Well-Known Mark Protection in Thailand: Fighting Squatters Under Section 8(10)

Thailand’s first-to-file trade mark system creates inherent vulnerability for international brands that have not yet registered in the country. Opportunistic applicants can — and regularly do — file marks identical or similar to famous foreign brands, either to block the legitimate owner from entering the Thai market or to profit from a forced transfer. Section 8(10) of the Thai Trademark Act provides the primary legal mechanism for combating this practice, offering well-known marks protection that transcends class boundaries and does not require prior registration in Thailand.

The Legal Framework: Section 8(10)

Section 8(10) of the Thai Trademark Act prohibits the registration of any mark, registered or not, that is:

• Identical with a well-known mark; or
• So similar to a well-known mark that the public might be confused as to the owner or origin of the goods.

The critical features of this provision are:

• No Thai registration required: The well-known mark need not be registered in Thailand. An unregistered mark that meets the well-known threshold receives the same protection.
• Cross-class protection: Well-known marks are protected across all classes of goods and services, not just those for which they are registered or used. This prevents squatters from registering a famous brand name for unrelated goods as a blocking tactic.
• Both identity and similarity covered: The protection extends to marks that are not just identical but also similar enough to create confusion about ownership or origin.

The 2004 Ministerial Notification: Criteria for Well-Known Status

The Ministerial Notification regarding Rules on the Determination of Well-Known Marks, dated September 21, 2004, establishes the criteria the DIP and courts use to determine whether a mark qualifies as well-known. The mark must be shown to have been:

• Used on goods or services, or advertised, in the usual manner and in good faith continuously: Evidence of sustained, consistent commercial activity under the mark.
• Widely used, whether in Thailand or abroad, in the usual manner and in good faith, to the extent that it is well known among the general public or those in the relevant industry in Thailand: The recognition must exist among the Thai public or the relevant Thai industry sector. Purely foreign recognition, without penetration into Thai consumer awareness, is insufficient.
• Used to the extent that its reputation for quality is generally accepted among consumers: The mark must carry a quality reputation recognised by Thai consumers.

The End of the Formal Recording System

Thailand formerly maintained a system under which trade mark owners could apply to the DIP for formal recognition of well-known mark status, and the DIP would record recognised well-known marks in a registry. This system was discontinued in 2015. There is no longer a formal application process or official list of well-known marks.

Since 2015, well-known status can only be established case by case, in the context of:

• Opposition proceedings: When opposing a conflicting application published in the Official Gazette, the well-known mark owner asserts Section 8(10) and submits evidence of well-known status.
• Appeal proceedings: When challenging a refusal or Board decision, the well-known mark argument can be raised before the CIPIT Court.
• Cancellation proceedings: Under Section 61, an interested person or the Registrar can petition the Board of Trademarks to cancel a registration that violates Section 8, including Section 8(10). Importantly, the Section 61 cancellation route has no statute of limitations — unlike Section 67 court cancellations, which are subject to a five-year time bar from the date of registration.

Evidence Required for Well-Known Status

Establishing well-known mark status requires a substantial evidence package. The types of evidence typically submitted include:

• Duration and geographic scope of use: How long and how widely the mark has been used, both globally and specifically in Thailand or the ASEAN region.
• Sales and commercial presence in Thailand: Revenue figures, import records, distribution agreements, and evidence of retail or online presence in the Thai market.
• Advertising and promotion: Evidence of advertising campaigns that reached Thai consumers, including print, broadcast, digital, and social media advertising. Expenditure figures are particularly persuasive.
• Consumer recognition: Survey evidence or market research demonstrating recognition among the Thai general public or relevant industry sector.
• Foreign registrations and enforcement history: A portfolio of registrations worldwide, and evidence of enforcement actions against infringers in other jurisdictions, demonstrates the mark’s global standing.
• Awards, media coverage, and industry references: Any recognition that demonstrates the mark’s reputation and quality standing.
• Online presence and digital footprint: Thai courts increasingly consider evidence of online prominence, including e-commerce activity, social media engagement, and digital advertising directed at Thai consumers.

Section 8(9): The Public Order Alternative

In cases where the squatter’s filing involves bad faith imitation of a foreign mark, an additional ground may be available under Section 8(9), which prohibits marks that are “contrary to public order, morality or public policy.” Thai examiners and courts have applied this provision to cases where the evidence demonstrates that the applicant knowingly copied a foreign brand with no legitimate commercial rationale. This ground can be particularly useful when the well-known mark threshold is difficult to meet but the bad faith of the applicant is clear.

Section 67: The Court Cancellation Route

Under Section 67, any interested party can petition the CIPIT Court to cancel a registered mark by proving that the petitioner has “better rights” to the trade mark. This action must be filed within five years of the registration date. Under existing case law, only marks that are widely known and used in Thailand tend to succeed under this provision. It provides a separate court-based mechanism to complement the Board of Trademarks proceedings under Section 61.

Strategic Recommendations

• Register proactively in Thailand: Well-known mark protection is valuable but reactive. The most effective strategy is to register your mark in Thailand before squatters do. Defensive filings in core and adjacent classes are strongly advisable for internationally recognised brands.
• Build a Thailand evidence file: Even before a dispute arises, compile evidence of your mark’s recognition in Thailand — advertising campaigns, sales data, distribution agreements, Thai media coverage, and consumer survey data.
• Monitor the Thai Gazette: Use monitoring services to detect conflicting applications during the 60-day opposition window. This is the most cost-effective point of intervention.
• Use Section 61 for marks registered more than five years: If the squatter’s registration is older than five years (making Section 67 unavailable), the Section 61 Board cancellation route — which has no time limitation — remains available for well-known marks.
• Consider Section 8(9) for clear bad faith: When the squatter’s copying is blatant, the public order ground provides an alternative path that does not require proving well-known status.

Common Mistakes

• Relying solely on international fame: The DIP and courts require evidence of recognition specifically in Thailand. Global fame without Thai-market evidence is insufficient.
• Missing the opposition window: The 60-day opposition period is the most efficient opportunity. Without monitoring, it passes unnoticed.
• Waiting for the five-year court deadline to expire: If Section 67 is available (within five years of the squatter’s registration), use it. After five years, options narrow.
• Assuming the DIP will catch well-known mark conflicts: While the DIP examines for Section 8(10) conflicts, it may not be aware of all well-known marks. Brand owners must actively monitor and oppose.

Key Takeaway

Section 8(10) provides powerful cross-class protection for well-known marks in Thailand, regardless of whether the mark is registered locally. However, establishing well-known status requires substantial evidence of recognition among Thai consumers, not merely global fame. The discontinuation of the formal recording system in 2015 means that well-known status must now be proven case by case in opposition, appeal, or cancellation proceedings. The most effective strategy combines proactive registration with ongoing monitoring and a ready-to-deploy evidence file demonstrating the mark’s standing in the Thai market.