Trademark opposed: fight it or refile
Quick answer
If the mark has been used in the market long enough for consumers to recognise it and the evidence of use is strong, contesting usually pays, because the right obtained covers the name the business actually trades under. If the similarity sits in an element that can be dropped, or only part of the goods list overlaps, adjusting and refiling is normally faster and easier to budget. The deciding factor is the quality of use evidence, not the feeling that the mark is yours.
Side-by-side facts
| Aspect | Contest and argue the case | Adjust the mark or the goods list and refile |
|---|---|---|
| Overall timeline | Longer — depends on the stage and the registrar's queue | Shorter, but the examination queue restarts |
| Cost profile | Harder to predict — it scales with the number of stages | More predictable as a single package |
| The right you end up with | Matches the name actually used in market | May require giving up part of the mark |
| Evidence required | Continuous use, sales, advertising and consumer recognition | A fresh application set and the adjusted representation |
| Trading while you wait | You keep the name, but the exposure remains open | You need a communications plan for the name change |
| Long-term brand effect | Brand continuity is preserved | Packaging and marketing must follow the new mark |
Choose Contest and argue the case when
- The mark has traded for years with complete evidence of use
- The name is tied to franchise, distributor or primary domain assets
- The similarity involves goods aimed at a different set of buyers
- You hold documents showing use predating the objector
Choose Adjust the mark or the goods list and refile when
- The business is new and packaging can still change cheaply
- The similarity sits in a device or generic word that can be removed
- You need the right in time for a launch or a retail negotiation
- The overlapping goods are not the revenue-driving lines
Documents to prepare
- The application copy and the full refusal notice or opposition
- Evidence of use: invoices, storefront photographs and dated advertising
- The goods and services sought, with class classification
- Company affidavit or identity documents of the mark owner
- Power of attorney for the agent acting on your behalf
Step by step
1. Read the objection down to its real ground
Separate whether the ground is visual similarity, phonetic similarity, or overlapping goods — the remedy differs in each case.
Typical duration: 3–7 days
2. Weigh the evidence of use
Gather as much genuinely dated historical evidence as possible, then judge honestly whether it shows consumer recognition.
Typical duration: 1–2 weeks
3. Pick the route and fit it to the business plan
If contesting, fix how far you will go and the budget. If refiling, design a mark that removes the conflict yet keeps brand recall.
Typical duration: 1 week
4. File the response or the fresh application
Prepare the argument and exhibits as one readable bundle and file within the deadline stated in the notice.
Typical duration: By the deadline in the notice
5. Set up watch after the right is granted
Review published applications on a cycle and keep continuous use evidence from day one, so you are ready whenever the right must be asserted.
Typical duration: Ongoing
What usually goes wrong
- Letting the deadline in the notice run out
- Submitting undated use evidence that carries no weight
- Refiling with only a colour or font change, which does not reduce similarity
- Claiming a goods list wider than needed and colliding with others
- Changing the market-facing brand before the new application is examined
Why an adviser beats a template
When an application is opposed, what a client needs is not a verdict prediction but a picture of where each route leaves the brand two years out. We lay out cost, timing and the knock-on effects on packaging and counterparty contracts before the decision is made. Our IP practice sits alongside the corporate registration and contracts teams, so the mark and every surrounding document that must change are handled together.
Frequently asked questions
Can we keep trading under the name while waiting?
Trading use is separate from the application's status, but dispute exposure remains until the matter closes. Weigh that against marketing plans before committing to a large packaging run.
Can both routes run at once?
In some cases yes: keep the original alive and file an adjusted application in parallel. It costs more but reduces the risk of ending with nothing.
Register in the company's name or the founder's?
Usually the legal entity that actually uses the mark, since a later assignment adds steps and can touch conditions in counterparty contracts.
Do we need every class?
No. Cover what you actually sell and what is planned within a visible horizon. Over-claiming raises both cost and the chance of opposition.
Does foreign use help?
Foreign use can support the narrative, but rights in Thailand turn on the Thai register, so a foreign registration alone is not a substitute.
We would rather not run this ourselves
We handle it from analysing the ground of objection, testing the use evidence, laying out the options with cost and timing, drafting the response, filing on your behalf, then watching the right after grant.
Official sources
Not sure which route fits your case?
Call +66-92-017-0000, email contact@tla.co.th, or message us on LINE. Monday to Saturday, 09:00–18:00 Bangkok time, in English or Thai.