Cancellation of ‘well-known trademark’ registration in Thailand
Well-known trademarks are marks that have a high degree of recognition in certain areas of trade. They are critical business assets, which can be used and traded.
Well-known trademarks limit the registrability of other trademarks, even if such trademarks are for different types of products. Also, protection against degradation of the well-known trademark is imposed, even if its use (such as on a t-shirt) is on the basis of goodwill towards the owner of the well-known trademark.
Thailand’s Department of Intellectual Property issued a notification in 2005 specifying the procedure to apply for well-known trademark status. Since then, approximately 75 trademarks have gained recognition as well-known trademarks in Thailand. In September 2015, however, such procedure was cancelled.
Well-known trademarks are still referenced under Thai law, per Section 8 (10) of Thailand’s Trademark Act: “A mark, registered or not, which is identical to a well-known mark as prescribed by the Ministerial Notifications, or so similar thereto that the public might be confused as to the owner or origin of the goods.” However, such trademarks are no longer officially recorded as having well-known trademark status. Competent trademark registrars have the discretion to decide on a case-by-case basis whether or not the trademark garners international recognition. Consequently, a trademark may gain well-known trademark status without (i) any formal registration in Thailand and (ii) without the owner of the well-known trademark being officially informed. In terms of these discretionary powers, all trademark registrars (of which there are approximately 20) must assemble together and decide whether or not the trademark in question is widely recognized by the public or not.
Regarding the 75 well-known trademarks already endorsed by the Department of Intellectual Property, their status remains unchanged. As such, any mark similar to these well-known trademarks that is filed or registered in a different class will be rejected on the basis of Section 8 of the Thai Trademark Act.
For more information, contact Mr. Andreas C. Richter at: [email protected].