There is a provision of refusal against a trademark application in Thailand in two situations during the registration process. The first is an “objection”, whereas the second is the “opposition”. This is the default process by which one can raise objections or opposition during the Trademark Application Process in Thailand. But what if you have to challenge a trademark? This article will explain it in detail.
The Trademark Gazette publishes trademark applications that are acceptable for registration by the Registrar after inspection. Under Section 35 of the Thai Trademark Act B.E. 2534 (1991), one can lodge an opposition with the Trademark Office, Department of Intellectual Property. Moreover, it must be done within 60 days after the publication date.
Assumptions and Procedure
Grounds of Opposition/Objection
(1) Better rights or a better title
(2) Lack of distinctiveness
(3) Prohibited mark
(4) Identical or confusingly similar to a prior mark(5) The application does not conform to any provision of the Trademark Act
Eligibility to file an Opposition
For the first ground, i.e. better rights or better title, the person who thinks he has better rights may file an opposition. For the remaining grounds, any person may file an opposition.
Deadline to file an Opposition
The deadline to file a notice of opposition is 60 days from the publication date. The deadline to file a notice of opposition cannot be extended.
Opposition Procedure
A notice of opposition must be filed with the Trademark Office, along with all supporting documentation, using the form required by law. The cost of filing an opposition is 2,000 Baht.
Filing Process
To file an opposition on behalf of the opponent, a notarized Power of Attorney is required.
The opponent may ask for a 60-day extension to present more evidence in support of his or her case.
The Registrar must serve a copy of the opposition to the applicant by registered mail after it is filed. The applicant has 60 days to file a rebuttal statement with the Registrar from the date of receipt. A rebuttal statement does not have to be filed for a fee. The application will be considered abandoned if no counter statement is filed within 60 days. There is no way to extend the deadline for filing a reply statement.
The applicant might ask for a 60-day extension to provide more evidence in support of the counterclaim.
Review Process
The Registrar will review both parties’ arguments and deliver a ruling once they have filed their notice of opposition and counter-statement, as well as their supporting documentation. Moreover, it takes roughly 10 months for a judgement to be issued in simple situations with little proof. However, a judgement in difficult cases or oppositions involving large amounts of evidence could take 16 months or longer. Both parties will receive a written decision.
Disagreement Process
If a party disagrees with the Registrar’s decision, they have 60 days from the date of receipt of the Registrar’s decision to submit an appeal with the Trademark Board. Additionally, they have to pay an official fee of 4,000 Baht to file an appeal with the Trademark Board.
The appellant may ask for a 60-day extension to present further evidence in support of his or her appeal. However, the appeal is ex parte, which means the other party does not have permission to respond.
The Trademark Board will review the appeal and give a decision after its filing. However, it takes roughly 14 months for a decision to be issued in simple situations with little evidence. Moreover, a judgement in difficult cases or oppositions involving large amounts of evidence could take 20 months or more. Both parties will receive a written decision.
A party may disagree with the Trademark Board’s decision. In that case, they have to submit an appeal within 90 days from the date of receipt of the decision. They have to do this with the Intellectual Property and International Trade Court (IPIT Court). After filing the appeal, they have to wait for the announcement of judgement within roughly 12-16 months.
One can challenge the IPIT Court’s decision at the Court of Appeal for Special Cases. Parties in dissatisfaction with the Appeal Court’s decision must request for hearing of their case by the Supreme Court.
Remedies available
In Thailand, the only remedy available in an opposition case is the rejection to register a mark. The Registrar and the Trademark Board do not award attorney’s fees and costs. The court can award attorney’s fees, although they are usually quite minimal. However, it does not reflect the actual fees.
Recommendation
It is preferable to file an opposition to a trademark. Moreover, opposing a trademark is easier and less expensive than allowing it to progress to registration and then canceling the mark later.
In order to conduct this process, the applicant must have genuine and strong legal support. Experts in Thailand like Konrad Legal can help in the process of challenging a Trademark. For more details or to commence the process, mail us at [email protected]. We will also help if you need support in the Trademark Application process in Thailand.
