Thailand: Trademark recovery after bad faith registration: recent ruling offers hope of legitimizing trademark owners
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A common problem with first-to-file trademark systems is that bad faith applicants may be able to file and obtain a registration before the rightful owner seeks to file their own application. In such a case, the registration of the existing mark allows the bad faith owner of the mark to use the mark in the country and to produce and sell products there without being considered an infringer. This situation of “legal infringement” prevents the legitimate owner of the brand from marketing its highly coveted products in the country. However, a recent court ruling in Thailand claims that there is a solution to this problem.
The case concerns a world-famous American clothing company that decided to secure its mark in the Thai market, only to find that there were already multiple registrations of its mark by a single Thai plaintiff. Not only was the word the same, the trademarks used identical fonts, colors and designs. Unsurprisingly, further research revealed that the proprietor had filed Thai trademark applications for various other globally recognized trademarks, indicating a continuing record of bad faith intent. The owner of the American trademark was confident that he could prove his case in court and decided to recover his trademark rights in the country by filing an annulment petition with the Thai Intellectual Property and International Trade Tribunal (IP&IT Court) .
The country’s trademark law allows legitimate owners to take legal action for the cancellation of a trademark registration on the basis of better grounds, provided the trademark has been registered for less than five years. The concept of better grounds is straightforward, referring to the assertion that the true owner of the mark has a more legitimate right to use his own mark than the previous applicant.
However, it was still difficult for the American clothing brand to prove that it had a more legitimate claim in Thailand. Although the brand has a strong international presence, it does not have physical stores or authorized distributors in Thailand. Rather, the brand has highlighted its online sales and extensive marketing over the past decade, and has proven its best brand rights by showing use of its brand on websites and social media, including articles. online from well-known publishers.
It is important to note that the owner of the American trademark has featured earlier issues of Thai magazines showing Thais using his products ten years ago, that is, before the trademark was filed by the Thai owner. The abundant evidence was particularly compelling in light of the history of the registrant of marks of other famous marks.
The IP&IT tribunal ruled that it was unlikely that the Thai registrant could have created the same brand and instead ruled that the Thai registrant, who claimed to be in the business of manufacturing and selling the same products, must have seen legitimate American brand products before filing for trademark registrations. As a result, the court ruled that the owner of the American trademark had a better right to the trademark and ordered the cancellation of the Thai trademark application.
When the proprietor appealed, the Court of Appeal for Specialized Cases upheld the decision of the IP&IT Court, pointing out that the Thai proprietor could not prove his prior use of the mark when it should have been easy to do if his claim of having been in the business of manufacturing and selling the products was true. The owner of the American brand thus overcame the challenges and the cancellation order was maintained.
The decision of the Court of Appeal for specialized cases is not yet finalized, as both parties can still choose to appeal to the Supreme Court. However, the move illustrates a promising solution for legitimate brand owners to secure their brand image and resume their business in Thailand.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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