Recordation system for well-known trademarks abolished

Thailand began accepting applications for the recordation of well-known trademarks in 2005 but, to date, only 75 trademarks have been recorded as well-known marks - a relatively small number compared to the volume of applications filed.

On September 9 2015 the Department of Intellectual Property (DIP) confirmed that it is abolishing the recordation system for well-known trademarks altogether. Under the Notification of Cancellation of Rules of the Department of Intellectual Property Regarding the Recordation of Well-Known Marks (BE 2548), trademark registrars will return all pending applications for recordation, including those that have not yet been examined, those that have been rejected and those that are under appeal after rejection. If an applicant wants to retrieve any evidence that was filed to support an application to record a well-known mark, the applicant must contact the DIP.

If a trademark was recorded as a well-known mark under the previous regulation (ie, the Rules of the Department of Intellectual Property Regarding the Recordation of Well-Known Marks (BE 2548)), this can still be considered by the trademark registrar when examining new trademark applications.

In addition, when examining a mark or reviewing an appeal, trademark registrars may still determine that a mark is well known by following the criteria listed in the current ministerial regulations. The applicant must be able to demonstrate that:

• the trademark has been used by the applicant, or by the applicant’s authorised representative or licensee, either locally or abroad, on goods or services by way of distribution; or

• the trademark has been used, advertised or used by other usual means, continuously and in good faith, to the extent that it is well known among the general public or those in the relevant industry in Thailand, and its reputation for quality is generally known among consumers.

It is unclear whether a new recordation system for well-known trademarks will be established in the future.

Sukontip Jitmongkolthong, Tilleke & Gibbins International Ltd, Bangkok