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

March 15, 2016

Recognition of Well-Known Marks in Thailand

Subscribe to Updates
Managing Intellectual Property

After Thailand’s Department of Intellectual Property (DIP) recently announced that it would abolish the recordation system for well-known trademarks, many questions about the status of well-known marks remained unanswered. This article will discuss whether well-known marks are still protected in Thailand, who has authority to determine whether a mark is well known, and whether a similar recordation system will be reestablished in the future.

Abolishment of Well-Known Marks Recordation System

The Notification of Cancellation of Rules of the Department of Intellectual Property Regarding Recordation of Well-Known Marks B.E. 2548 (2005), issued on September 9, 2015, stated that the DIP’s recordation system for well-known trademarks was abolished because the Board of Trademarks already has criteria to determine whether a mark is well known. For the sake of harmonization, the DIP cancelled its recordation system.

Protection of Well-Known Marks

As Thailand is a member of the Paris Convention and the TRIPS Agreement, protection of well-known marks still exists in Thailand despite the recordation system being abolished. Under Section 8(10) of the Trademark Act, a mark which is identical or very similar to a well-known mark to the extent that it may cause confusion among the public as to the owner or origin of the goods is not registrable.

According to the Ministerial Notification regarding Rules on Determination of Well-Known Marks, dated September 21, 2004 (Ministerial Notification)—which is applicable to all government organizations, from the DIP to the Supreme Court—the following criteria should be used to determine whether a mark is well known:

  • The mark has been used on goods or services by way of distribution, or has been used, advertised, or used by other means in the usual manner and in good faith;
  • The mark has been widely used, whether in Thailand or abroad, in the usual manner and in good faith to the extent that it is well known among the general public or those in the relevant industry in Thailand;
  • The mark has been used to the extent that its reputation for quality is generally accepted among consumers; and
  • Such use is done whether by the applicant or the applicant’s authorized representative or licensee, and whether locally or abroad.

Current System

In the absence of the previously existing recordation system, the following authorities can now determine whether a mark is well known:

Trademark Registrars.  At the examination stage, trademark registrars have a duty to reject the registration of a mark which is identical or similar to a well-known mark and may cause confusion among the general public as to the owner or origin of the goods.

Board of Trademarks.  The Board of Trademarks, which acts as an appeal authority for decisions of the registrars, still has the authority to decide whether a mark is well known. If a case is appealed to the Board of Trademarks, the applicant or opposer may argue that its mark is well known. The Board of Trademarks will then make a decision on the well-known status of the mark in accordance with the Ministerial Notification, taking into account factors such as acknowledgement of the public in Thailand; the amount of sales or revenue generated by the mark; the market share of the applicant’s business; and so on.

The applicant or opposer should submit evidence in support of these factors, such as magazines, product samples, invoices, bills of lading, advertisements, trademark registration certificates, awards, judgments with favorable decisions, etc. In Thailand’s civil law system, however, court judgments are merely persuasive and do not hold binding precedence.

Courts.  The Intellectual Property and International Trade Court (IP&IT Court) and the Supreme Court can also make decisions on the well-known status of marks based on the Ministerial Notification. According to Supreme Court Decision No. 6113/2555, recordation is not mandatory. The fact that the opposer did not file a recordation was not a significant reason to decide that the mark was not well-known. It was determined that all facts must be considered in accordance with the Ministerial Notification, such as evidence proving the well-known status of the mark.

There is currently no indication that a recordation system for well-known marks will be re-established in the future. A single committee which is authorized to make a binding decision on whether a mark is well known would be welcomed, because multiple authorities issuing nonbinding decisions can be burdensome to trademark owners, who need to prove their mark’s well-known status at every different stage and in every similar case. In the future, if a system to record well-known marks is established which binds all relevant government authorities, owners of well-known trademarks will benefit tremendously because it will reduce costs and time to prove that a mark is well known.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

December 30, 2025
The Intellectual Property Office of Vietnam (IP Office), with support from the Japan International Cooperation Agency (JICA), is drafting additional annexes to its Guidelines for Patent Examination, focusing on the examination of patent applications in the pharmaceutical and biotechnology sectors. The new annexes are expected to be officially issued in early 2026 as Annexes III and IV, following the successful issuance in 2023 of Annexes I and II addressing computer program-related inventions. The IP Office recently organized a seminar to gather feedback on the draft annexes from intellectual property representatives, academic institutions, research institutes, and other interested parties, emphasizing its intention to receive further constructive opinions to refine the guidelines for pharmaceuticals and biotechnology. Why These Guidelines Matter Patent examination in Vietnam has traditionally relied on the Guidelines for Patent Examination issued under Decision No. 487/QD-SHTT (2010), recently supplemented by Annexes I and II. While these documents provide a solid foundation, they do not fully address practical challenges in examining pharmaceutical and biotech inventions, particularly issues related to clarity, sufficiency of disclosure, enablement, features of function and utility, combination therapies, and inventions involving artificial intelligence (AI) applications in these fields. Annexes III and IV aim to close these gaps by introducing structured principles and illustrative examples. Guidance on Patent Specification Requirements Annex III provides detailed guidance on the requirements for patent specifications in pharmaceuticals and biotechnology, covering two main parts: Part A addresses sufficiency of disclosure, clarity of specifications, and consistency between claims and descriptions. Part B covers inventions related to Markush-type compounds, claims containing exclusion statements (disclaimers), and additional experimental data submitted during examination. The Guidelines outline specific disclosure requirements for subject matters such as compounds, formulations, pharmaceutical compositions, genes, polypeptides, proteins, vectors, transgenic organisms, modified organisms, and hybrid cells. Annex III emphasizes that disclaimers are not accepted
Read More
December 17, 2025
Vietnam’s National Assembly approved wide-ranging amendments to the Intellectual Property (IP) Law on December 10, 2025, marking one of the most significant overhauls of the country’s IP regime in recent years. The changes, which supplement and refine existing provisions, are designed to align Vietnam’s framework more closely with international standards while addressing practical challenges faced by rights holders and practitioners. The amendments will come into force on April 1, 2026. The most notable changes are detailed below. Recognition of partial and nonphysical industrial designs: Industrial design protection has been broadened to cover partial designs and nonphysical forms (class 32), explicitly extending rights to parts of products that are not independently circulated as well as digital and intangible product appearances. The law clarifies that the external appearances of nonphysical products are protected industrial designs, and circulation of digital copies of any part of that appearance will be treated as an act of using the industrial design. The provision on the industrial applicability of industrial designs has also been amended accordingly to include the uniform reproduction of nonphysical products in cyberspace. Resolving conflicts between overlapping rights: The IP Law provides a safeguard against conflicts when a single subject matter is protected by multiple IP rights. Where overlapping rights exist, the later-arising right will be terminated if its exercise interferes with the normal exploitation of an earlier right. The decision to terminate such a later right rests with the court. Use of published data for AI training: Organizations and individuals may use lawfully published and publicly accessible documents and data for scientific research, testing, and AI system training. Such use must not unreasonably prejudice the rights or legitimate interests of authors or IP rights holders. Where the documents and data fall under copyright or related rights protection, their use must also comply
Read More
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