Trademark disputes in Thailand have undergone a significant transformation with the recent implementation of streamlined procedures aimed at expediting legal proceedings. This article explores the traditional process for resolving noncomplex trademark cases and introduces the latest regulatory amendments designed to enhance efficiency within the Thai legal framework. Traditional Process Overview The trademark registration process in Thailand involves several steps, including filing, examination, and granting registration. If the trademark registrar rejects an application on substantive grounds, applicants can appeal to the Board of Trademarks. If the board upholds the registrar’s decision, applicants can then pursue a civil suit with the Central Intellectual Property and International Trade Court (IP&IT Court) to revoke the trademark registrar’s and the board’s orders. Previous Regulations and Practice Historically, civil cases concerning trademark registrations followed standard procedures outlined in Thailand’s Civil Procedure Code, with specific adaptations for intellectual property matters under the Act for the Establishment of and Procedure for Intellectual Property and International Trade Court B.E. 2539 (1996). Proceedings entailed various stages, including settlement of issues, evidence hearing, and judgment hearing, culminating in the opportunity for appeal. New Regulations and Practice In 2023, a pivotal development emerged with the issuance of Regulation for Intellectual Property and International Trade Cases B.E. 2566 (2023). This regulatory update introduced section 18, which deals with cases related to the revocation or appeal of Board of Trademarks decisions, such as those concerning trademark nondistinctiveness or opposition cases against Thailand’s Department of Intellectual Property. Section 18 grants the IP&IT Court the authority to order parties to submit documents and evidence without the need for witness examination, thereby streamlining proceedings. Below is a comparison of the trademark procedures for cases related to the revocation or appeal of Board of Trademarks decisions: Traditional Approach Streamlined Approach Implementation and Implications In practice, the implementation

As part of its membership in Lex Mundi, Tilleke & Gibbins has published an updated edition of its Guide to Doing Business in Thailand for 2023. This guide outlines the key factors for starting and operating a business in the Thai market. Issues covered include: Investment incentives Financial facilities Exchange controls Import and export regulations Structures for doing business Requirements for the Establishment of a Business Operation of the Business Cessation or Termination of the Business Labor legislation, relations, and supply Tax Immigration requirements This publication is part of Lex Mundi’s Country Guides series prepared by member firms in more than 100 jurisdictions worldwide. The guides serve as a useful resource for planning international business strategy and researching new markets. The full Guide to Doing Business in Thailand is available through the button below.

In early November 2022, a Thai appeals court overruled the Trademark Registrar’s decision and the Board of Trademarks’ ruling by upholding the registrability of an oil company’s trademark application for its branded service station layout. This is the latest word in a long-running dispute between ExxonMobil and the country’s Department of Intellectual Property (DIP), which had previously rejected the mark as indistinctive. ExxonMobil first filed applications in April 2015 for a trademark bearing a unique colorful drawing of the layout of a service station bearing its well-known registered “ESSO” mark in International Classes 4 and 35 in Thailand. However, the Thai Trademark Registrar refused to register the mark, arguing that the mark was devoid of inherent distinctiveness because the service station layout drawing is directly descriptive of the applied-for goods and services related to oil products. According to the Registrar, the public would not be able to distinguish between the goods and services bearing ExxonMobil’s mark and those bearing the marks of others. ExxonMobil appealed this refusal to the Board of Trademarks, which ultimately agreed that ExxonMobil’s marks are devoid of inherent distinctiveness. The Board explained that the dominant elements in the drawing consist of a common service station with fuel dispensers, which is directly related to the applied-for goods and services related to oil products. The Board also deemed that the submitted evidence was insufficient to prove that the mark had gained distinctiveness through use. ExxonMobil disagreed with these rulings and thus filed a civil complaint with the Intellectual Property and International Trade Court (IP&IT Court) to revoke the Registrar’s decisions and the Board’s rulings. The IP&IT Court examined the case and issued its judgment in favor of ExxonMobil, ruling that the marks are inherently distinctive. The Court noted that to consider a mark’s distinctiveness, it is crucial