It is difficult to obtain cancellation of a registered trademark on grounds of non-use in Thailand

Trademarks in Thailand are registered with the Department of Intellectual Property. The Board of Trademarks is assigned to hear petitions to cancel trademarks; however, it rarely orders a cancellation based on non-use.

Cancellation of the registration of a trademark based on grounds of non-use is provided under Section 63 of the Thailand Trademark Act which states:

"Any interested person or the Registrar may request the Board to cancel the registration of a trademark if either of them can prove that at the time of seeking such registration, the proprietor had no bona fide intent to use the trademark in respect of any of the goods for which it was being registered and that in reality the trademark has never, in good faith, been used for such goods, or it has not, in good faith, been so used during the three years immediately before the petition to the Board, unless the proprietor of the trademark can prove that non-use of the trademark for those goods was due to exceptional circumstances in the trade and not due to any intention not to use or abandon the trademark in respect of those goods."

The recent trend of decisions show the Board has failed to set forth standards for what would constitute sufficient evidence of "non-use", "intent-to-use" or "exceptional circumstances". Every petition that has come before the Board to cancel a trademark has been denied, with one exception where the Board allowed the cancellation of a trademark to occur because the registrant actually submitted that he no longer wanted to use the trademark.

The Board, in its recent rulings, has employed the assertion that if a trademark is registered, an intent to use it is constituted and to prove non-use, it must be demonstrated that the registrant had not been using the trademark with the registered goods for three years immediately preceding the filing of cancellation petition.

In cases where there existed substantial evidence and records demonstrating non-use of a trademark for the preceding three years and more, the Board refused to cancel the registered trademarks on the basis that the registrant might still have the intent to use it. This attitude of the Board has frustrated companies because they cannot successfully petition to cancel an used, but prior registered trademark that is in conflict with the proposed mark.

Sec 63 of the Act states that the Board does not have to cancel the registration of a trademark if the registrant can prove that the non-use of the trademark was due to "exceptional circumstances".

Possible exceptions of "exceptional circumstances" could be that -

• the business underwent severe financial hardship and use of the trademark was financially impossible for the preceding three years; or that
• a company had been saturating other markets with the product and had not yet had the opportunity to fully market their product in Thailand.

In absence of a standard for defining "exceptional circumstances", the Board continues to allow any circumstances to be considered an "exceptional circumstance".

Further the registrant of a trademark is not required to file a response to a cancellation petition of their trademark. If a response to a cancellation action is not filed, the logical deduction would be that the holder of the registered trademark either :

a. no longer wishes to continue utilising the trademark

b. no longer is in business, or

c. no longer is alive.

But by not requiring a response to be filed, the Board allows for the perpetuation of unused trademarks, assuming intent by the owner to use the trademark.

Case Study :

Petitioner, Australia-based Orica , applied for the cancellation of the trademark "WALPAMUR" registered by Akzo Novel Decorative Coatings Ltd. Despite Orica's application to register the trademark WALPAMUR in Pakistan, Malaysia, India, Indonesia, Singapore, US, Vietnam and Taiwan, the Board rejected the petition to cancel Akzo's trademark for several reasons. Though the Board acknowledged that Akzo did not file a response to the cancellation action, it refused to construe such failure to act as tantamount having registered the trademark in bad faith.

Conclusion:

In such circumstances, only an appeal made to the Intellectual Property and International Trade (IP&IT) Court would result in the setting forth of an applicable standard as to what criteria would meet the standards of non-use, intent to use, and exceptional circumstances and what will constitute sufficient evidence.