What to Do When a Trademark Is Refused

Received notice that your trademark application was refused? That's not the end of the road - the law gives you a right to appeal, but it runs on a firm deadline. This article covers common reasons for refusal, your options, and the appeal process.

Common reasons trademarks get refused

• Identical or confusingly similar to a mark already registered in the same class.
• Lacks distinctiveness - consumers can't tell your goods/services apart from anyone else's.
• Contrary to law or public order.

Refusal vs. Office Action

A refusal is a step further than a general Office Action - some Office Actions are just amendment or clarification requests, still giving you a chance to fix the original application. A refusal is a decision not to register the application as filed, narrowing your remaining options to appeal or refile. Read the full distinction in What Is an Office Action? How It Differs From a Refusal

Your options: appeal, amend, or refile

Once refused, you have two main paths under the Trademark Act B.E. 2534:

• Appeal the registrar's order to the Trademark Board - suits cases where you believe the refusal was wrong, or you have a strong counter-argument.
• File a new application with the problem fixed (for example, adjusting the mark's design to be more distinctive) - suits cases where the reason for refusal is clearly fixable, and refiling is likely faster or more cost-effective than an appeal.

Which fits depends on the reason for refusal and how much time is left. Consult an agent for a case-by-case assessment.

The appeal process and timeline

Under Section 18 of the Trademark Act B.E. 2534, an applicant may appeal a registrar's order under Sections 14-17 to the Trademark Board within 90 days of receiving the registrar's written order. The government appeal fee (Form ก.03) splits into:

• Appeal under Section 16, 17, 27, or a determination under Section 37: THB 4,000 per appeal
• Appeal under other provisions: THB 2,000 per appeal

The figures above are government fees, kept clearly separate from Patent To You's own professional service fee. If the appeal to the Board doesn't succeed, the law still allows a further appeal of the Board's decision to court within 90 days of being notified of that decision (Section 38) - a separate deadline from the first appeal. See the process and required documents in more detail on the Office Action Response service page.

How to reduce refusal risk next time

The most common refusal reason is similarity to an already-registered mark, which is preventable in advance with a similarity search before filing - see the Trademark Search service.

FAQ