First-to-File and First-to-Use Elements THAILAND

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1 First-to-File and First-to-Use Elements THAILAND 1. Trademark Act, Basic Principle (1) The first-to-file and the first-to-use By Prasantaya Bantadtan ISSUE 1: Which of the first-to-file and the first-to-use is adopted by your Trademark Act, in relation to the occurrence of a trademark right? ANSWER: The Thai trademark law has adopted first-to-file principle. Thus, when applications for registration of trademarks that are similar or identical to each other, the first-to-file principle will be adopted. The prior applicant will be entitled to register as the owner of the trademark. Section 20 of the TMA states where several applicants file applications for registration of trademarks which are identical or similar, the prior applicant shall be entitled to be registered as the owner. However, if the Trademark Registrar is of a view that the applicants who file applications for registration of trademark that is identical or similar have concurrent used their trademarks in good faith, the Trademark Registrar may allow registration by more than one owner of a trademark which is identical with or similar to a registered trademark or to trademarks applied for under pending applications in respect of goods in the same class or goods in different class (Section 27 of the TMA). (2) Actual evaluation on the first-to-register and the first-to-use ISSUE 2: How does your trademark industry generally evaluate your country s system of the Trademark Act? Is it positive or negative? What is the ground or reason for such evaluation? ANSWER: The current TMA has been criticized that it fails to meet international IP standards. There are some defects under the current trademark laws and practice, i.e. the scope of trademark protection, time frame for registration, inefficient of examination. Thus, the DIP has now been attempting to revise the current TMA to redress those defects and to accommodate the international trademark registration under the Madrid system. There are two draft amendments which are under their way to become effective. We opine that if these two draft amendments pass as the laws, they will expand and provide efficient scope of trademark protection, facilitate and speed up the trademark registration process in Thailand. 2. Confirm on the Use of a Trademark (1) Principle used in confirming the use of a trademark ISSUE 3: Does your jurisdiction adopt any system of checking the use states of a trademark? If so, what is your checking system from the following examples:- 1

2 (a) Submission of use evidence (b) Checking the intent to use (c) Both ANSWER: No. We do not have a checking system on use of an applied trademark or a registered trademark. The applicants can file applications for registration of trademarks without submitting evidence of use. Neither evidence of use is required to be submitted at the time of renewal of the registered trademarks. (2) Submission of use evidence and Confirmation on intent to use ISSUE 4: In which stage of the following is use evidence/confirmation on intent to use requested to be submitted? (i) Filing, (ii) examination, (iii) registration, (iv) upon the lapse of certain period after registration, (v) renewal ANSWER: We do not have a checking system on use of trademark. Please refer to our answer under ISSUE 3. ISSUE 5: Is the declaration of use required for all of the designated goods or is it sufficient to submit the declaration of use for one product per class or group/code of similar goods? ANSWER: We do not have a requirement to submit a declaration of use und the TMA. 3. Protection of Non-Registered Trademarks in Use (1) Protection of well-known trademarks ISSUE 6: If a non-registered trademark is widely used and goodwill is formed thereon, thereby becoming a well-known mark, does your trademark law allow enforcement of the non-registered well-known mark, beyond merely preventing others from registering the same or similar mark? ANSWER: Yes. Prior use of a trademark to the extent that it is well known can prevent any other person from registering an identical trademark or confusingly similar trademark although the goods or the services of the well-known trademark and those of the identical or confusingly similar trademark are not the same or related. Section 8 (10) of the TMA provides that a trademark which is identical with or confusingly similar to a well-known mark, registered or not, pursuant to the rules prescribed by the Minister to the extent that the public might be confused as to the owner or origin of the goods shall not be registered. (2) Protection of unregistered trademark that is known only in foreign countries ISSUE 7: Under your trademark law, is there any mechanism to protect a trademark that is not registered in your country and known only in foreign countries? ANSWER: Yes. 2

