Case study 9- Non-use cancellation actions in Thailand
Company A wanted to apply for registration of a trade mark for “snack food” in Class 30 in Thailand, but found that a similar trade mark had already been registered for the goods “potato chips, crispy rice chips, corn flakes, and crackers” in the same class by a Thai company (Company B). The goods covered by Company B are classified as ready-to-eat products under Group 3, i.e., food with labeling that is subject to regulatory approval.
Company A submitted a letter to the Thai FDA requesting that it check whether Company B had applied for registration of its products under the mark. Subsequently, the Thai FDA replied in writing that the products under the trade mark were not registered with the Thai FDA. Company A then filed a non-use cancellation action against Company B’s trade mark with the Board of Trade marks and submitted a letter from the Thai FDA to demonstrate that Company B’s trade mark was not in use. The Board of Trade marks considered the non-use cancellation action and the letter from the Thai FDA and ordered for the trade mark registration to be cancelled.
This case demonstrates that a letter from a government office showing that there has not been any application of products bearing the mark is effective evidence to support a non-use cancellation action against a trademark covering products that are subject to regulatory approval. Therefore, if the products under one’s Thai registered trade mark, which are subject to regulatory approval, are not in use in the Thai market but the trade mark owner has not applied for registration of the products with the relevant government authorities, the mark is then at risk of being cancelled due to non-use. Given the regulatory permissions required for food and beverages, this is a scenario that is particularly relevant to SMEs in these industries.
There are several grounds to initiate a cancellation action against a registered mark. One of the most common grounds is to file a cancellation action based on non-use. In Thailand, the trademark owner is not required to commence use or submit a Declaration of Use to the Department of Intellectual Property within a certain period of time. However, a Thai trade mark registration may become vulnerable to a non-use cancellation action under some circumstances. In particular, a cancellation action based on nonuse may be initiated with the Board of Trademarks if it can be proven that: (1) at the time of registration, the trade mark owner had no bona fide intention to use the trade mark with the goods for which it was registered, and in fact there was no bona fide use of the trade mark with such goods; or (2) during the period of three years prior to the request for cancellation, there was no bona fide use of the trademark with the goods for which it was registered. Section 63 further offers the trade mark owner a potential defense against a non-use cancellation, if the trade mark owner can prove that said non-use was due to special circumstances in the trade and not due to the intention not to use or to abandon the trade mark with respect to the goods for which it was registered.
In practice, the Board of Trademarks is usually hesitant to cancel registered marks on the grounds of non-use—therefore, successful non-use cancellation actions in Thailand are rare. However, if the goods covered by the Thai trade mark registration require regulatory approval before being distributed in the market, the registration may be cancelled on the grounds of non-use if there has not been any application of products bearing the mark filed with the relevant government authorities.
The Thai Food and Drug Administration (FDA) classifies food products into four groups, depending on the risk level of the food, as follows: (1) specially controlled food; (2) standardized food; (3) food with labeling; and (4) general food. The first three food groups require food license approval.
(provided by Tillke&Gibbins in the F&B Guide)