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

December 7, 2020

Canceling a Thai Trademark Registered in Bad Faith

Subscribe to Updates
Informed Counsel

It is not unusual for brand owners to take a closer look at the Thai market for their products only to find that a third party has already applied for registration of their trademark. Brand owners who face this situation usually become aware of it when they consider entering the Thai market after their brand has already become famous and successful elsewhere. Well-known marks are often usurped when a bad-faith applicant intentionally registers a trademark to benefit from the goodwill and reputation associated with that trademark. As Thailand is a first-to-file system for trademark registration, supplying proof of intention to use is not a requirement for registration. Thus, if a legitimate brand owner has never registered their trademark in Thailand, a bad-faith applicant might take advantage of this opening to file another person’s trademark in his or her own name.

Overlooking the early securing of trademark rights in Thailand can lead to complex problems, even when brand owners have a relationship with a distributor in Thailand. The problem usually comes to light when a brand owner seeks to end their relationship with one distributor and start a business relationship with a new partner. In some cases, brand owners are blindsided when they learn that the previous distributor had surreptitiously filed for registration of the trademark in the distributor’s own name without alerting them—meaning that the former distributor now holds exclusive rights over the use of the trademark in Thailand.

After finding out about a bad-faith trademark registration, many brand owners seek to cancel the Thai registration of the trademark to which they have better rights than the registrant. The Trademark Act provides several mechanisms that brand owners can rely on to pursue cancellation of trademark’s registration; however, none of the law’s provisions clearly state the possibility of canceling a trademark registered in bad faith. Below, we explore two possible  methods for cancellation of a bad-faith registration, depending on which authority considers the matter.

Cancellation with Board of Trademarks

A cancellation petition may be filed with the Board of Trademarks through one of two routes—one for “interested parties” (that is, affected parties, such as a legitimate brand owner) and one for anyone. While neither route is based on legal provisions clearly stating how to cancel a registration based on a bad-faith argument, they are viable possibilities for those seeking cancellation, with different criteria and requirements pertaining to each route.

If an interested party files a cancellation petition with the Board of Trademarks to challenge the mark’s general registrability, the board will re-examine the distinctiveness, similarity, and legality grounds under section 61 of the Trademark Act. As a legitimate brand owner usually qualifies as an interested party, that owner can file a petition to cancel the mark on grounds that it is identical or confusingly similar to the legitimate owner’s trademark, which was already registered outside of Thailand, and should therefore not have been filed.

A person not claiming interested-party status who wishes to file a cancellation petition must be of the opinion that the registered trademark is contrary to public order, morality, or public policy (Trademark Act, Section 62). As a bad-faith filing may be interpreted as contrary to these things, it should qualify for cancellation.

However, proving the bad faith of the registrant to the Board of Trademarks can be difficult, since there are no witness hearings. The Board of Trademarks considers only documentary evidence, which usually does not clearly reveal the registrant’s intention, whether the registrant possessed knowledge of the original brand, or whether they intentionally copied the original brand to be registered as their own.

Cancellation with the IP&IT Court

Better right grounds—that is, assertions that the genuine brand owner has a more legitimate right to use their own trademark than the registrant in Thailand does—are typically the most relevant legal grounds for cancellation of a trademark registered in bad faith. Section 67 of the Trademark Act provides that a legitimate owner may file a lawsuit for cancellation of a bad-faith trademark registration on better right grounds in the Central Intellectual Property and International Trade Court (IP&IT Court), provided that it has been registered for less than five years.

If a trademark has been registered for more than five years, it cannot be cancelled. This has already been challenged in court, with at least one brand owner arguing that the five-year limitation should only apply if the trademark in question was filed in good faith, and that brand owners should be able to cancel trademarks registered in bad faith even after the five-year period has expired. However, the Supreme Court rejected the argument and ruled that, as the five-year time period had expired, the trademark registration in that case could not be cancelled despite the brand owner having a better right to it.

Proving the bad faith of the registrant can be easier and have higher chances of success in the IP&IT Court, so most legitimate brand owners opt to do this rather than file a cancellation against a bad-faith registration through the Board of Trademarks. Again, however, if the trademark registration has been active for longer than five years, the IP&IT Court will reject the request.

