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

May 26, 2017

Trademark Opposition Proceedings: Comparing Thailand and the United States

Subscribe to Updates
Bangkok Post, Corporate Counsellor Column

A trademark opposition proceeding is a specialized legal process in which one party challenges another party’s pending trademark application. Opposition proceedings can be useful tools for third parties to protect their trademark rights, and such proceedings are often undertaken when a third party believes that a trademark filed by another party is confusingly similar to its own trademark and will cause confusion to consumers. This article examines the differing approaches to trademark opposition proceedings in Thailand and the United States, and the benefits and drawbacks of each.

Thailand

In Thailand, after a trademark application is filed with the Department of Intellectual Property, the application is reviewed by a Trademark Registrar. If the Registrar approves the trademark for registration, the trademark application is published in the Trademark Gazette. Third parties have 60 days following the publication date to oppose the trademark if they wish to do so.

Opposition proceedings in Thailand are initiated with the Trademark Registrar. The opposer files an opposition petition setting out the reasons why the trademark should not be registered, and the owner of the opposed trademark may submit a counterstatement in response within 60 days of receiving the opposition petition. The Registrar assigned to the case will consider the parties’ submissions and will make a decision within 12 to 18 months.

The United States

Similar to Thailand,  a trademark application in the United States is filed with the United States Patent and Trademark Office (USPTO) and is reviewed by an Examining Attorney. If the application is approved for registration and all other requirements are met, the trademark application is published in the Official Gazette. A third party wishing to oppose a trademark application files a notice of opposition with the administrative tribunal of the USPTO, which is known as the Trademark Trial and Appeal Board (the Board). 

Once a notice of opposition is filed, the Board issues an order with the schedule of the proceedings. The owner of the opposed trademark must then submit an answer to the notice of opposition. Subsequently, the parties engage in a process called “discovery,” in which they request information and documents from each other to support their claims and defenses. The discovery process can include taking depositions of witnesses.

By the time it is ready to make a decision, the Board will often have an extensive legal record to consider, including the notice of opposition submitted by the opposer, the answer filed by the trademark owner, and all the documents, information, and testimony submitted by the parties to support their cases. An oral hearing before the Board is also available upon request.

A decision regarding a trademark opposition in the United States is required to be rendered within 10 to 20 weeks from the date the case is ready for decision. Once the Board makes a decision,  a party may file a request for rehearing, reconsideration, or modification of the decision.

Comparison

Opposition proceedings in Thailand are straightforward, and the process of filing and responding to an opposition is clear. The limited submissions that the parties can make help to keep costs relatively low. On the other hand, the proceedings do not provide opportunities for the parties to try to negotiate a settlement.

By comparison, the proceedings in the United States are complex and involved. The parties must exchange information and documents, so that each has an opportunity to gather evidence to support its claims and defenses. The result of the process is often a robust legal record on which the Board can rely when making its decision. However, the process can also lead to high costs.

One of the key differences between U.S. and Thai proceedings is the ability to suspend the proceedings or extend deadlines in certain circumstances in the United States—an option that is not available in Thailand. For example, in the United States, in the period after publication but before the opposition is filed, the potential opposer may request an extension of the deadline to file the opposition. The extension is often requested by the potential opposer to provide time to contact the trademark owner and try to resolve the dispute without the need to enter into opposition proceedings. It is also often possible to suspend ongoing proceedings if the parties are actively engaged in settlement discussions. 

