Status’) [For instance, Section 8 (10) TA 1991].

However, establishing an unregistered ‘Well Known Status’ requires significant proof in legal proceedings. In such proceedings then, the Trademark owner cannot be certain that it can prevent the registration or use of a third party’s Trademark due in view of this heavy burden of proof. Conversely, where a Trademark owner gets its Trademark registered as Well Known, it has much greater legal and commercial certainty and control that it is able to prevent unrightful registration and use of its Well Known Trademark.

44.  What are the criteria to satisfy for an application for ‘Well Known Status’ in Thailand?

What are the requirements to satisfy for a Mark to be registered as Well Known?

A Well Known Trademark includes [Chapter 11 Clause 7, Regulation of the DIP Regarding Well-Known Marks B.E. 2548 (2005)]:

  • A Trademark, Service Mark, Certification Mark, Collective Mark, or any other Mark used in respect of things independent of any particular type of goods and / or services
  • A registered or an unregistered Mark
  • A Mark identical with a Mark that has already successfully applied for ‘Well Known Status’
  • A Mark that has been extensively and widely used in respect of the goods or services by the way of sale, use, advertisement, or by wide use of other means in good faith, continuously throughout till present
  • A Mark that has been extensive and regularly used in good faith, which has become widely known to the general Thai public or the relevant Thai public to which the mark is directed, which may have been used in Thailand or in any foreign country
  • A Mark that has been used to such a degree that it has become ‘Well Known’ and recognized among Thai consumers
  • A Mark that has been used by the owner directly or through its representatives or licensees
  • Trademark owners are advised to apply for the exact Trademark in shape, size, form and content used and registered most extensively, and the evidence submitted with the application should be likewise

45.  Should I seek ‘Well Known Status’ for my Trademark in Thailand?

Should I apply for ‘Well Known Status’ registration for my Trademark in Thailand?

The first thing to bear in mind will be that such an application requires greater effort and expense as compared to a normal Trademark application. The Trademark owner has to consider whether the potentially ‘Well Known’ Trademark has in fact developed significant consumer recognition. If such recognition is indeed substantial, the evidential burden of this application [Certainty so as compared to invoking the ‘Well Known’ status as a defence] will likely be satisfied and the applicant will reap the status’ significant benefits.

46.   What is the evidentiary threshold to succeed in a ‘Well Known Status’ application in Thailand?

Is it difficult to obtain the ‘Well Known Status’ for a Trademark?

  • Although a ‘Well Known Status’ application generally requires less proof than raising the same as a defence, there is a high burden of proof required. This is accentuated by the fact that there is a short period of time to supply evidence to the application that it has been filed. Bearing this in mind, the applicant has to have well considered the available evidence and his gathering of evidence should be near completion before filing takes place.
  • The type and amount of evidence will necessary vary according to a variety of factors such as the industry in which the Trademark is being used, the length and extent of previous use, and whether the proposed Trademark is inherently distinctive as opposed to a common descriptive term or design
  • Generally, the more evidence submitted, the better the chances. However, the bulk of evidence has to be presented in a coherent and concentrated manner, so as to allow the Registrar to clearly see the extent of the Mark’s recognition.

47.  What are the chances of succeeding in registering a Trademark as ‘Well Known’ in Thailand?

Is it easy or difficult for Trademarks to successfully obtain the ‘Well Known Status’?

This would essentially have to depend on the evidence made available to the Board.

48.  What is the process for submitting evidence for a ‘Well Known Status’ application in Thailand?

How can I furnish evidence for my application to register my Trademark as ‘Well Known’?

  • The applicant has 60 (sixty) days from the application date to complete its evidentiary submission.
  • The necessary information should be submitted in the form of affidavits, with supporting documents and evidence attached.

49.  What type of evidence is generally furnished for a ‘Well Known Status’ application in Thailand?

What kind of evidence should I submit toward obtaining a ‘Well Known Status’ for my Trademark?

It is necessary for the Trademark owner to carefully conssider what evidence should be furnished to convince the Board that its Trademarks are ‘Well Known’.

Generally, Regulation guidelines [Chapter II Clause 8, Regulation of the DIP Regarding Well-Known Marks B.E. 2548 (2005)] as to what supporting evidence are to be used provide a compass:

  • Documents presenting any public acknowledgement such as magazines, journals, newspapers, catalogues, etc.
  • Proof of sales such as receipts, invoices, export / import documents, tax invoices, etc.
  • Proof of marketing activity such as advertisements, promotions, and wholesale / retail marketing activity
  • Documents showing the size of the enterprise
  • Any other evidence showing use or registration of the Mark, its reputation, activity taken to protect and enhance the Mark, evaluations of the Mark, sales rankings of the products sold under the Mark, honors / recognition received by the products sold under the Mark, certificates received from acceptable organization, internet marketing / sales / advertising, etc.
  • Additionally, the applicant is advised to submit evidence of:
    • Sales in Thailand and on a worldwide scale
    • Length of Use in Thailand and on a worldwide scale
    • Trademark Registrations in Thailand and on a worldwide scale
    • Recognition as a ‘Well Known’ Trademark in other countries
    • Direction of sales, marketing and advertising
    • Media advertising and marketing
    • Articles, news reports, and other reports attesting to its wide use and recognition
    • Credible testimonials from people in relevant industries, consumers and experts
    • Consumer surveys

50.  Will I get a chance to submit personally before the Board?

Is there a hearing or presentation involved in this process?

