Some firms simply advise to forget it but these office actions can be overcome. Thailand is an important market that has vastly improved their IP enforcement efforts and registration process in recent years to align with global standards, it should be part of your global protection strategy.
Thankfully the courts are much more forward thinking, but still these conservative views add undue burden on many clients as the cost to register goes from the very cost effective simple registration to an extended legal battle as you work through the appeal process then the courts.
Our client DTSWISS, an international recognized premium bike parts supplier, ran afoul of these conservative views, something we advised them in advance would happen based on our lengthy experience.
One of the key factors that comes into play in Thailand is the current practice of the Registrars and Trademark Board is to split a mark into its components and examine them individually for inherent registrability. This flies completely against the world wide recognized Anti-Dissection Principle which basically states that trademarks should be looked at as a whole as they would appear to the general public, as a combination of indistinct elements can, in fact, create a recognizable mark that can distinguish the owner’s goods from competing goods in their market.
When you break our clients mark into its obvious component elements “DT” and “SWISS” it runs afoul of two other reasons for rejection. While it does not specifically state it in the Trademark Act, the current practice at the Trademark Office is that unpronounceable acronyms or alphanumerics are considered not distinctive. Additionally, the names of foreign countries are expressly prohibited from use as a mark in Thailand, and while “SWISS” is not Switzerland the Registrars and the Trademark Board feel that terms that refer to the people or language of a country are closely related enough to also need to be rejected under the same provision of law, even though it does not expressly prohibit such terms.
In light of the above you can see why we advised our client they would have a fight on their hands despite being a world renowned brand and trademark.
In the end our arguments, as they almost always are, were listened to by the IPIT Court who ruled in our client’s favor against the Trademark Board’s decision allowing their mark to proceed in the registration process. The court decided that not only was our client’s mark inherently distinctive but it has also acquired distinctiveness through use. If you are experiencing similar difficulties or have been advised by other counsel that your mark is not registrable in Thailand for similar reasons we invite you to let us have a look. We have a long and highly successful trach record of overcoming rejections where others have failed.