You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

July 11, 2022

Board of Trademarks Limits Parties Entitled to Request Non-use Cancellation

Subscribe to Updates
World Trademark Review

Background

In Thailand, as in other countries, there are many possible legal grounds for the cancellation of registered trademarks. The non-use ground, under Section 63 of the Trademark Act, has long been one of the most challenging grounds for petitioners to achieve.

Section 63 provides that any interested party can ask the Board of Trademarks to cancel a trademark registration if they can provide proof that, at the time of the application, the proprietor of the mark had no intent of using it for the designated goods. The party requesting cancellation must also show that, in the three years prior to the cancellation request, the mark had not been used in good faith for the goods for which it is registered. The proprietor of the trademark can defend itself against the cancellation request by proving that non-use was unintentional and was due to “exceptional circumstances in the trade”.

One of the reasons why non-use cancellation has been challenging in Thailand is that the Trademark Act does not prescribe the exact timeframe within which a mark must be used after it has been registered. Therefore, in some cases the Board of Trademarks found that the mere argument that the trademark owner had plans to use the mark in the future was suf cient to dismiss a non-use cancellation petition, even though the owner did not provide any proof to verify this.

Recent Board of Trademarks decision

In this case, a petitioner’s trademark application was rejected by the trademark registrar for being confusingly similar to a registered trademark. The petitioner then led a request for non-use cancellation against the cited trademark. At the same time, the petitioner decided to remove from its own trademark application the services that appeared to overlap with some of the goods connected to the registered trademark. This led the trademark registrar to revoke the citation and allow the trademark application to proceed to registration. However, once the application was no longer deemed to con ict with the cited mark, the Board of Trademarks ruled that the petitioner was no longer an ‘interested person’ eligible to le a non-use cancellation request against the cited trademark, and dismissed the non-use cancellation petition without considering its substance.

Comment

This decision seems to narrow the definition of ‘interested person’ under Section 63 to include only parties holding a pending trademark application that has been rejected for being similar to a cited mark. This somewhat contradicts a previous Supreme Court judgment (5333/2558) in a similar cancellation case under a different section of the Trademark Act that also uses the expression ‘interested person’. In that case, the court defined an ‘interested person’ as a party who has a “connecting point” with the mark that is the subject of the non-use cancellation request. The court’s language suggests that the “connecting point” is not necessarily limited to the rejection of a trademark application, but could also include other circumstances whereby use of one’s mark could somehow be affected by the existence of a prior registered mark.

Whether the Board of Trademarks’ decision in the present matter will be relied upon in future non-use cancellation proceedings remains to be seen. If it is, success rates for non-use cancellation requests will likely become even lower than they currently are.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

