NON-USE CANCELLATION AGAINST TRADEMARK REGISTRATION IN THAILAND

Abstract

Non-use cancellation is a legal proceeding for cancelling the registration of trademark based on the claim that such trademark has not been genuinely use in course of trade, within a proper period, by the trademark owner who registers such trademark to commercially utilize to the trade and benefit to the economic. In addition, the cancellation can also claim that such trademark owner has no intention to use the trademark in commerce.  This kind of cancellation, non-use scheme, can be a significant method for cleaning up the cluttered Registry records, and help in revoking the registration of unused trademarks from the system. This could, in turn, provide the opportunities for later comer, who may genuinely use an identical or similar trademark in commerce, but its application has been rejected by the Registrar due to the obstacle of the prior registration of such unused trademark.  The later comer may file a cancellation to eliminate such obstacle and finally obtain the protection.

            In Thailand, although the provision regarding non-use cancellation proceeding has been provided under Section 63 of Thai Trademark Act B.E. 2534 (1991). However, considering on the precedent orders of Board of Trademark and Supreme court's judgment, it appears that the non-use cancellation in Thailand has been a difficult proceeding in practice.  Due to the facts that a petitioner, who files a cancellation request, must bear the burden of proof showing the absolute non-use of the registered trademark that belongs to the other party. Moreover, the petitioner is also required to prove the intention in mind of the registrant demonstrating lack of  bona fide intention to genuinely use the trademark in relation to the registration.  These burdens to produce the evidences in term of such negative facts seem to be impossible for the petitioner. In addition, Thailand does not allow partial cancellation, which is resulting that the petitioner must prove the actuality of non-using of trademark on every items as applied in the registration.  Besides, the standard of proof required by the Board of Trademark has been set very high. These requirements have put more burden to the petitioner.  Where the non-use cancellation rarely succeeds, the unused trademark registration would be as a barrier for the new investors to put invest their business in the country where their trademarks could, perhaps, be in risk of not being protected.

                  For the above reasons, the Author therefore has studied on the problems in practice of non-use cancellation proceeding in Thailand, by comparing with the provisions and proceedings of this scheme that have been adopted in foreign countries e.g. the United States of America, the United Kingdom, Japan and the People Republic of China. According to the research, the Author found that the burden of proof and requirement for standard of proof in such jurisdictions have been stipulated differently from Thailand, which enable the non-use cancellation in these particular countries are efficiently implemented.  It is to say that the successful non-use cancellation scheme is also benefit to urge the registrant to  be aware of genuinely use its trademark in course of trade, which plays a vital role in balancing between the rights given to the trademark owner and public interest, as well as supporting the improvement of trade and economic growth.  As a result, adopting the advantages and goodness of non-use cancellation proceedings from foreign countries could enlighten Thailand to see the unresolved problem and significant necessity to eliminate the obstacles that block the foreign investor to come invest in Thailand and impede the economic growth.