Canceling Long-Standing Bad-Faith Registrations

Despite this conservative approach, it can still be possible for a legitimate trademark owner to cancel a bad-faith registration that has been active longer than five years, especially when there is a precedent judgment ruling  that the trademark was filed in bad faith. In this case, the cancellation petition—along with evidence of the prior ruling—should be filed with the Board of Trademarks, which would consider the evidence and may cancel the trademark.

Tilleke & Gibbins has had a great deal of success with this approach, including in a recent case on behalf of a leading fertilizer company, which had filed a cancellation petition with the Board of Trademarks. Since there was a precedent judgment ruling that the disputed trademark was filed in bad faith, the Board of Trademarks ordered the cancellation of the trademark. The owner of the cancelled trademark then appealed the decision to the IP&IT Court, which agreed that the trademark was filed in bad faith, dismissed the case, and confirmed that the Board of Trademarks had correctly ordered the cancellation. The case was further appealed to the Specialized Appeal Court, which affirmed the IP&IT Court’s judgment, reasoning that the Board of Trademarks remains empowered to cancel a registered trademark under Sections 61 and 62 of the Thai Trademark Act, even if the bad-faith trademark has been in force for more than five years.

Selecting a Strategy

In summary, the legitimate owner of a trademark has a number of options for seeking cancellation of a trademark registered in bad faith. For marks that have been registered for less than five years, brand owners can file a petition with either the Board of Trademarks or the IP&IT Court. If a bad-faith trademark registration has been active for longer than five years, brand owners may still be able to file a cancellation petition with the Board of Trademarks. Withthese options, brand owners should be in a favorable position if they find that their intellectual property has been infringed upon by a bad-faith trademark registration in Thailand. At that point, it will be important to assess the circumstances of the case and develop a comprehensive legal strategy accordingly to regain full exclusive rights over the trademark.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 27, 2026
Vietnam’s new E-Commerce Law, which took effect on 1 July 2026 along with its implementing Decree No. 248/2026/ND-CP (Decree 248), marks a significant development in the country’s approach to online intellectual property (IP) enforcement, reflecting a clear shift from a reactive model of intermediary liability to one that expects platforms to play a more active role in preventing infringement. From notice-and-takedown to platform responsibility The most significant change introduced by the E-Commerce Law is the transformation of the legal role of e-commerce platforms. The existing safe harbor provisions under the IP Law and the copyright notice-and-takedown regime established by Decree 17/2023/ND-CP (Decree 17) largely required intermediaries to act only after receiving notice of infringement. Once infringing content had been removed, the platform’s legal obligation was generally considered fulfilled. The new legislation adopts a fundamentally different approach. Article 17 of the E-Commerce Law requires intermediary platforms to screen information relating to goods and services before publication in order to prevent listings involving counterfeit or IP-infringing goods, and goods of unknown origin. Rather than relying exclusively on complaints from rights holders, platforms are now expected to implement preventive measures before infringing listings become publicly available. Decree 248 further requires platforms to update keyword filters based on recommendations issued by competent authorities. These filtering mechanisms are intended to prevent prohibited listings from appearing on the platform and represent a further move away from a purely complaint-driven enforcement model. The legislation also introduces Vietnam’s first statutory stay-down obligation. Under the E-Commerce Law and Decree 248, major digital platforms must maintain automated systems capable of reviewing, warning against, and removing unlawful listings while also implementing measures to prevent repeat violations, defined under Decree 248 as conduct that has previously been identified and handled by the platform, but continues to recur. This obligation addresses one
Read More
July 27, 2026