December 5, 2025
One morning, a California-based company mapping its Southeast Asia rollout opened an unexpected cease-and-desist letter from a Vietnamese IP firm. To the company’s surprise, the letter asserted that a local client already owned the company’s brand in Vietnam and threatened legal action. This is not an isolated incident. In another recent matter in the sports industry, a squatter demanded at least USD 48,000 from our client to “resolve” a similar conflict. For brands entering Vietnam or expanding distribution there, these tactics can create acute risk at precisely the point at which market momentum is building. Vietnam’s rapid economic growth and deepening integration into global trade have made it an increasingly attractive destination for multinational brands. Those same dynamics have intensified a longstanding issue: trademark squatting. Vietnam has modernized its IP framework over the past decade, but its strict first-to-file trademark system continues to incentivize opportunistic filings by parties with no legitimate interest in a mark. As more foreign brands build their reputation abroad before turning to Vietnam, squatters remain alert to timing gaps and enforcement frictions. The First-to-File System: Advantages and Vulnerabilities Vietnam adheres closely to the first-to-file principle under its Law on Intellectual Property. In practice, exclusive trademark rights belong to whoever submits the earliest valid application to the Vietnam Intellectual Property Office, regardless of prior use in Vietnam. This approach offers administrative clarity and reduces evidentiary burdens compared to use-based jurisdictions. Yet it also creates fertile conditions for squatting. Bad-faith actors regularly monitor foreign markets, identify brands gaining traction, and move quickly to register those marks domestically, often long before the genuine owner enters the market or prioritizes local filings. By the time the true brand seeks protection, the squatter’s application (or registration) stands as a legal obstacle, pushing businesses toward costly oppositions, cancellations, or uncomfortable negotiations
Read More
November 26, 2025
On November 21, 2025, Myanmar’s Ministry of Commerce (MOC) issued Notification No. 103/2025 promulgating the Geographical Indication Rules (GI Rules), establishing a comprehensive framework for the registration and administration of geographical indications (GI), which are primarily governed by the Trademark Law of 2019. On the same day, the MOC released Notification No. 104/2025 specifying the required forms for GI-related matters. The GI Rules establish a comprehensive set of procedures for the entire GI application process, including filing applications, oppositions, cancellations, and invalidations, and appointing a local representative for GI-related matters. Under the Trademark Law and the GI Rules, domestic and foreign legal entities (organizations) that formally represent a defined group of stakeholders (such as producers or manufacturers of natural products or resources, agricultural products, handicrafts, or industrial products) and other competent authorities from government departments are eligible to apply for GI registration with the Intellectual Property Department (IPD) in Myanmar. Application A GI application can be submitted in either English or Myanmar language electronically, in person, or via post. Foreign applicants seeking to register a GI in Myanmar are required to submit a copy of the registration certificate from their country of origin with the GI application. This certificate must explicitly state the GI name of the protected product. Notably, foreign applicants are mandated to appoint a local representative in Myanmar to act on their behalf for GI-related matters with the IPD and appeal-related matters with the IP Agency. The form for appointing the local representative must be duly notarized in the applicant’s home country to ensure its legal validity and acceptance in accordance with the GI Rules. Application for Use of GI Logo Pursuant to the GI Rules, any interested individual, local or foreign, may submit an application to the IPD for authorization to use the GI logo,
Read More
November 21, 2025
Tilleke & Gibbins has contributed the Thailand chapter to Asia IP’s ASEAN Guide to IP Protection 2025, an annual reference covering key developments and practical considerations for intellectual property systems across Southeast Asia. The chapter offers an overview of Thailand’s current legal framework for the protection of trademarks, patents, industrial designs, and copyrights. It summarizes registration requirements, recent regulatory updates, and procedural considerations relevant to rights holders and practitioners. The chapter offers actionable insights for rights holders at every stage of the IP lifecycle and addresses practical strategies for managing portfolios, anticipating enforcement challenges, and maximizing the value of IP assets. The authors also highlight recent trends and developments in Thai IP law, ensuring that readers are equipped with the latest knowledge to inform their decisions. The complete Thailand chapter can be downloaded through the button below, and the chapter is also available on the Asia IP website.
Read More
November 13, 2025
Tilleke & Gibbins has contributed the Thailand chapter to Franchise 2026, part of the International Comparative Legal Guides (ICLG) series published by Global Legal Group. This annual guide offers comparative analysis of franchise laws and regulations across jurisdictions worldwide, providing practical insights for businesses and legal practitioners operating in the global franchise sector. Each country chapter in the 12th edition follows a Q&A format covering key aspects of franchise law and operations, including: Relevant legislation and rules governing franchise transactions Business organization options for franchised operations Competition law considerations Protection of intellectual property and brands Liability issues and risk mitigation Governing law and dispute resolution Real estate matters Online trading regulations Termination requirements Joint employer risks and vicarious liability Currency controls and taxation Commercial agency considerations Good faith obligations and fair dealing requirements Ongoing relationship management Franchise renewal processes Franchise migration procedures Sustainability commitments Electronic signatures and document retention Current developments in the franchise sector The Thailand chapter, authored by Alan Adcock and Kasama Sriwatanakul, provides an in-depth overview of the legal landscape for franchising and franchising-related activities in Thailand. The complete Thailand chapter is available as a PDF below. The Thailand chapter—and the full Franchise 2026 guide—are also freely available on the ICLG website.
Read More