Prior rights derived from trademark foreign registration and use: changing trends in Thailand

In Thailand, trademark protection is granted upon successful registration with the Department of Intellectual Property (DIP). This requirement is outlined in Section 6 (3) of the Thailand Trademark Act B.E. 2534 (1991): “To be registrable, a trademark must (3) not be the same as or similar to a trademark registered by another person.”

The owner of a registered trademark has superior rights to the trademark. Meanwhile, even in cases where a trademark application is pending, the law grants prior rights to the first applicant who files a trademark application. This principle is outlined in Section 20 of the same Act: “Where several applicants file applications for registration of trademarks, if the Registrar finds that those trademarks have any of the following characteristics [i.e. identical or similar], he shall proceed with the application first filed and inform the subsequent applicants in writing to await the processing of the application filed before (…).”
 
This legal framework ensures that the rights to a trademark are granted based on the principle of first-to-file, highlighting the necessity of timely registration to obtain exclusive protection.
 
However, the law further indicates that any person who believes they have a superior title to the trademark than the applicant may file an opposition against the trademark application during the publication period, in accordance with Section 35 of the Act. Similarly, registered trademarks may be subject to cancellation by any person who is of the opinion that any trademark is contrary to public order or good morality or to public policy under Section 62, which covers trademarks registered in bad faith. This type of cancellation can be filed at any time before the Trademark Board.
 
Whether in opposition or cancellation proceedings under the aforementioned provisions, the opponent or the petitioner must establish their rights to the disputed trademarks, which typically involves demonstrating prior rights. The Trademark Board previously determined that prior rights to trademarks were based solely on a prior application or registration in Thailand, in accordance with the law. When trademark applications were opposed or trademarks were canceled by a third party, decisions were made without considering prior use or registration outside the country. This practice could be traced back to the now outdated Supreme Court jurisprudence derived from Decision No. 4540/2533. The decision held that the plaintiff’s trademark use outside Thailand, along with foreign trademark registrations, were insufficient to establish superior rights. The Court only recognized superior rights if the goods bearing the disputed mark were sold in Thailand before the defendant’s trademark registration date. Without such proof of prior use in Thailand, the Court denied the plaintiff’s claim of superior rights and dismissed the case.
 
Yet, recently, in response to an increase in bad faith registrations by domestic and foreign companies alike, the Trademark Board revised its consideration guidelines regarding prior rights to a trademark. Under the current guidelines, use or registration of the trademark outside Thailand, before the filing date of the opposed or canceled trademark, is taken into account when determining whose party has better rights to the disputed trademark. The Board’s current practice reflects the abandonment of the outdated jurisprudence and the shift towards the Supreme Court’s somewhat novel legal framework regarding trademark ownership. This framework recognizes prior use or registration of a trademark outside of Thailand when determining superior rights in a trademark. A key example is the Supreme Court’s Decision No. 6921/2537 (JACKSON vs JACKSONG), where the Court recognized the plaintiff’s superior claim to its mark based on prior use outside Thailand. In this case, the Court ruled in favor of the plaintiff, despite their mark not being registered in Thailand, because the plaintiff’s authorized distributor had used the mark internationally before the defendant filed for registration of a similar mark.
 
Another recent example is the Supreme Court’s Decision No. 2553-2554/2561. In this case, the Court held that the plaintiff acted in bad faith when filing the trademark applications based on the defendant’s prior use and registrations of the trademark outside Thailand. It is noteworthy that the Court’s decision was also based on the fact that the plaintiff, a former licensee of the trademark owner, terminated the licensing agreement immediately upon the registration of its own applications in order to take advantage from the defendant’s trademark.
 
Needless to say, the disputed trademark must be identical or sufficiently similar to that of the opponent or petitioner, ensuring that the challenge is based on legitimate prior rights rather than minor resemblances. According to decisions by the Trademark Board, if the disputed trademark is identical to an existing trademark and is used for identical or related goods or services, prior rights will be granted to the party that has previously used or registered the trademark abroad. However, it is not clear cut for trademarks that are phonetically identical but differ in appearance, for instance if the trademark was registered in plain font in Thailand and using stylized letters overseas. In this type of cases, the opposition or cancellation may be rejected, as bad faith is not manifest.
 
These revised criteria benefit brand or trademark owners whose trademarks have been registered in Thailand in bad faith. Previously, such owners faced significant challenges in reclaiming their rights, as Thai authorities primarily considered domestic applications and registrations. However, with this revised approach, prior use or registration of a trademark outside Thailand may serve as supporting evidence when disputing a superior claim to the trademark or when arguing that the registration is contrary to public order, good morals, or public policy.