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.