Nene Royal: First-to-File Priority and the Risk of Waiting

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Nene Royal: First-to-File Priority and the Risk of Waiting

Filing Priority Matters

Thailand generally follows a first-to-file trademark system. Under Section 20 of the Trademark Act B.E. 2534 (1991), as amended by the Trademark Act (No. 2) B.E. 2543 (2000) and (No. 3) B.E. 2559 (2016) (the “Act”), an earlier application takes priority in examination over later conflicting applications, subject to statutory exceptions and challenges. Celebrities should therefore not assume that public recognition alone will prevent another person from registering their name as a trademark. Early filing remains essential, even where the celebrity’s reputation predates the competing application.

The recent “NENE ROYAL” case (application no. 260138519, the “Third-Party Application”) illustrates this risk. The mark is associated with the Thai artist known professionally as “NENE” or “NENE ROYAL” (the “Artist”). A third party filed its application with the Department of Intellectual Property (the “DIP”) before applications for “NENE” and “NENE ROYAL” were filed on behalf of the Artist’s rights holder. Because it was filed first, the Third-Party Application had the potential to affect the examination of the later applications filed on behalf of the Artist’s rights holder under Section 20 of the Act.

On 17 October 2026, however, the DIP issued a statement on the Third-Party Application, demonstrating how trademark examination can identify potential misuse of an artist’s reputation. The DIP required the applicant of the Third-Party Application to clarify the origin of the mark, its relationship with the Artist and whether it had obtained authorization to use the mark. The DIP also explained that unauthorized adoption of a name, combined with circumstances indicating dishonest exploitation of another person’s reputation, may justify refusal of registration.

Following this examination, the applicant filed a request on 19 October 2026 to withdraw the Third-Party Application. The Trademark Registrar approved the withdrawal and issued an order refusing registration of the mark.

Examination May Not Reveal the Connection

The outcome may be different where the examiner does not recognize the name or lacks evidence linking it to a celebrity. This is particularly relevant for foreign artists, emerging personalities and names whose significance is apparent mainly within a particular audience. In such cases, an application may proceed unless the relevant facts are brought to the examiner’s attention.

Rights holders should therefore monitor published applications and support any objection with dated evidence of:

  • the name’s recognition;
  • commercial activity under the name;
  • the applicant’s knowledge of the name; and
  • the absence of authorization.

Section 35 of the Act provides a 60-day opposition period from the date of publication.

Registration Makes the Dispute Harder

If an application proceeds to registration, cancellation may become necessary. Section 67 of the Act allows an interested person claiming better rights in the mark to seek cancellation before the court within five years of the Registrar’s registration order under Section 40 of the Act. Discovering the registration late does not restart this period. Failure to act within the statutory window may bar this route, even where the claimant has an earlier entitlement to the name.

The five-year rule does not, however, make every registration immune from later challenge. Sections 61 and 62 of the Act provide separate grounds for cancellation, including lack of distinctiveness, prohibited characteristics and conflict with public order, morality or public policy. These grounds may be pursued by filing a petition with the Trademark Board and are not subject to the same five-year limit. Whether they apply, however, requires a separate legal and evidentiary assessment. An allegation of better ownership rights or unauthorized use of a name does not, in itself, establish grounds for cancellation under these provisions.

Key Takeaways

Celebrities, management agencies and commercial partners should prioritize three measures: early filing, clear contractual ownership and continuous trademark monitoring. They should also preserve evidence showing how the name acquired its recognition and who authorized its commercial use. Once a conflicting application or registration appears, they should identify the available remedy under the law and act promptly.

Author: Panisa Suwanmatajarn, Managing Partner.

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