3 Under the TMA - Right of action against passing off goods. Although an unregistered trademark in Thailand cannot be used as the basis of taking a trademark infringement action but it can be used as a ground of claim against a passing off goods under the second paragraph of Section 46 of the TMA. Section 46 of the TMA provides that No person shall be entitled to bring legal proceedings to prevent or to recover damages for the infringement of an unregistered trademark. The provision of this Section shall not affect the right of the owner of an unregistered trademark to bring legal proceeding against any person for passing off goods as those of the owner of the trademark. - Right to cancel registered trademark. Prior use of an unregistered trademark is recognized for cancellation of a registration of an identical or confusingly similar trademark pursuant to Section 67 of the TMA if the owner can prove that he has a better right from his prior use of his trademark. Section 67. Within five years from the date of the Registrar s order to register a trademark under Section 40, an interested person may petition the court to cancel a trademark registration upon a showing that he has better title than the person registered as its proprietor. If the petitioner shows better title for only some of the goods of the class in which the mark has been registered, the court shall restrict the registration to the goods for which better title has not been shown. Under Panel Code - Right to take criminal action against unauthorized use. If a trademark is used in Thailand or abroad but is not registered in Thailand, its owner has the right to take a criminal action against its unauthorized use by any other person pursuant to Section 272 (1) of the Penal Code, which provides that whoever uses the name, figure, device or wording used in the carrying on the trade of another person, or cause the same to appear on goods, packing, coverings, advertisement, price lists, commercial letters or the like in order to make the public believe that it is the goods or trade of such other person shall be published with imprisonment not exceeding one year or a fine not exceeding two thousand baht, or both. The owner of the unregistered trademark can take the criminal action himself or file a police complaint against the infringer so that the police can seize the infringing goods and arrest the infringer before the public prosecutor can file a criminal action in court against the infringer. - Right to take criminal actions against counterfeiting. If a trademark used and registered abroad or only registered abroad but is not registered in Thailand, its owner is entitled to take a criminal action against any other person who forges or imitate the said trademark in Thailand or any other person who imports counterfeit goods or sells or offers to sell them in Thailand (Section 273, 274 and 275 of the Penal Code). (3) Acquisition and loss of distinctiveness acquired through use ISSUE8: Does your country have a system under which a trademark having no 3

4 distinctiveness is granted registration, if it acquires distinctiveness (secondary meaning) as a result of being used extensively for a long time? ANSWER: Yes. Section 7, paragraph three of the TMA allows the applicants to submit evidences of use to prove that the applied trademarks have acquired destructiveness from use. To determine that the marks have acquired distinctiveness from use, the trademarks must be extensively used, become well-known in Thailand and be the same trademarks as filed for registration (the Notification of the MOC re: Proof of Distinctiveness Pursuant to Section 7 Paragraph 3 of the TMA dated 11 th October 2012). Time for submitting evidences of use - at the time of filing the applications for the applications filed after 11 th October 2012 (The Notification of the Ministry of Commerce re: Proof of Distinctiveness Pursuant to Section 7 Paragraph 3 of the Trademark Act B.E as amended dated 11 th October 2012). A late submission of evidences of use is allowed. - at the time of filing the applications or at the time when the Trademark Registrar is of view that the applied trademarks lack of distinctiveness and ordered the applicants to submit evidences of use to prove that the applied trademarks have acquired distinctiveness from use for application filed before 11 th October The evidence of use can be copies of invoice, bills of lading, purchase orders, advertising documents for goods/services, factory license, advertisements, sample of goods, etc. It is not required that the evidences of use must be for all designated goods/services. It can be evidences of use for one goods/products designated under the application. If no evidence of use is submitted or if evidences filed are not sufficient to prove that the trademark has acquired distinctiveness, such a trademark will be rejected for registration whereby the applicant can file an appeal against such order with the Trademark Board. If the applicants submit false evidences of use, they will be liable to imprisonment of not exceeding 6 months or a fine of THB10,000, or both (Section 107 of the TMA). On the contrary, if trademarks lose distinctiveness due to extensive use after being registered, any interested person or the Registrar may file a petition with the Court to cancel registered trademarks on the ground that such trademarks have become common to the trade or in the public eye the trademark has lost its meaning as a trademark. (4) Prior Use ISSUE 9: If your unregistered but prior-used trademark conflicts with another s registered trademark, will your country grant you a legal right to the continued use of your trademark? ANSWER: Yes, provided that the unregistered trademark must be used in good faith prior to the registration date of prior registration of the same or confusingly similar trademark. Prior Use of a trademark in Thailand or outside Thailand gives protection to the trademark and right to use it in Thailand although the trademark is not registered in Thailand. If a 4

5 trademark is used in good faith extensively and for a long time to the extent that the trademark has become will-known, the protection affordable for the mark is even better. The owner of an unregistered well-known mark can cancel prior registration of the same or confusingly similar trademark. Below are the requirements for the acknowledgement of such a prior-use:- - Use must be commenced before registration date and the date of first use of prior registered of the same or confusingly similar trademark of another party - Use must be extensively used - Use must be for a long time to the extent that the mark has become well-known mark 4. How Non-Used or Improperly-Used Trademarks are treated (1) Non-use cancellation action ISSUE: Does your country have provisions against a registered mark not used for a certain period? What are the minimum years of non-use in order to successfully cancel a registered trademark? ANSWER: Yes. According to Section 63 of the TMA states that any interested person or the Registrar may petition the Trademark Board to cancel a trademark registration if it is proven that during the 3 years prior to such petition there was no bona fide use of the trademark for goods for which it was registered. This means that a registered trademark which has not been used for 3 consecutive years can be subject to a cancellation action based on non-use. ISSUE 11: In a non-use cancellation action, does the trademark owner bear the burden of proving use of the registered mark? ANSWER: No. The burden of proof lies with the petitioner to prove non-use. The owner of the registered trademark has no burden to defend such non-use unless the petitioner can prove that the registered trademark has not been used. In practice, it appears that there is a presumption of intent to use once a trademark is registered. As a result, the TMB tends to conclude that the owner of the registered trademark intends to use the mark although he/she does not respond to the cancelation petition and that the mark should therefore remain registered. For this reason, it would be very difficult for the petitioner to prove that one mark has not been used. In Most of the cases, the petitioners file market surveys as proof of non-use and the Trademark Board views that they are not sufficient enough to prove of nonuse. There is no criteria for the TMB to determine what evidence and how much evidence to be submitted in order to prove of non-use. In the WALPAMUR case [Trademark Board Decision No. 30/2543, Dec. 12, 2000], for instance, despite market surveys submitted by the petitioner as evidence of non-use, the Trademark Board still held that the petitioner fell short of proving its burden where the proprietor had not even filed a response. The proprietor, therefore, have no burden of proof unless the petitioner can prove against such presumption. We opine that this would cause a difficulty for the petitioner to cancel a trademark and it is unrealistic and not effective proven procedure of non-use. 5

