New regulations of the Trademark Appeal Board B.E. 2561 (2018) (TTAB Regulations) became effective on March 25, 2019.
The Thai Trademark Appeal Board (TTAB) was established by Section 95 of the Trademark Act B.E. 2534 (1991) (Act), as amended by Section 18 of the Act, to deal with appeals arising from decisions of the Thai Trademark Registrar. It is authorized to examine all appeals and cancellation petitions filed under the Act.
Procedures and Formalities of Appeals
Under Section 6 of the TTAB Regulations, only one copy of the appeal papers is required, as compared to the previous position where 19 copies were required. There is no change to the requirement regarding evidence accompanying appeals, which is that only one copy is required.
In the event of noncompliance with Section 6, Section 8 empowers the secretary of the TTAB to issue notifications to the appellants to fix the nonconformity within a stipulated timeline.
Appellants may also amend their appeals within the deadline by submitting an explanation letter as per Section 9.
Section 10 of the TTAB Regulations directs that a comprehensive list of evidence be submitted with each appeal, and that copies of documents submitted as appeal evidence must be certified as true copies. Appellants may apply for a 60-day extension to submit the evidence with the appeal under Section 10(2).
Section 11 requires that documents in a foreign language be translated into Thai before submission, and that such translation be duly certified by the translator. The TTAB has the discretion to ignore any documents or evidence submitted if there is a failure to comply with Section 11.
Substantive Examination of Appeals
The TTAB is authorized under Section 12 to review the Trademark Registrar’s decisions (de facto and/or de jure) and substitute the grounds of objection as they deem fit. In such an instance, the appellant will have 60 days to submit further evidence to overcome the new grounds of objection issued by the TTAB.
Previously, the TTAB’s authority to substitute grounds of objection during an appeal had resulted in the change of the grounds of objections; for instance, from prior rights objections to a nondistinctiveness objection. The effect of grounds substitution is such that the appellant, once notified by the TTAB’s new grounds of objection, must submit a response equivalent to an entirely new appeal.
It is crucial that all trademark owners study the procedures and formalities under the latest TTAB Regulations thoroughly in order to avoid any difficulties that may arise due to noncompliance.
By: Denise Mirandah
This article first appeared in the INTA Bulletin Vol 74, No. 12. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx