Trade mark cancellation due to non-use is a legal mechanism designed to maintain the integrity of the trade mark system by ensuring that registered marks are genuinely used in commerce. However, in Thailand, the practical application of this process is full of challenges, making non-use cancellation a rare and often ineffective tool.
One key reason non-use cancellation is rarely pursued in Thailand is the heavy burden placed on the party initiating the action. Under the Thai Trademark Act, the party seeking cancellation must provide substantial evidence showing the trade mark has not been used within the prescribed three-year period from registration or the last valid use.
Gathering this evidence can be especially challenging, as it often requires insight into the trade mark owner's internal operations, such as distribution networks and marketing activities. This makes it particularly difficult for parties trying to invalidate a registration, especially when dealing with trade marks where there is limited accessible information about the owner and the mark's actual use.
Even when non-use can be demonstrated, the Thai Trademark Act provides trade mark owners with a robust defense mechanism. Under the Act, a trade mark owner can argue that the non-use of the mark was due to "special circumstances in the trade". In practice, the Trademark Board in Thailand has interpreted this defense broadly, offering trade mark owners significant flexibility to justify their non-use.
For example, trade mark owners can claim that they are in the process of securing distributors for their products or are researching and developing the services or goods to be offered under the trade mark. The Trademark Board has historically accepted such explanations as valid, often without requiring detailed evidence to support these claims. This wide scope of interpretation creates a loophole that allows trade mark owners to maintain their registrations, even when the mark has not been actively used in commerce.
The challenges associated with non-use cancellation are not merely academic. In practice, they contribute to a growing problem of trade mark squatting, where individuals or entities register trade marks in bad faith with no intention of genuine use. The difficulty in canceling these registrations means squatters can often maintain control over valuable marks for extended periods, frustrating legitimate businesses attempting to enter the market.
Non-use cancellation, in theory, should provide a means of countering trade mark squatting. However, the realities of the process—particularly the burden of proof and the broad defense allowed under "special circumstances"—render it largely ineffective. As a result, squatters can easily register trademarks and retain them, knowing that challenging the registration is unlikely to succeed.
While the concept of non-use cancellation in Thailand exists to protect the integrity of the trade mark system, in practice, it is rarely utilised and highly challenging. The high burden of proof placed on applicants, combined with the broad interpretation of defenses by the Trademark Board, often leads to non-use cancellation actions failing, giving squatters significant leverage in the Thai market. Local practitioners have raised these concerns with stakeholders, including academics and high-level officers at the Trademark Office, in hopes of amending the law and practices. To address this issue and better protect genuine trade mark owners, there may be a need for legislative reform or stricter enforcement of use requirements in Thailand.