No.

51.   Can I appeal against the Thailand Trademark Board’s decision to not register my Trademark as ‘Well Known’?

What recourse is available against an unfavorable Board’s decision to not confer the ‘Well Known Status’ upon my Trademark?

An Appeal can be lodged within 60 (sixty) days from the receipt of the Board’s Notice of Rejection to the Director-General of the DIP whose decision is final.

52.  What are the benefits and privileges conferred by the ‘Well Known Status’ to my Trademark in Thailand?

What is the extent of the protection conferred by the ‘Well Known Status’?

  • The prevention of identical and confusingly similar Trademarks from being registered for any goods or services – even non-competing goods / service and goods / services from different classifications.
  • The status is an overall deterrent against infringers and counterfeiters
  • Increase in the value, trust and accreditation attributed to the Trademark from a marketing perspective
  • The automatic attribution of ‘Well Known Status’ and with it a strong defence against opposition / cancellation, criminal actions and litigation
  • The penultimate of shielding against cease and desist letters with the status
  • Generally, allowing the owner to utilize its Trademark to its full extent with greater legal and commercial certainty
  • This status represents a valuable asset to the owner that can be enhanced and protected

53.  How can the registration of a Trademark in Thailand be cancelled?

What are the grounds for the cancellation of a Trademark?

  • Unregistrability – It is not registrable i.e. it does not satisfy any of the requirements for registration in the Trademark Act (“TA”) 1991. Commonly, an action brought under this ground alleges that the Trademark is identical or confusingly similar to an existing registered Mark for related goods or services, or to a Well Known Mark and/or that the Trademark is not distinctive.
  • ‘Non-Use’ – This route is commonly referred to as a Cancellation Action for Non-Use of Mark.
  • ‘Better Right / Superior Right’ – The applicant claims to have a better right / superior right to the Mark [Section 61(2) read with 8(10) TA 1991].
  • ‘Common to the Trade’ – A Trademark may be cancelled if it has become common to the trade.

54.  Who can remove / cancel a Trademark from the register of Trademarks in Thailand?

Who may I apply to for cancellation of a Trademark? Where do I bring a cancellation action?

  • The Board of Trademarks / Trademark Committee
  • Central Intellectual Property & International Trade Court (“CIPITC”)

55.  How do I cause a Trademark that belongs to me but registered by another entity to be removed from the register in Thailand?

Can I cancel a Trademark which I have used and own but had been registered by another person?

  • Yes. There is a Cancellation Action that can be brought if any interested person asserts that he has a better right to that Trademark than the registered proprietor [Section 67 TA 1991].
  • Must be brought within 5 (five) years from the date of the registrar’s order for registration (not date of registration which is deemed to be the date of filling).
  • Brought by way of petitioning the CIPITC.
  • If the petitioner can prove that he has a superior right than the registered proprietor, the CIPITC will remove the Trademark from the register. Partial cancellation [i.e. only for some of the goods / services of the class] by the CIPITC permitted.
  • This type of Cancellation Action entails the petitioner furnishing the CIPITC with his evidence of use of the Trademark in question. It is clear-cut where the petitioner can show that the Mark, and his having used it is ‘Well Known’.

56.  How do I cause a Trademark that is granting the proprietor an unfair monopoly in a particular trade to be removed from the register in Thailand?

How can I cancel a Trademark which is causing unfair prejudice from other proprietors in the same industry?

  • Another ground for Cancellation is that the registered Mark has become ‘common to the trade’.
  • Any interested person or the registrar may bring this ‘action’
  • By way of petition to the Trademark Committee/Board
  • May be brought at any time

57.  How do I cancel a Trademark for ‘Non-Use’ in order to utilize it in Thailand?

What is a Cancellation Action for ‘Non-Use’?

  • A petitioner may petition the Trademark Board / Committee to cancel a Trademark registration if he can prove that during the 3 (three) years prior to the petition for Cancellation there was no bona fide use of the Trademark the goods for which is was registered
  • Petition to the Trademark Board/Committee
  • 3 (three) year period of ‘Non-Use’ prior to petition

58.  Is ‘use’ of a Trademark required to maintain the registration in Thailand?

Must the Trademark owner actually use his Trademark to keep it?

No. However, continuous non-use for a period of three (3) years will expose the Trademark to a Cancellation Action for Non-use.

59.  What does ‘Non-Use’ of Trademark in Thailand encompass?

How much ‘Non-Use’ is required to maintain a Cancellation Action for Non-use? How much ‘use’ is necessary to fend off a Cancellation Action for Non-use; Is ‘token use’ or ‘ancillary use’ sufficient to maintain a registration?

