Thailand Intellectual Property – Trademarks
Basic Overview of Thailand’s Trademark Registration System
(THAILAND TRADEMARK NOW FAQ Chapter 4)
A Cancellation Action is generally brought to challenge a Trademark registered in Thailand when the registration is ‘unrightful’ and causes prejudice over others’ ‘rightful’ claim to it or right to employ the same for their respective goods / services. Cancellation Actions thus serve to revoke registrations that have been granted and remove those Trademarks from the Trademark register in a variety of circumstances as described below (inter alia).
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?
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?
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?
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.
.. to be continued
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For more information on the foregoing, please contact the author JOEL LOO SEAN EE, the Bangkok-based Senior Regional Counsel at Kelvin Chia Thailand and a member of Kelvin Chia Partnership’s Regional Practice Group at Joel.Loo@KCPartnership.com.
This article is published to provide general information only and is not offered as specific advice on any particular matter – This information is to be taken subject to proper consultation with a lawyer.