Amendments to the Rules of Trademark Board: Procedures for Considering Appeal and Petitions for Withdrawal of Trademark Registrations
April 12th June
The Rules of Trademark Board regarding, the Procedures for Considering Appeals and Petitions for Withdrawal of Trademark Registrations B.E. 2545 (2002) have been amended in December 2018. This is due to the opinion of officials of the Department of Intellectual Property that the said Rules should be amended to make the procedures of an appeal against official instruction or rejection and a petition for withdrawal of trademark registration more efficient. As a result, the Rules of Trademark Board on the Procedures for Considering Appeals and Petitions for Withdrawal of Trademark Registrations B.E. 2561 (2018) (the “New Rules”) were enacted and have been effective as of 25 March 2019.
The New Rules contain various significant amendments with regard to submission of the appeal and the petition for withdrawal of trademark registration as well as supporting evidence thereof, the details of which are as follows:
- Number of copy of appeal or petition required to be submitted: The appellant or the petitioner is required to file only one copy of the appeal or the petition for withdrawal of trademark registration with the Trademark Office, compared to the old rules which required 19 copies of the same to be filed.
- Requirement of submitting an official form listing each item of supporting evidence: Unlike the old rules which permitted the appellant or the petitioner to submit a set of supporting evidence, without specifically listing them in the official form, the New Rules require that the appellant or the petitioner shall submit an official form listing each item of the submitted evidence together with its appeal or petition. Nevertheless, practically, for the benefit of clients, local agents normally provide a brief list of supporting evidence and some explanations when they submit the evidence in order for the Trademark Board to review them easily.
- Requirement of a ‘true and correct’ certification on the copy of supporting evidence: The New Rules place more burden on the appellant or the petitioner, where in case any of the documentary supporting evidence is not original, the New Rules require copies of supporting evidence be certified by the appellant, the petitioner or its local agent, that such documents are ‘true and correct’ before submitting the same to the Trademark Board.
- Extension of time to submit supporting evidence: The appellant remains entitled to request for the extension of time within 60 days from the date of appeal. On the contrary, evidence supporting a petition for withdrawal of trademark registration must be submitted together with the petition as extension of time thereto is not permitted, whereas the owner of the questionable trademark registration can still request for extension of time to submit evidence in support of its clarification letter against the petition for 60-day period from the date of such letter. In case of exceptional circumstance which is not caused by the appellant itself, the New Rules entitle the appellant to submit supporting evidence after the 60-day period extension upon filing a request within 15 days from the date such exceptional circumstance ended.
- Requirement of providing a certified Thai translation of supporting evidence in foreign language: If any of the documentary supporting evidence is in foreign language, such evidence must be translated into Thai whether in whole or in relevant parts as well as the Thai translation must be certified by the person who made it. Please note that the translator of evidence can be either a translation institute or the appellant/petitioner or its local agent.
It is important to note that where the appellant or the petitioner fails to comply with the requirement of a ‘true and correct’ certification on copies of supporting evidence mentioned above, such evidence shall be considered off the official record and thus it will not be taken into consideration. However, in case of failure to provide a certified Thai translation of the supporting evidence that is in foreign language, the Trademark Board will still have discretion whether or not to consider the evidence submitted without the certified Thai translation.
Hence, for cases of appeals and petitions filed on 25 March 2019 or thereafter, it is obliged to comply with the requirements set forth under the New Rules.