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.

Attorneys from Tilleke & Gibbins wrote the Thailand chapter for Licensing 2022, a comprehensive guide from Lexology Getting the Deal Through to licensing in 17 countries around the world. Two specialists from Tilleke & Gibbins’ Bangkok office—Alan Adcock, partner and deputy director of intellectual property, and Kasama Sriwatanakul, senior associate—authored the Licensing 2021 Thailand chapter, which covers the following topics: Laws: Unfair Contract Terms Act, Trade Competition Act, pre-contractual disclosure, registration of international licensing, implied obligations, Civil and Commercial Code, Trademark Act, Patent Act, and Trade Secrets Act. Intellectual property issues: Paris Convention for the Protection of Industrial Property, PCT, TRIPs. Contesting the validity of licensor’s IP rights, invalidity and expiry of IP rights, evidence of use, licensing unregistered IP, opposability requirements, sub-licensing, co-owners, trade secrets, and copyright. Software licensing: Perpetual licensing, import/export restrictions, improvements and modifications, user restrictions, and legal developments. Competition law: Trade Competition Act, specific restrictions on licensing agreements, and significant court decisions. Indemnification, disclaimers, and damages: Prevalence and enforceability of indemnity provisions and contractual waivers of damages. Termination: Conditions, indemnity, agency, and impact on sub-licenses. Bankruptcy: Impact of licensee bankruptcy on licensor and vice versa, protection, and rights to terminate. Dispute resolution: Governing law, arbitration, enforcement, injunctions, contractual waivers Royalties and payments: Currency conversion, tax, remittance restrictions, and jurisdiction-specific payments. The Thailand chapter is available below as a PDF. Tilleke & Gibbins also contributed the Vietnam chapter to Licensing 2022. To browse all 17 jurisdictions covered by the guide, please visit the Getting the Deal Through website.

Intellectual property experts from Tilleke & Gibbins were engaged by ARISE+ IPR, a regional support program funded by the European Union and implemented by the European Intellectual Property Office, to craft a series of IP enforcement guides for Southeast Asian countries, aimed at raising local awareness of the importance of IP protection. The five-year, EUR 5.5 million ARISE+ IPR program supports regional integration through IP cooperation and aims to upgrade national IP systems for creation, protection, utilization, administration, and enforcement to be in line with international best practices and standards and the strategic objectives of the ASEAN Intellectual Property Rights Action Plan 2016-2025. The guides were developed by Tilleke & Gibbins’ lawyers in cooperation with the IP offices of each participating country, and cover issues related to trademarks, industrial designs, and geographical indications. Each guide was produced in a compact leaflet form in English as well as the local language, and is considered an official publication of the respective national IP office. The guides can be accessed from the ARISE+ IPR site (under “Leaflets, brochures and booklets”), or by clicking on the links below: Cambodia: English | Khmer Indonesia: English | Bahasa Indonesia Thailand: English | Thai Vietnam: English | Vietnamese