Most brand owners believe that, after registration, a trademark is automatically safe. But Thai trademark legislation imposes continuous responsibilities upon trademark owners.
Non-observance of the same may leave even long-registered trademarks vulnerable to cancellation. The most common and most frequently disregarded risk is non-use cancellation.
What does this mean?
Thai trademark law states that a registered trademark can be cancelled if it has not been used in Thailand for 3 years. This is from when the cancellation request was submitted. As the owner of the trademark, it is upon you to demonstrate that it has been in use. This implies that registration alone is not sufficient.
What is considered ‘’trademark use’’ in Thailand?
Effective trademark protection in Thailand requires more than filing and renewal. Your registered mark must reflect actual commercial activity. The courts and authorities are inclined to scrutinize whether the trademark has been applied in a practical commercial context.
In general, qualifying use consists of:
- Actual sales of goods or services in Thailand.
- Application of the mark on packaging, labelling, or advertising materials.
- Business operations targeting the Thai market.
Therefore, usage of a trademark on internal papers, or insignificant activity only to maintain registration, might not be enough. You have to demonstrate that the mark has a practical use in commerce.
Why your registered mark may be under threat
Business realities shift, and this makes many trademarks vulnerable. Maybe you registered a mark, then experienced late entry, suspension of business, or a change in branding approach. These decisions make business sense. But they are legally risky.
Poor record-keeping is another similar problem. You may have been using your trademark. But you might not be able to prove it in the future. So, you should keep evidence, including:
- Invoices
- Marketing materials
- Distribution records
- Dated advertising, etc.
These documents are important in cancellation proceedings.
Competitors often use the non-use cancellation law to clear the register so they can file their own. For instance, your mark might interfere with the registration of another party. If you are unable to show use cases, the registration can be disputed and cancelled.
Seeking legal expertise
Non-use cancellation is one of the domains where the results vary greatly according to the level of evidence, legal context, and local interpretation. What can be considered sufficient use is not always clear, especially where foreign businesses are involved, or the mark is a service mark.
Most brand proprietors seek out a local intellectual property attorney or IP specialist in Thailand. They can help to organize use, documentation, and portfolio in a way that minimizes the risk.
Other ways to minimize your risk
You can protect your trademark in Thailand with these measures:
- Start actual commercial use as early as possible.
- Keep regular records of utilization in Thailand.
- Periodically check your trademark portfolio to discover dormant marks.
- Match registered goods and services and actual business activity.
Wrapping up
Knowing about non-use cancellation laws will allow you to transform a potential hidden liability into a legal liability that you can handle. Registration will grant you rights. But you will achieve further protection by exercising your trademark rights.