Thai Trademark Office Action and Opposition: What Should a Trademark Applicant Prepare?

Receiving a Thai trademark office action or a third-party opposition does not necessarily mean your application will fail. It does mean you need to identify the notice, establish when it was received and respond through the correct procedure.

A request to amend an application, a refusal of registration, an order to disclaim part of a mark and an opposition filed by another party require different responses. Each can involve a different deadline. This guide explains what to check first, which documents to prepare and when an appeal may be available.

If you are still planning your initial filing, see our Trademark Registration Services in Thailand.

Identify the notice and calculate the correct deadline

“Office action” is a practical term for a notice or order issued during examination. It is not a single procedure under the Thai Trademark Act. Start with the legal provision cited in the notice, the action requested and the date on which you or your representative received it.

The following periods concern common routes for applications filed directly in Thailand under the amended Trademark Act:

 

Document received	Legal route	Deadline to check
Request for documents, an explanation or a Thai translation	Section 12	Follow the period specified in the particular request. Do not assume it is 60 days.
Order to amend the application, including its goods or services	Section 15	Comply within 60 days of receiving the order, or consider an appeal under Section 18 within 60 days of receiving notification.
Refusal of registration	Sections 16 and 18	An appeal to the Trademark Board must be filed within 60 days of receiving notification of the refusal.
Order to disclaim an element of the mark	Sections 17 and 18	Comply within 60 days of receiving the order, or consider an appeal within 60 days of receiving notification.
Copy of a third-party opposition	Sections 35 and 36	File a counterstatement within 60 days of receiving the copy of the opposition.

 

There are two separate 60-day periods in an ordinary opposition. A third party has 60 days from publication of the application to file an opposition. If an opposition is filed, the applicant has 60 days from receiving its copy to file a counterstatement. Failure to file the counterstatement within that period causes the application to be deemed abandoned.

Keep the complete notice, its attachments and proof of delivery. If the date of receipt is uncertain, review the delivery record and application history promptly before calculating the deadline.

Older applications require an additional check. The 2016 amendment contains transitional provisions for applications filed before it came into force. Where the Registrar had already issued an order, the former provisions may continue to govern the application until the matter becomes final. Do not apply the current 60-day periods to an older file without checking its filing date and order history.

What documents should an applicant prepare?

Gather the materials in one case file so that the response can address the actual grounds raised:

1. The complete notice or opposition: Include every page, attachment, cited mark, stated ground and evidence of the date received.
2. The application record: Include the Thai application number, filing date, applicant’s legal name, mark as filed, specified goods or services, classes, amendments and earlier correspondence with the Department of Intellectual Property.
3. Evidence of the mark’s history and use: Collect dated packaging, catalogues, advertising, invoices, sales records and information showing where and when the mark was used. Use evidence is helpful only where it addresses the particular objection.
4. Relevant rights and relationships: Consider earlier Thai or foreign applications, registrations, assignments, priority documents, licences and corporate records where they relate to the dispute.
5. Details of a cited or opposing mark: Check its owner, filing or registration details, appearance, wording, goods or services and potential commercial overlap.
6. Representation and language documents: Prepare the relevant authority to act, together with Thai translations or certifications required for the filing. The Registrar may require translation of foreign-language evidence.

Preserve the original dates on electronic records. It also helps to prepare a short exhibit list explaining what each document proves. An invoice may support a claim of commercial use, for example, but it is unlikely to answer an objection concerning a prohibited element of the mark.

How should you respond to a Thai trademark office action?

An order to amend the application

An order under Section 15 may concern the description of goods or services or another requirement of the application. Compare the proposed amendment with the products and services the business needs to protect. A seemingly minor change in wording may narrow the eventual scope of protection.

Prepare a clear proposed description, relevant product information and the application history. Then assess whether to comply with the order or appeal it under Section 18 within the applicable period. An appeal challenges the order; it should not be treated merely as a request for more time.

A refusal of registration

If the Registrar refuses registration under Section 16, identify the precise ground. It may concern distinctiveness, a prohibited feature or a conflict with an earlier mark. The response should address the reason actually given in the refusal.

Where distinctiveness is in issue, consider the mark as filed and whether dated evidence of sales or advertising in Thailand supports an argument that it has acquired distinctiveness under Section 7. Where an earlier mark is cited, compare the marks and their specified goods or services carefully. A different class number does not, by itself, eliminate a potential conflict.

An appeal against a Section 16 refusal is filed with the Trademark Board under Section 18 within 60 days of receiving notification.

An order to disclaim part of the mark

The Registrar may require an applicant to disclaim an exclusive right in a common or non-distinctive element of a mark. Check exactly which element the order covers and whether accepting the limitation affects the business’s branding plans.

The applicant may comply with the Section 17 order or consider an appeal under Section 18. The decision should be based on the wording of the order and the mark as filed, within the applicable 60-day period.

What should you do if someone opposes your application?

An opposition is filed by another party after an application has been published. Under Section 35, the opponent may argue that it has a better right to the mark, that the mark is not registrable under Section 6, or that the application does not comply with the Act.

