Thailand Law Library

by Thailand Lawyer

PART 1: Trademark Applications

In the event registered or pending trademarks of the same owner covering goods of the same class or different classes but the same character so similar to one another that the public might be confused or misled as to the owner or origin of the goods if used by different persons, the Registrar shall require the trademarks to be registered as associated trademarks and shall in writing notify the applicant without delay.

If, in the opinion of the Registrar:

1. any unessential part of a trademark applied for is not registrable under Section 6; or
2. any application for registration is contrary to Section 9 or Section 10 or is not in accordance with the rules and procedures prescribed in the Ministerial Regulations issued under Section 11, the Registrar shall require and, without delay, in writing notify the applicant to amend the application within ninety days from the date of receipt of the order.

If, in the opinion of the Registrar, the entire trademark or any essential part thereof is not registrable under Section 6, the Registrar shall refuse registration and shall, without delay, in writing notify the applicant of the order giving the grounds therefor.

If, in the opinion of the Registrar, a trademark considered as a whole is registrable under Section 6 but contains one or more parts which are common to the trade for some types or classes of goods such that no applicant should have exclusive right thereto or which are not distinctive, the Registrar shall make either of the following:

1. order the applicant, within ninety days from receipt of the order, to disclaim exclusive right to use of such part of the trademark;
2. order the applicant, within ninety days from receipt of the order, to make such other disclaimer as the Registrar may consider necessary for the purpose of defining the rights of the owner under such registrations.

For the purpose of implementing the provisions of the first paragraph, the Registrar shall have the power to declare by notification what is common to the trade with respect to certain types or classes of goods. The Registrar shall, without delay, in writing notify the applicant of any order under the first paragraph giving the grounds therefor.

The applicant may appeal against the order of the Registrar under Sections 14, 15, 16 and 17 to the Trademark Board within ninety days from receipt thereof. Decisions of the Trademark Board shall be final.

If the Board has decided that an order of the Registrar under Section 14 is correct, the Registrar shall proceed to process such application. If the Board has decided that an order of the Registrar under Section 15 or 17 is correct, the applicant shall comply with the order of the Registrar within ninety days from receipt of the decision of the Board. If the Board has decided that an order of the Registrar under Section 14, 15, 16 and 17 is incorrect, the Registrar shall proceed to process such application.

If the applicant does not appeal under the first paragraph of Section 18, and does not comply with an order of the Registrar under Section 15 or 17, as the case may be, or if the applicant files an appeal under the first paragraph of Section 18, but does not comply with Section 18, paragraph three, the application shall be deemed abandoned.

Subject to Sections 21, 22, 23, 24, 25, 26, 35 and 41, where several applicants file applications for registration of trademarks which in the opinion of the Registrar are identical or so similar that the public might be confused or misled as to the owner or origin of the goods and the applications cover goods in the same class or goods in different classes having, in the opinion of the Registrar, the same character, the prior applicant shall be entitled to be registered as the owner.

If, in the opinion of the Registrar, the identical or similar trademarks under Section 20 are all registrable under Section 6 and the applications are in conformity with the provisions of this Act, the Registrar shall order the applicants to comply with Section 24 and shall inform the applicants in writing without delay.

An applicant who does not agree that his trademark is identical with or similar to other trademarks under Section 20, may appeal against the order of the Registrar under the first paragraph to the Board within ninety days from receipt of the order. In such case, Section 18 and 19 shall apply mutatis mutandis.

If, in the opinion of Registrar, one or more of identical or similar trademarks under Section 20 fall under Section 15(1) or (2) or Section 17 but others are registrable under Section 6 and the applications are in compliance with the provisions of this Act, the Registrar shall order the applicants of the trademarks which fall under Section 15(1) or (2) or Section 17 to comply with Section 15 or 17, as the case may be, and shall delay the registration of the registrable trademarks and the processing of the duly filed applications. The Registrar shall, without delay, notify the applicants in writing. In such a case, the provisions of Section 21 paragraph two shall apply mutatis mutandis.

If it appears that an applicant whose trademark is found by the Registrar to fall under Section 15(1) or (2) or Section 17 has complied with the order of the Registrar under Section 15 or has filed an appeal under Section 18 paragraph one and the Board has decided that the order of the Registrar is incorrect, the Registrar shall order the applicant and the applicants whose applications have been delayed under the first paragraph to comply with Section 24 and shall without delay notify the applicants thereof in writing.

If it appears that all of the applicants whose trademarks found by the Registrar to fall under Section 15(1) or (2) or Section 17 have abandoned their applications under Section 19:

1. In the case where there are several applications which have been delayed under the first paragraph, the Registrar shall order the applicants to comply with Section 24 and shall without delay notify the applicants in writing;
2. If there is only one application which has been delayed under the first paragraph, the Registrar shall order the publication of that application under Section 29.

If the Registrar finds that all of the applications for identical or similar trademarks under Section 20 fall under Section 15(1) or (2) or Section 17, the Registrar shall order the applicants to comply with Section 15 or Section 17, as the case may be, and shall without delay notify the applicants in writing and Section 21 paragraph two shall apply mutatis mutandis.

If it appears that two or more applicants have complied with the order of the Registrar under Section 15 or 17 or have appealed under Section 18 paragraph one and the Board has decided that the order of the Registrar is not correct, the Registrar shall order the applicants to comply with Section 24 and shall without delay notify the applicants in writing. But if it appears that only one of the said applicants has complied with the order of the Registrar under Section 15 or17 or has appealed under Section 18 paragraph one and the Board has decided that the order of the Registrar is not correct, the Registrar shall order the publication of that trademark application under Section 29.

Within ninety days from the date of receipt of the order of the Registrar under Section 21 paragraph one, Section 22 paragraphs two or three (1) or Section 23, the applicants shall agree as to which one shall be the sole owner of the trademark and any one of them shall inform the Registrar in writing within such period whether or not agreement has been reached.