Thailand Law Library

by Thailand Lawyer

Part: 4 Renewal and Cancellation of Trademark Registration

The owner of a trademark may request the Registrar to cancel his trademark registration but in the case where the trademark is the subject of a registered license agreement, the consent of the licensee shall be required unless the license agreement provides otherwise.

Requests for cancellation of a registered trademark under the first paragraph shall be in accordance with the rules and procedures prescribed in the Ministerial Regulations.

If it appears to the Registrar that the owner of a registered trademark violates or fails to comply with the conditions or restrictions prescribed by the Registrar upon registration, the Registrar may order the cancellation of the trademark registration.

If the owner or his agent ceases to have in Thailand the office or address as registered, the Registrar shall order the cancellation of the trademark registration.

If the Registrar has a reasonable cause to believe that the owner of a registered trademark or his agent has ceased to have the office or address in Thailand as registered, the Registrar shall notify the owner or his agent in writing at the register office or address to give a written explanation to the Registrar within fifteen days from the date of receipt of the notification.

If no reply is received within the period prescribed in paragraph two, the Registrar shall publish that the trademark is to be cancelled in accordance with the procedures prescribed in the Ministerial Regulations.

If still no reply is received within fifteen days from the date of publication under paragraph three, the Registrar shall order the cancellation of the trademark registration.

An order to cancel a trademark registration under Section 55 paragraph two, Section 58 or 59 paragraph one, stating the grounds therefore, shall be notified in writing to the owner without delay.

The trademark owner may appeal the Registrar’s order under the first paragraph to the Board within ninety days from the date of receipt of the notification. If no appeal is filed within the period prescribed, the order of the Registrar shall be deemed final.

Decisions of the Board under paragraph two shall be final.

An interested person or the Registrar may petition the Board to order the cancellation of any trademark if it appears that at the time of registration the trademark:

1. was not distinctive under Section 7;
2. contained or consisted of a prohibitory characteristics under Section 8;
3. was identical with a trademark registered by another person for goods of the same class or of different class with the same character;
4. was so similar to a trademark registered by another person that the public might be confused or misled as to the owner or origin of the goods for goods of the same class or of different class with the same character.

Any person who is of the opinion that any trademark is contrary to public order or good morality or to public policy may petition the Board to cancel the trademark registration.

Any interested person or the Registrar may petition the Board to cancel a trademark registration if it is proved that at the time of registration the owner of the trademark had no bona fide intention to use the trademark with the goods for which it was registered and in fact there was no bona fide use whatsoever of the trademark for such goods or that during the three years prior to the petition for cancellation there was no bona fide use of the trademark for the goods for which it was registered unless the owner can prove that such non-use was due to special circumstances in the trade and not to an intention not to use or to abandon the trademark for the goods for which it was registered.

After the receipt of a petition under Section 61, 62, or 63, the Board shall, in writing, notify the owner and licensees, if any, to submit a reply to the Board within sixty days from the date of receipt of the notification of the Board.

An order of the Board to cancel or not to cancel a trademark registration under Section 61, 62, or 63 shall, without delay, be notified in writing to the petitioner for cancellation, the owner of the trademark and licensee, if any.

The petitioner for cancellation, the trademark owner or licensees may appeal the order of the Board under the first paragraph to the court within ninety days from the date of receipt of the notification. If no appeal is filed within the prescribed period, the order of the Board shall be deemed final.

Any interested person or the Registrar may petition the Court to cancel a registered trademark by showing that at the time of filing the legal action the trademark had become common to the trade for certain kinds or classes of goods to the extent that to the trade or in the public eye the trademark had lost its meaning as a trademark.

Within five years from the date of the Registrar’s order to register a trademark under Section 40, any interested person may petition the court to cancel a trademark registration by showing that he has better rights in the trademark than the person registered as its owner.

If the petitioner can prove that he has better rights for only some of the goods of the class in which the mark has been registered, the court shall restrict the registration to the goods that the petitioner cannot prove that he has better rights than the trademark owner.