While opposition proceedings in Thailand could be improved by allowing for more opportunities for parties to gather information from each other and by allowing for extensions of deadlines and suspensions of the proceedings, U.S. opposition proceedings could be enhanced through simplifying and streamlining the process.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 13, 2026
When Decree No. 186/2026/ND-CP (Decree 186) takes effect on July 15, 2026, it will introduce the most significant reform of Vietnam’s administrative IP enforcement framework since Decree 99/2013/ND-CP was issued in 2013. These changes are expected to make administrative enforcement faster, more accessible, and better suited to the realities of modern IP disputes. Below are the principal reforms and their practical implications for rights holders and enforcement practitioners. The End of Notarization and Consular Legalization Among the most welcome procedural changes is the abolition of the notarization and consular legalization requirement for powers of attorney (POA) submitted in administrative enforcement proceedings. Under the previous regime, foreign rights holders were generally required to execute a POA, then have it notarized and consular legalized (if seeking customs recordal). In practice, this process frequently delayed enforcement by four to eight weeks, often long enough for infringing goods to disappear before authorities could intervene. Decree 186 removes this bottleneck, now requiring only an original or certified copy of the POA. If the document is in a foreign language, a Vietnamese translation is sufficient, provided it is certified by a competent authority or confirmed by the authorized Vietnamese IP representative. Consular legalization and notarization are no longer required. For rights holders, the practical impact is substantial. Administrative enforcement files that previously took weeks to prepare can now be completed in a matter of days, allowing much faster responses in time-sensitive matters such as warehouse raids, border interventions, and trade-fair enforcement. The decree also introduces a useful administrative simplification. Where an original POA has already been submitted to the same enforcement authority and remains valid, applicants may rely on a copy of that earlier submission by identifying the previous case file. This eliminates unnecessary duplication for rights holders pursuing multiple enforcement actions before the same
Read More
July 9, 2026
Recycling, upcycling, and refill-packaging models are now widely promoted as ways to reduce waste, lower carbon emissions, and respond to consumer demand for sustainable products. However, complications arise when these environmentally driven trends intersect with intellectual property law—particularly where reused or altered packaging continues to display third parties’ registered trademarks. Adding to this complexity, Thailand’s draft Sustainable Packaging Management Act aims to introduce new environmental compliance obligations that businesses must navigate alongside existing trademark concerns. Recycling and upcycling packaging may infringe trademark rights, especially in cases not protected by the first-sale doctrine—the principle that a trademark owner’s rights over a particular mark-bearing product end once the owner first sells it. Furthermore, even refill packaging carries legal risk due to specific statutory prohibitions under Thai law. Compounding these challenges, the draft Sustainable Packaging Management Act will impose extended producer responsibility (EPR) obligations on manufacturers and brand owners, requiring them to manage packaging throughout its lifecycle. These overlapping legal frameworks could deter manufacturers from pursuing ESG-aligned business models unless businesses understand how to navigate both trademark and environmental requirements. Under Thai law, this issue remains uncertain because the Trademark Act does not expressly codify the first sale doctrine, also known as the exhaustion of trademark rights. Generally, this doctrine provides that once a trademark owner has lawfully sold goods bearing its trademark, the owner’s right to control further resale of those particular goods is exhausted. The rationale is that the owner has already received commercial benefit from the first authorized sale; therefore, the purchaser should be free to resell or otherwise dispose of the goods. Although the doctrine is not expressly codified in the Trademark Act, Thai courts have recognized it in relation to genuine goods and parallel imports, as seen in a Supreme Court Judgment No. 2817/2543 in which the
Read More
July 6, 2026
Indonesia’s regulation on reporting online intellectual property (IP) infringement provides comprehensive procedural guidance for IP rights holders and their licensees in reporting online infringement complaints. Issued in December 2025 by the Ministry of Law as Regulation No. 47 of 2025 regarding Handling of Intellectual Property Infringement Reports in Electronic Systems, this regulation covers all types of IP rights. It also specifies documentation when reporting infringement, and lays out the procedures for examination, verification, and enforcement actions. Submission of Complaints Complainants may submit reports through the online system of the Directorate General of Intellectual Property (DGIP) or in person at the DGIP office. Complaints may also be filed through an authorized proxy. Under the regulation, complainants are required to provide the following information and documents: Personal details of the complainant; Brief description of the protected work or subject matter (i.e., type of IP and name or address of the infringing website, portal, account, or application, or a link to the location of the infringing content); Complete description of the alleged infringement; Certificate of registration or recordal of the relevant IP; Recordal of IP license agreement, if any; and Other supporting evidence. Verification and Examination Process Upon receiving a complaint, the responsible formality officer may request clarification or additional supporting documents. In the latter case, the complainant must then submit the necessary administrative documents within 14 days of the notification date. Once the documentation is deemed complete and sufficient, the case will be formally registered. Subsequently, the DGIP will establish a verification team to handle online IP violations, which will include the Civil Servant Investigator (PPNS), the Ministry of Communication and Digital Affairs, experts with relevant expertise in IP, and representatives from related associations such as AVISI (Indonesian Video Streaming Association). After examining the report, the team will prepare the Minutes
Read More
June 30, 2026
Customs recordation is an enforcement mechanism in Myanmar that enables intellectual property (IP) rights holders to seek prevention of the cross-border movement of infringing goods. The enactment of Myanmar’s IP laws in 2019 has enabled customs recordation for registered marks and copyrights under the Trademark Law 2019 and the Copyright Law 2019. By contrast, the Patent Law 2019 and the Industrial Design Law 2019 do not provide a practical framework for customs recordation, and accordingly such rights are not subject to the customs recordation regime. Under the Trademark Law 2019, rights holders may apply for customs recordation and may also ask the Customs Department to suspend the release of goods suspected of bearing counterfeit marks. Likewise, the Copyright Law 2019 allows for customs intervention in relation to pirated works. These provisions reflect Myanmar’s gradual alignment with international standards on border measures, although the implementation framework remains at a relatively early stage of development. Customs Recordation Pursuant to the Trademark Law 2019 and the Copyright Law 2019, the relevant authorities have issued customs rules concerning the protection of registered marks and copyrights. In practice, the process generally begins with the submission of an application to the Customs Department together with supporting documentation. This typically includes proof of registration in Myanmar; details of the rights holder, applicant, and any authorized representative; and a comprehensive description of the genuine goods. Product identification materials—such as photographs, packaging samples, and distinguishing features—are particularly important in helping customs officers identify suspected infringing goods. A recordation remains valid for two years from the date of approval. It may be renewed for additional two-year terms, provided that the renewal application is filed within the thirty days prior to expiry for marks and up to thirty days in advance of the expiry date for copyrights, in accordance with
Read More