Trademark registration is a fundamental element of investment strategy. Cost incurred in registering a trademark is considerably lower than cost associated with challenges to bad faith registrations by business partners, distributors or others, and the examination process in a trademark application is notably faster than the court process in a challenge to an unauthorised trademark application or registration. Thailand being a “first-to-file” jurisdiction, speed is of the essence.

Nevertheless despite moving expeditiously foreign investors do sometimes find that their trademark has already been registered in Thailand by an unauthorised party, or that an unauthorised application has been filed. This article explores the strategies available and the options open to trademark owners in such circumstances.

1.  Claiming Priority Date

 If foreign investors who are the true trademark owners discover that an application for registration of their trademark has been filed in Thailand within six months from the date of the investors’ first filing in their home jurisdiction, they may apply to register their trademark in Thailand within that six-month period by claiming priority based on their first filing at home. Such applications based on a claimed priority date will be accorded prioritized examination, causing the application filed in bad faith to be processed subsequently. Most often, the bad faith application will then be abandoned by the applicant.

2.  Opposition during the Publication Period

 If foreign investors who are the true trademark owners discover that their trademark has been filed in Thailand by a third party during the 60-day trademark publication period, they may file an opposition to the application with the Thai Trademark Office. This opposition primarily involves demonstrating (i) their rightful ownership of the trademark, surpassing that of the applicant, and (ii) that the published trademark application has been filed in bad faith.

It is also advisable for the true trademark owner to file their own trademark application during this period. If the applicant fails to respond with a counter-statement, the bad faith application will be abandoned. However, if a counter-statement is submitted, the examination process will take approximately two to three years. In the event of a negative outcome, either party has the right to appeal the examiner’s decision to the Trademark Board, and further legal action may be pursued through the courts.

3.  Revocation

 If foreign investors who are the true trademark owners discover that their trademark has been officially registered in Thailand upon application by an unauthorised person, they are entitled to challenge to revoke such trademark registration through a trademark revocation process, which can be initiated at two distinct stages depending on the length of time for which the trademark registration has existed.

      3.1 Revocation at the Trademark Board under Sections 61-63 of the Thai Trademark Act

To revoke a trademark registration based on these provisions, a petition for revocation may be filed with the Trademark Board at any time without being subject to a statutory limitation period. The arguments presented in the petition are that the registered trademark was filed in bad faith, the registered trademark is similar to a well-known mark, and/or the registrant has no intention to use and has never used the registered trademark for more than three years.

The entire process at the Trademark Board can typically take around three years, commencing from the submission of the petition until the Trademark Board issues its decision. The decision of the Trademark Board can then be challenged through up to three levels of courts: the Central Intellectual Property and International Trade Court (the CIPIT Court) as the court of first instance, the Court of Appeal for Specialized Cases, and the Supreme Court. Typically, this journey through the courts may take another two to five years.

     3.2 Revocation in the CIPIT Court under Section 67 of the Thai Trademark Act

Within five years from the date the trademark application is granted (i.e., the Certificate Issuance Date), the true trademark owner has the option to initiate civil litigation against the trademark registrant directly in the CIPIT Court to revoke the registered trademark. The grounds for this litigation typically include arguments contending that the true trademark owner has a better right to the registered trademark than does the registrant, and that the registered trademark was filed in bad faith.

In contrast to the revocation process at the Trademark Board, litigation is significantly swifter and more efficacious since only the court has the power to deliver a final decision if the registrant challenges the Trademark Board’s decision. However,  litigation entails substantial costs, involves extensive paperwork, and requires a considerable investment of time and effort.

The processes for revoking a trademark registration are stringent, and the petitioner, i.e., the true trademark owner, bears the burden of proof. To successfully revoke a trademark registration, a substantial body of evidence must be meticulously prepared and submitted to the Trademark Board or the CIPIT Court, as the case may be, to prove the true ownership and widespread recognition of the trademark.

4.  Buy Back the Registered Trademark from the Bad-Faith Registrant

Although it is not what we would normally recommend to our clients, in situations where a swift entry into the market is of particular importance, and is being blocked or hampered by an unauthorised trademark application or registration, true trademark owners may consider repurchasing their trademark from the bad-faith registrant. This will often be the objective of the bad-faith applicant/registrant. However, if buyback negotiations fail, formal steps towards revocation as described above will remain a possibility.

In conclusion, for foreign investors contemplating market expansion into Thailand, we recommend filing trademark applications as early as possible. Delays can result in protracted processes, increased legal costs, missed business opportunities, and the potential devaluation of the brand. Swift trademark filing is a proactive step to mitigate these risks and facilitate a smoother and more secure entry into the new market.

Price Sanond Limited, Thailand

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This update is written for general information only. It does not constitute advice, and consultation with professional advisors is recommended.