The Registrar sends the applicant a copy of the opposition. The applicant must then file a counterstatement within 60 days of receiving that copy, explaining the grounds on which the application should proceed.

Review each allegation against the underlying records. If the opponent relies on an earlier mark, obtain its Thai application or registration details and compare the marks and specified goods or services. If the dispute concerns prior use or ownership, prepare a dated account of adoption, use, transfers and any relationship between the parties. If distinctiveness is challenged, provide evidence directed to that issue.

An opposition or counterstatement is filed using Form Kor.02 (ก.02). Relevant appeals use Form Kor.03 (ก.03). If supporting evidence cannot all be filed at the same time, a request to defer submission of that evidence may be made using Form Kor.19 (ก.19) together with the counterstatement, subject to the applicable requirements. A request for more time to submit evidence does not extend the statutory deadline for filing the counterstatement itself.

The Registrar may later order either party to provide a statement, explanation or additional evidence. Under Section 36, if a party does not comply within 60 days of receiving that order, the Registrar proceeds to decide the opposition on the evidence available. Continue monitoring the matter after the first counterstatement is filed.

Can an adverse decision be appealed?

The appeal route depends on the decision:

• Orders under Sections 15–17: The applicant may appeal to the Trademark Board under Section 18 within 60 days of receiving the Registrar’s notification. If the Board upholds an amendment or disclaimer order under Section 15 or 17, the applicant has a further 60 days from receiving the Board’s decision to comply.
• A decision on an opposition: Either the applicant or the opponent may appeal the Registrar’s decision to the Trademark Board under Section 37 within 60 days of receiving notification.
• The Board’s decision in an opposition: Section 38 permits an appeal to the court within 90 days of receiving the Board’s decision.

These periods apply to different stages. In particular, the 90-day court appeal period is not the deadline for filing an applicant’s initial counterstatement.

If the application designates Thailand through the Madrid Protocol, examine the particular provisional refusal or opposition notice and the procedure applicable to that international registration. A domestic notice and a communication through WIPO should not be assumed to start the same response period. See our Guide to Trademark Registration under the Madrid Protocol for more background.

Common mistakes that can put an application at risk

• Starting the clock from the wrong event: Publication, receipt of a Registrar’s order and receipt of an opposition are different events.
• Relying on an outdated deadline: Some older materials refer to 90-day periods that changed under the 2016 amendment. Check the applicable law and any transitional provisions for an older application.
• Submitting documents without explaining their relevance: Address each objection or allegation and identify the evidence supporting your response.
• Accepting a narrower goods or services description without reviewing its effect: Confirm that commercially important products and services remain covered.
• Treating the opponent’s allegations as established facts: Verify the claimed rights, dates, ownership, marks and specified goods or services.
• Stopping after the first response: A later request for evidence, a decision or an appeal notice may require further action.

For broader advice on registration and brand protection, see our Intellectual Property Services in Thailand.

Contact Us

If you have received a Thai trademark order or a copy of an opposition, send us the complete document, your application number and the date it was received. These details allow us to identify the applicable procedure, check the deadline and assess the documents needed for a response.

Skyinterlegal can review the grounds raised, prepare a response strategy and advise on filings before the Department of Intellectual Property, including an appeal where appropriate. 

Frequently Asked Questions

Is a Thai trademark office action the same as an opposition?

No, an office action generally refers to a notice or order issued by the Registrar during examination. An opposition is a challenge filed by a third party after publication of the application. They involve different grounds and response procedures.

What is the timeframe for an applicant to respond to a trademark opposition in Thailand?

Under Section 36, the applicant must file a counterstatement within 60 days of receiving a copy of the opposition. This is separate from the opponent’s 60-day period, which begins when the application is published.

What happens if the applicant does not file a counterstatement?

The application is deemed abandoned under Section 36. The applicant should establish the date on which the opposition was received and assess the available response time immediately.

Can an applicant appeal a refusal to register a trademark?

Yes, a refusal under Section 16 may be appealed to the Trademark Board under Section 18 within 60 days of receiving the Registrar’s notification. The prospects of an appeal depend on the stated grounds and the available evidence.

Does every request from the Department of Intellectual Property allow 60 days to respond?

No, a request for information, evidence, or a Thai translation under Section 12 may specify its own response period. Check the legal basis and instructions in the particular notice.

Can supporting evidence be submitted after a counterstatement?

Where the applicable requirements permit, an applicant who cannot submit all supporting evidence immediately may request additional time using Form Kor.19, filed with the counterstatement. This does not extend the deadline to file the counterstatement. Check the submission requirements and the period allowed for evidence in the particular case.

Is there an official fee for filing an applicant’s counterstatement?

The published domestic fee schedule lists no official fee for filing a counterstatement using Form Kor.02. Professional fees, translation costs and other case-specific expenses are separate. An appeal has its own official fee.

Will a foreign trademark registration automatically resolve an objection in Thailand?

No, a foreign filing or registration may be relevant evidence, but registrability and oppositions in Thailand are assessed under Thai law. The value of a foreign document depends on the particular objection and the facts it supports.