Criteria and Procedure for Recordal of the Well-Known Mark
A well-known mark that is recordable must meet the following criteria:
- It is a trademark, service mark, certification mark, collective mark or any other mark that has been used for things other than goods and services;
- It is a mark, either registered or unregistered;
- It is the same mark that is applied for recordal;
- It is the mark that has been being continuously used with the goods or services by way of distribution or has been being used or advertised, or has been being used by any other means in good faith to present;
- It is the mark that has been being widely used in good faith either in Thailand or abroad such that the general public or the people in the relevant sector in Thailand know and are well aware of;
- It is the mark that has been being used such that it obtains reputation among the customers;
- It is the mark that is used either in Thailand or abroad by the owner of the mark himself or by his representative or licensee.
In case where a trademark meets the criteria as set forth above, it will be recorded in the Trademark Office’s register. On the contrary, if it does not, the Board shall issue a refusal order and shall notify the same to the applicant. The applicant is entitled to oppose to such refusal order to the Director General within 60 days from the date of receipt of the notification. Nonetheless, in case the applicant does not oppose to such order within the prescribed period of time, the Board shall order to decline the recordal of such mark.
However, it is noteworthy that although the owner of the mark does not file the application for recordal of the well-known mark pursuant to this Regulation, or the Board or the Director General refuses to accept the recordal of the well-known mark, it does not prejudice the right of the trademark’s owner granted under the Trademark Act A.D. 1991 as amended by the Trademark Act (No.2) A.D. 2000. In other words, the trademark owner still has a right to prove an extensive use of the mark in the registration process.