Procedural change facilitates faster resolution of Thai trademark disputes
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Procedural change facilitates faster resolution of Thai trademark disputes

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Waralee Sripawadkul of Tilleke & Gibbins reports that the introduction of new procedures has significantly expedited the resolution of trademark disputes in Thailand and created a more efficient system – in non-complex cases, at least

Thailand’s recent implementation of streamlined procedures aimed at expediting legal proceedings in trademark disputes is a step forward for brand owners looking to defend their trademark rights. The amended process is designed to enhance efficiency within the Thai legal framework.

Traditional process for trademark registration in Thailand

The main stages of the registration process for trademarks in Thailand include filing, examination, and, finally, the granting of registration.

In the examination stage, the trademark registrar may reject an application on substantive grounds, in which case applicants can file an appeal with the Board of Trademarks. If the appeal is unsuccessful and the board upholds the registrar’s decision, applicants can file a civil suit asking Thailand’s Central Intellectual Property and International Trade Court (the IP&IT Court) to revoke the trademark registrar’s and the board’s orders.

Customarily, civil cases concerning trademark registrations have followed standard procedures outlined in Thailand’s Civil Procedure Code, with specific adjustments for intellectual property matters under the Act for the Establishment of and Procedure for Intellectual Property and International Trade Court B.E. 2539 (1996). These proceedings generally included various standard stages, such as settlement of issues, evidence hearing, and judgment hearing, culminating in the opportunity for appeal.

New regulations and practice

In 2023, the issuance of the Regulation for Intellectual Property and International Trade Cases B.E. 2566 (2023) made a significant change to this established practice. This regulatory update included a section that deals with cases related to the revocation or appeal of Board of Trademarks decisions, such as those concerning trademark non-distinctiveness or opposition cases against Thailand’s Department of Intellectual Property. This section authorises the IP&IT Court to order parties to submit documents and evidence without the need for evidence hearing or witness examination, thereby streamlining proceedings.

The implementation of the new procedural flow has significantly expedited the resolution of trademark disputes in the IP&IT Court, to the benefit of brand owners overseeing time-sensitive trademark registration matters.

Despite these gains, the new procedure could introduce complications in certain circumstances, particularly for cases requiring nuanced examination and cross-examination of witnesses. While the expedited procedure enhances efficiency for non-complex cases, it may pose challenges for litigants who seek to present detailed witness testimony to substantiate their claims.

Outlook for trademark dispute resolution in Thailand

This streamlining of the judicial procedure for trademark dispute resolution in Thailand reflects a commitment to enhancing efficiency while balancing procedural fairness. The introduction of more-efficient procedures under the 2023 regulation is a milestone in the intellectual property litigation landscape and provides a swifter method for resolving non-complex trademark cases.

As stakeholders continue to adapt to these regulatory changes, ongoing evaluation and refinement will further help them to reap the benefits of these efficiency gains, ensuring a balanced and effective dispute resolution framework for trademark disputes in Thailand.

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