Preservation of rights after expiration of trademarks in Thailand

Applicability of Section 27 of the Trademark Act

Trademark renewal deadlines are typically considered absolute in most jurisdictions. However, Thailand’s Trademark Act contains provisions that may extend protection beyond the statutory renewal period in certain circumstances. This article examines how Section 27 of the Trademark Act can preserve rights for trademark owners even after their registration has lapsed, as illustrated by a recent Trademark Board decision that challenges conventional assumptions about expired trademark rights.
 
Legal provisions on trademark validity in Thailand
 
The validity of a trademark in Thailand is ten years from the filing date (equivalent to the “registration date” in practice). Renewal applications may be submitted within three months prior to the expiry date; late filing is permitted within six months after the expiry date with a surcharge of 20% of the official fees due.[1]
 
Beyond this period, Section 56 of the Trademark Act appears to be unequivocal: “Where a trademark owner does not apply for renewal of a registration within the period specified (…), the registration shall be deemed cancelled.” One could thus conclude that a trademark owner does not retain any rights over their lapsed trademark.
 
It could also be inferred that another party may then apply for registration of the lapsed trademark and become its sole and exclusive owner. However, Section 27 of the Trademark Act stands in the way of this assumption, as it provides that when a trademark is found to be similar to a prior mark, “if the Registrar finds there has been honest concurrent users or special circumstances making it proper to do so, they may grant registration of such identical or similar trademarks of several owners subject to such conditions and limitations as to the mode or place of use or such other conditions and limitations as he or she may think fit to impose.”
 
Recent Trademark Board decision: a case study
 
In a recent case, the Trademark Board used Section 27 to allow the registration of a mark that had previously lapsed even though another party had registered a similar mark in the meantime, thus prolonging the trademark owner’s rights beyond the statutory validity of the trademark registration.

The facts of the case are as follows:

● A three-syllable word mark was filed by Party A and registered in 2001, in class 9. The mark was renewed in 2011 but the owner missed the subsequent renewal deadline in 2021.
● In 2022, Party B obtained the registration of the same three-syllable word mark using a different font, in class 9, for identical goods.
● Party A refiled their trademark a few months later, in 2022, and it was objected for being similar to Party B’s trademark.
● Party A then filed an appeal against the objection, which was overturned by the Trademark Board. The Board allowed the registration of the mark pursuant to Section 27 of the Trademark Act, considering that Party A provided sufficient evidence demonstrating its continuous use.
● In the meantime, Party B filed a new application for the same trademark in 2023, in class 9 but with an extended list of goods. Their application was rejected by the registrar for similarity to Party A’s trademark filed in 2022. Party B also filed an appeal against the rejection, which is still pending to date.

Considering that Party B already owns an identical mark for similar goods in the same class, it is unlikely that the registration of this second mark would be denied due to Party A’s trademark.
 
Procedural safeguards for subsequent applicants
 
It could seem that this practice is more favorable to the owner of a mark who did not diligently renew it within the statutory timeline. Yet, the “new” owner (in the example, Party B), has a few tools at their disposal. First, when the Board or registrar issues such a decision based on Section 27, they must notify the new owner, who will have sixty days to respond to the notification. In addition, if the Board confirms the registration of the subsequent mark, it will be published; the new owner may then file an opposition during the 60-day publication period.
 
Conclusion
 
This case demonstrates that trademark rights in Thailand may extend beyond formal registration validity when continuous use can be proven. Section 27 of the Trademark Act provides the Trademark Board with discretionary power to recognize honest concurrent use and special circumstances, effectively creating a safety net for trademark owners who miss renewal deadlines but maintain active use of their marks. For trademark practitioners and businesses operating in Thailand, this decision underscores two critical points: first, continuous use of a trademark can preserve rights even after administrative lapses; and second, parties acquiring seemingly available lapsed marks should conduct thorough due diligence on prior use before investment. While renewal deadlines remain important, this interpretation of Section 27 adds nuance to trademark strategy in Thailand, balancing the need for administrative clarity with the practical realities of established market presence and consumer recognition.