  • Although the criterion required for such Cancellation Action require ‘genuine’, ‘specific’ or ‘proper’ use. On closer perusal of the TA 1991, a sufficient defence that is provided is that the registered proprietor “has no intention to abandon the Mark”. Notably, the threshold required of ‘use’ is low, and any ‘use’, albeit fanciful, ought to protect the proprietor from such Cancellation Action. For instance, even the deminimis use of a Trademark, for a brief period of time and only in relation to a minimal number of products has been held to still constitute ‘use’ [See the Supreme (Dika) Court’s Decision No. 4006/2553].
  • One caveat however, for the Trademark Board/Committee, in the case where the goods/sevices in question require a permit from a Government body before sales/provisions, e.g. pharmaceutical products, cosmetics, medicines, etc., the properietor’s non acquisition of such a permit may be treated as conclusive evidence of non-use and the proprietor’s intention to abandon the Mark [Frento Co Ltd v United Foods PCL, Trade Mark Board Decision No. 14/2550, May 17, 2007, and No. 15/2550, May 17, 2007].

60. How can a Trademark proprietor in Thailand prove that he had ‘no intention to abandon the Mark’?

Is the threshold to prove ‘no intention to abandon’ high?

It is submitted that this is relatively easy to prove. For instance, the Trademark Board / Committee has held that the renewal of a registration is sufficient to show this ‘no intention to abandon’ [Order No. 43/2540].

61.  Must ‘use’ of a Trademark be in relation to all classifications of goods / services as registered in Thailand?

Is it necessary for ‘use’ to be for all registered classifications of goods / services?

No. Partial cancellation is not available for this type of Cancellation Action.

62. Must ‘use’ of a Trademark in Thailand be ‘use as a Mark’?

Does ‘use’ mean ‘use as a Mark’?

Although the authorities are unclear about this, it has been suggested that ‘use’ in a non-Trademark manner should at least go to show the proprietor’s interest in the Mark and is sufficient to maintain it.

63.  What is the geographical extent of ‘use’ required of a Trademark registered in Thailand?

How wide must the geographical scale of ‘use’ be?

Not a requirement. Even use of a Mark for products which are exclusively for exportation satisfies the requirement [See the Supreme (Dika) Court’s Decision No. 3498/2528. Note that use of the Mark abroad can be construed as evidence toward the proprietor’s interest in the Mark and should be a sufficient defence against a Cancellation Action for Non-use].

64.  Does use of a Trademark registered in Thailand by a distributor or a licensee constitute ‘use’?

Is the Trademark in ‘use’ if it is used by a licensee or a distributor?

Yes.

65.  Must ‘use’ of a Trademark registered in Thailand be in same form that had been registered?

Must ‘use’ of the Mark be in the exact form registered?

Yes. It is not clear if slight variations would weaken the defence but it is maintained that actual use of the Mark has to be in the form as registered. For instance, a Mark registered in block letters, has been cancelled for ‘Non-Use’ despite use of the same Mark in a stylized version [VITASOY’ case, Supreme (Dika) Court’s Decision No. 11046/2551].

66.  Is there a defence of ‘Non-Use’ against a Thai Trademark infringement action / opposition?

Can ‘Non-Use’ be raised as a defence against an infringement action/opposition?

No.

67.  Can I re-register a Mark in Thailand that had been cancelled for ‘Non-Use’?

Is re-registration of a Mark cancelled in a Cancellation Action for Non-use permitted?

Yes.

68.  Who carries the burden of proof in a Cancellation for ‘Non-Use’ in Thailand?

Is if for the proprietor to prove ‘use’ or for the petitioner to prove ‘Non-Use’?

In the TA 1991, it is stated that the burden of proof lies with the proprietor, i.e. to prove ‘non-use’ and thereupon the burden of proof lies with the proprietor to defend or explain such ‘non-use’. However, in practice, it appears that by reason of registration, there is a presumption of intent to use the Mark [See Dama Bergling & Vipa Chuenjaipanich, Thailand Points Out Just How Hard Cancellation of a Registered Trademark Really Is! (Aug. 2001)]. In the ‘WALPAMUR’ case [Trademark Board Decision No. 30/2543, Dec. 12, 2000 despite Market survey evidence of ‘non-use’ furnished by the petitioner, the Trademark Board held that the petitioner fell short of proving its burden, the Trademark in question, where the proprietor had not even filed a response.

This goes to show that although on proper construction of the statute the burden of proof in a Cancellation for Non-use Action lies with the petitioner and shifts to the proprietor upon proof of ‘non-use’, what happens is that the burden of proof to prove that the often invoked exception/defence does not necessarily lie with the proprietor at all. There appears to be a confusion in this respect so that an automatic presumption of ‘no intent to abandon’ is give to the proprietor with the effect of a double burden piled on the petitioner, or in other words: as the ‘WALPAMUR’ case [Trade Mark Board Decision No. 30/2543, Dec. 12,2000] suggests, that the burden of proof does not in fact shift to the proprietor till the petitioner can prove against and negate the presumption of ‘no intent to abandon’, after which the proprietor has his opportunity to show that he had ‘no intent to abandon’.

Several commentators have argued against this but for our purposes, in effect: the threshold of proof required for a Cancellation Action for Non-use is exceptionally high.

Leave a Comment

JapanRussia