By Saowanee Leewijitsin
Thailand is notorious for being one of the hardest countries in the world for trademark registrations. Last year, the Registrar’s Trademark Examination Manual (“Examination Manual”) was revised by the Department of Intellectual Property, Thailand (“DIP”) based on the study of trademark laws and relevant legislation, decisions of the Board of Trademark, judgements from Thailand’s Central Intellectual Property and International Trade Court and the Supreme Court, as well as international standard practice on trademark examination, with the purpose to enhance the trademark examination practice in Thailand into alignment with global trademark office standards. The Examination Manual became effective from 17 January 2022 onwards with all pending and newly-filed trademark applications.
There are eight (8) sections in the Examination Manual pursuant to the trademark examination process, starting from the formality check of the filed trademark application, issuance of office action, publication of trademark until trademark opposition. Some of the most significant changes to the examination practice on the distinctiveness issue according to the Examination Manual could be summarized as below:
1. Five (5) levels of distinctiveness have been officially recognized.
In determining the distinctiveness of trademark, the levels of distinctiveness (from highest to lowest) and examples of the same are clearly set forth:
2. For geometric figures or general designs, it would be considered based on the knowledge and perception of the Thai consumer, whether they would perceive that figure or design as a trademark or not. Infinite or repeated patterns for textiles or bags would also not be registrable.
3. Examples of non-distinctive word or letter marks which are not registrable:
- Geographical names or any terms or words having a direct reference to the character or quality of the applied goods or services, even if it was presented in a fanciful manner.
- Word marks which are intentionally misspelt, but could be implied to the original words by their pronunciations, if the original words are descriptive to the applied goods or services (e.g., the marks “Dylicious” or “Krispy” applied for foods)
- Compound word marks, in which each word is descriptive to the character or quality of the applied goods or services. For example, the mark “Clearview” applied for contact lenses, the mark “WatchKit” applied for smart watches, or the mark “” for fabric sheets will be considered as lacking distinctiveness.
- Word marks consisting of plain Roman letters and non-distinctive words (e.g., mark “BWhite”)
It should be noted, however, that the combination of non-stylized alphabets and/or numbers of 3 or more characters is now recognized as inherently distinctive, as long as they are not in a common sequence (e.g., “ABC” or “123”), and not descriptive or too common in trade (e.g., “NPK” for fertilizer, “XXL” for clothes, or “34B” for bra). Also, word marks containing Chinese, Japanese or Korean characters will be regarded as inventive and registrable, even if each character could be individually translated, if the combination of the same does not render any descriptive meaning.
4. Acquired distinctiveness through use:
Two (2) or more consecutive years of advertising the indistinctive marks to the Thai public through TV, printed media, online or social media channels would be considered as a “reasonably long period of time” to acquire the distinctiveness through use (i.e., “a secondary meaning”) in Thailand.
Although the revised Examination Manual is expected to be followed and adhered to by all Thai trademark registrars, it is not legally binding on the Registrars nor does it impose any sanction for Registrars who do not practice the said manual. Nevertheless, the revised Examination Manual evidences the hard effort of DIP in establishing the criteria to be used in examining trademark applications in a uniform manner. We opine that this revision of the Manual was much needed as it may reduce the number of objections that trademark applications in our country receives. For more information about the Examination Manual and general IP matters in Thailand, please get in touch with firstname.lastname@example.org