Tilleke & Gibbins’ intellectual property specialists have authored the Thailand chapter of Trade Secrets 2026 from Chambers and Partners. This global guide examines the legal frameworks governing trade secret protection, enforcement, and litigation across jurisdictions worldwide. The Thailand chapter provides a comprehensive overview of the country’s legal regime for protecting confidential business information, covering the legal framework, trade secret misappropriation, litigation procedures, remedies, and dispute resolution. Some topics covered include: Protectable trade secrets Reasonable measures to maintain secrecy Employee confidentiality Trade secret licensing Civil and criminal remedies Litigation procedures and injunctions Damages and other remedies Mediation and arbitration The guide also examines practical issues relating to safeguarding trade secrets, defending against allegations of misappropriation, and managing trade secret disputes in Thailand. Chambers and Partners’ Global Practice Guides provide in-house counsel with authoritative commentary on practical legal issues affecting business, enabling readers to compare legislation and procedures across multiple jurisdictions. The Thailand chapter of Trade Secrets 2026 is available as a PDF through the button below. The full guide can be accessed for free on the Chambers and Partners website.
Read More
July 27, 2026
In March 2025, Thailand’s Central Intellectual Property and International Trade Court (IP&IT Court) issued a landmark judgment in favor of Luckin Coffee, China’s leading retail coffee chain. The judgment marked a significant turnaround following earlier trademark litigation involving Luckin Coffee from 2021 to 2023 that had generated widespread public attention and raised questions about the protection available to legitimate foreign brand owners in Thailand. In a significant subsequent development, Thailand’s Court of Appeal for Specialized Cases has now affirmed the IP&IT Court’s judgment in its entirety. The appellate decision brings clarity to one of Thailand’s most closely watched trademark disputes. Significantly, this is the first case in Thailand to formally recognize the trademark squatting principle. The Court of Appeal confirmed that Luckin Coffee has a better right to the disputed mark and ordered cancellation of the defendants’ trademark registration—a key application of the “better right” doctrine. The court also upheld the substantial damages awarded at first instance, providing important guidance on assessing harm from systematic trademark squatting. Award-Winning Judgment Affirmed in Its Entirety The significance of the first-instance judgment extended beyond the outcome for Luckin Coffee. The IP&IT Court judgment was subsequently recognized in the IP&IT Court’s Distinguished Judgment Awards in 2025, reflecting the complexity, novelty, and legal significance of the issues considered in the case. The defendants nevertheless appealed the judgment, challenging several key aspects of the IP&IT Court’s decision. Luckin Coffee continued to entrust Tilleke & Gibbins as their sole attorney to pursue the case at the appellate level. After considering the defendants’ appeal and Luckin Coffee’s submissions in response, the Court of Appeal affirmed the first-instance judgment in its entirety. The judgment was announced on July 8, 2026. Better Right to the Marks The Court of Appeal confirmed Luckin Coffee’s superior rights. The orders include cancellation
Read More
July 24, 2026
As food innovation continues to accelerate, manufacturers are increasingly introducing ingredients derived from new sources, produced using novel technologies, or lacking a significant history of human consumption. While these innovations create new opportunities for the food industry, they also raise important questions regarding consumer safety. For this reason, many jurisdictions, including Thailand, the European Union, Australia and New Zealand, Canada, and Singapore, require a premarket safety assessment for novel food ingredients before they can be placed on the market. The objective of this assessment is to ensure that each ingredient is safe for its intended use and level of consumption, does not present toxicological, allergenic, microbiological, or nutritional concerns, and will not mislead consumers. Scientific authorities typically evaluate the ingredient’s identity, manufacturing process, composition, specifications, anticipated dietary exposure, toxicological information, nutritional impact, and history of use before determining whether it can be marketed. Against this background, the Thai Food and Drug Administration (FDA) recently took an important step toward improving regulatory transparency by publishing, for the first time, a consolidated public list of substances that have successfully completed the Thai FDA’s safety assessment process, including substances determined to be novel foods and those determined not to fall within the novel food category. The list identifies the approved substances, the corresponding manufacturers or importers, approval dates, and the approved conditions of use. Although the publication does not change the existing legal framework governing novel food approvals, it provides businesses with greater visibility into the Thai FDA’s regulatory precedents and the types of substances that have previously been accepted through the safety assessment process. The full announcement is available on the Thai FDA’s website. As the list is now publicly available, it also provides useful insight into the types of substances that have successfully completed the Thai FDA’s safety assessment process.
Read More