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Case Update - 26 July 2017
Bad faith most commonly arises in the context where a trademark is used in one or more jurisdictions – registration of the trademark however is not in other jurisdictions. It becomes an issue when someone other than the trademark owner applies for an identical or confusingly similar trademark in a jurisdiction where the trademark is not registered.This might be done to prevent the trademark owner from entering the market, with the intention of selling the trademark application to the trademark owner when the owner attempts to enter that market, or simply wishing to profit from the trademark owner's reputation. Such applications may be rejected as "bad faith" applications.
In Thailand, the trademark law provides for several actions in this respect. If the trademark concerned is still at the application stage, an opposition to the trademark registration can be filed by the owner of the trademark when the application is being published, which is provided for by Section 35 of the Act of the Trademark Act B.E. 2534 (1991) as amended by Act (No. 3) B.E. 2559 (2016) ( the “Act”).
If on the other hand, the mark is a registered mark, an aggrieved party can use the route of cancellation of a trademark under Section 67 of the Act which provides that “Within a period of five years from the date of the registrar’s order for registration of a trademark, any interested person may petition the court to cancel the registration of that particular trademark if he/she can prove that he/she has a better right to that trademark than the person registered as the proprietor”.
The Trademark Act therefore allows the owner of the prior used but unregistered mark to file a petition against any bad faith applications. If it can be proven that the owner has pre-existing rights, the application filed in bad faith will be cancelled under the Act.
Some important factors that will be taken into consideration are whether the offending party had knowledge or should they be reasonably aware of use of an identical, or similar sign for identical or similar goods or services; same jurisdiction of use as well as if there is any intention to prevent the owner of the trademark from continuing to use the earlier sign or to only allow such under certain conditions (e.g. a licence).
The above criteria are mere guidelines, and often the specific circumstances of the matter will be considered in determining the extent of which bad faith has occurred.
Knowledge is a primary factor in determining whether there is any bad faith, such as whether the offending party operates in the same or a similar field of business as the owner, whether the earlier sign is well known or enjoys a reputation and whether there has been any formal or informal dealings, or contact between the parties, e.g. by way of an agreement or written communication consenting to the mutual existence of the trademark concerned.
The degree of similarity between the signs as well as the goods and services for which the trademark is represented are important in determining bad faith: as the more similar the signs are, the more likelihood there is that it will be considered there is the presence of bad faith by the offending party.
In Thailand, an application filed without any intent to use is not construed to have been filed in bad faith. By virtue of Section 63 of the Act, any interested person or the Registrar may petition the Board of Trademarks to cancel a trademark registration if it is proven that at the time of registration the owner of the trademark had no bona fide intention to use the trademark with the goods or service for which it was registered, and in fact there was no bona fide use whatsoever of the trademark for such goods or services; or that during the three years prior to the petition for cancellation there was no bona fide use of the trademark for the goods for which it was registered. That is, unless the owner can prove that such non-use was due to special circumstances in the trade and not an intention not to use or to abandon the trademark for the goods for which it was registered.
For these considerations, it is irrelevant whether or not the trademark in question is in force.
This provision exists because in Thailand it is permissible to file a trademark application without any intent of use. There is no provision expressly prohibiting the filing of a trademark in cases where the applicant has no intent of use. In particular, no declarations regarding the applicant's intent of use are required when filing a trademark.
Section 63 therefore provides a ground for the trademark in dispute to be revoked through non-use and gives trademark owners another avenue to safeguard their trademark from being used by another party.
Note : This article is not to be treated as a legal opinion but rather only as a guide to bad-faith trademark under Thai Law.
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