6 The proprietor must use the trademark in the exact same manner of style, shape, form and content as the registered one. Otherwise, it is not considered as use of such trademark and that such registered trademark can be subject to a cancellation action based on non-use [Supreme Court Judgment No. 2044/2552]. (3) Improper-use cancellation action ISSUE 12: Does your country have provisions that prevent the improper use of a trademark, such as using a changed/modified version of a registered trademark after its registration? ANSWER: No. But an improper use can be a ground for cancellation based on non-use. The Court rules that use of the mark must be exactly in the way of its style, shape, form or content as registered, otherwise it will not be considered as use and that the mark can be subject to a cancellation of non-use [Supreme Court s Judgment No /2551]. We advise that if the owner of the mark wants to use a modified version of a registered trademark, a new application for registration of such modified version should be filed before commence use. Below are requirement for filing a cancellation action under Section 63 of the TMA:- - An interested person or the Registrar may petition - A petition must be filed with the Trademark Board - the petitioner must prove that at the time of registration the owner of the registered trademark had no bona fide intention to use the registered trademark with goods for which it was registered and in fact there was no bona fide use of such trademark or during the 3 years prior to the petition, there was no bona fide use of the trademark for goods which it was registered. (4) Exercise of a trademark right of non-use trademark ISSUE 13: Please indicate if your trademark law provides remedy for injunction ( I ), compensation of damages ( D ) or criminal action ( C ), based on a registered trademark that was actually not used. ANSWER: C. Under the TMA, the owners of the registered trademark (whether used or not use) can enforce their trademark rights against the other party who uses the same or similar trademark on the following grounds (1) Counterfeiting of Trademark: Section 108 of the TMA provides that:- Section 108. Any person who counterfeits a trademark, service mark, certification mark or collective mark registered in Thailand by another person shall be liable to imprisonment not exceeding four years or a fine of not exceeding four hundred thousand baht or both. (2) Imitation of Trademark: Section 109 of the TMA provides that:- 6

7 Section 109. Any person who imitates a trademark, service mark, certification mark or collective mark registered in the Kingdom by another person in order to mislead the public into believing that it is the trademark, service mark, certification mark or collective mark of such other person shall be liable to imprisonment not exceeding two years or a fine of not exceeding two hundred thousand Baht or both. The owner of the registered trademark can also enforce their right against the other party in case of trademark infringement for a criminal action under the Penal Code. Section 274 of the Panel Code provides that:- Section 274. Whoever, imitates the registered trademark of the other person, whether it be registered within or outside the Kingdom in order to make the public to believe that it is the registered trademark of such other person, shall be punished with imprisonment not exceeding one year or fine not exceeding two thousand Baht, or both. However, the owner of the registered trademark can claim for compensation of damage against the other party who uses the same or similar trademark based on the civil claim, i.e. Trademark infringement: Section 420 of the Civil and commercial Code provides that Section 420. A person who, willful or negligently, unlawfully injures the life, body, health, liberty, property or any right of another person, is said to commit a wrongful act and is bound to make compensation therefore. The ISSUE: Is it legal in your jurisdiction for a person to exercise a trademark right that was acquired based on bad faith and, without a genuine intent to use? If not, is it restricted, on the ground that there is a ground for invalidation? ANSWER: No. This can be a ground for a cancellation action based on bad faith registration (Sections 61 and 62) and non-use (Section 63) under the TMA. ISSUE: What are other disadvantages in exercising a trademark right, based upon trademark that has not been used? Such a trademark will be subject to a cancellation action 5. Others ISSUE: What elements of the first-to-use practice are adopted by your Trademark Act to supplement the first-to-file system? ANSWER: Prior use of a trademark in good faith. ISSUE: What elements of the first-to-use practice are being discussed to be introduced to your Trademark Act? ANSWER: No. 7