Trademark professionals are familiar with the Thai Trademark Appeal Board (TTAB), a character encountered when a trademark applicant wishes to appeal any decision of the Thai Trademark Registrar. The TTAB is established by the Trademark Act B.E. 2534, comprising 11 – 15 members chosen by the Cabinet from the Council of State, the judiciary and experts in international trade and intellectual property. Section 96 of the Trademark Act empowers the TTAB to examine all appeals and cancellation petitions filed under the Act. The TTAB’s duties and powers regarding examination of appeals are regulated by various versions of the TTAB’s Regulations on the Procedure for Examination of Appeal and Cancellation Petitions. On 25 March 2019, a new edition of the Regulations will come into force, with repercussions expected to be felt by most trademark applicants in Thailand.
Procedural Changes Adding Burdens on Applicants
The TTAB’s Regulations B.E. 2561 (A.D. 2018) was approved by the Director-General of the Department of Intellectual Property on 12 December 2018 and will become effective from 25 March 2019. The Regulations will eliminate former appeal submission requirements that 19 copies of an appeal be submitted, replacing it with just one copy. Evidence accompanying appeals are required to be filed in only one copy as before. While this change reduces the photocopying expenses incurred to by trademark applicants, the added translation and certification requirements will outweigh its practical benefits. Section 10 of the new Regulations demands that a comprehensive List of Evidence be submitted along with each appeal, and that all document copies submitted as appeal evidence be certified correct by the applicant or its authorized agent. Further, Section 11 requires that all foreign-language documents be translated into Thai before submission, and that such translation be duly certified as correct by the translator.
Previously, the List of Evidence had never been a requirement – the TTAB was capable of examining evidence submitted in English. At first glance, the new requirements seem to tighten up the process of appeal examination and increase legal certainty, as supporting evidence will be presented more rationally. However, these new requirements, modelled after evidence submission requirements of the Thai courts of justice, are unlikely to have added benefits to trademark applicants. While the amendments will rationalize the supporting evidence for appeals, there is no indication that such rationalisation will result in a more correct or comprehensive consideration of the evidence by the TTAB. The Central Intellectual Property and International Trade Court Thai, competent for considering intellectual property cases, is able to examine evidence in English under certain conditions. Thus, the new TTAB Regulations’ exigency of translating of documents into Thai is excessive when compared to requirements of a law court. Further, evidence compiled for the TTAB under court-like standards will not be readily admissible to the court in case of a subsequent litigation.
With the new Regulations, we advise that trademark owners intending to file an appeal with the TTAB be prepared to provide their representatives with sufficient time, and factor in additional costs, to translate non-Thai documentary evidence and draw up a comprehensive List of Evidence for submission along with the appeal. Generally, applicants are able to file appeal evidence 60 days after submission of the appeal, and we expect this option to be exercised more regularly with the additional burdens on evidence preparation imposed by the new Regulations.
Substantive Examination of Appeals
The TTAB, under Section 12 of the Regulations, is authorized to substitute grounds of rejection during its examination of an appeal. This provision has been transposed from previous versions of the Regulations. In our experience, the TTAB increasingly relies thereon, and its transposition to the latest version of the Regulations indicates that the TTAB has not relinquished this specific power. In the past the TTAB’s authority to substitute grounds of rejection during an appeal has resulted in, for example, a mark rejected by the Registrar for similarity to a prior mark became rejected for descriptiveness by the TTAB.
The possibility of grounds substitution was probably established to provide the TTAB with an opportunity to review the Registrar’s basis for rejection and to bring such basis more into line with the law. However, the effect of grounds substitution is such that the applicant, once notified by the TTAB’s new basis for rejection, must submit a response equivalent to an entirely new appeal. The TTAB’s power to substitute grounds for rejecting an application engenders legal uncertainty, whereby an applicant can never be sure why exactly its mark was rejected until a year after it appeals to the TTAB, at which point the TTAB may reveal a different cause of rejection from the one appealed on. As this uncertainty results from a valid legal source, the simplest advice is that patience is a virtue – it is always possible to appeal the TTAB’s decision to the court.