In a major update which will be pleasing for trademark applicants interested in obtaining protection for their brands in Thailand, the Department of Intellectual Property (DIP) has announced the new Trademark Examination Guidelines, which shall be used going forward, to examine distinctiveness of the marks by the Trademark Registrars. The guidelines became effective January 17, 2022 and shall apply to the examination of pending trademark applications which have not been examined yet as well as new applications to be filed in the future.
The published examination guidelines have brought significant clarity on the distinctiveness of several types of trademarks, many of which earlier heavily depended on the individual discretion of the examining Registrars and consequently, often faced refusals, despite court precedents allowing registration of such marks.
Some of the prominent changes to the examination practice pursuant to the new guidelines are as follows:
a. Alphabet / Numeric Marks – In line with the precedents set by the courts, the Thai Trademark Office will now allow registration of series of non-stylized letters / numerals containing 3 or more letters / numerals, as long as such series is not for consecutive letters / numerals, for instance ABC, XYZ, 123 or the like. A series of consecutive letters / numerals will likely be deemed incapable of functioning as a trademark.
The following Supreme Court precedents have been included in the examination guidelines as examples:
|Supreme Court Judgment||Mark||Class(es)||Concept behind the trademark|
|9480/2552 (2009)||7, 9, 11||TCL Corporation|
|13879/2556 (2013)||9||High Tech Computer Corporation|
b. Marks containing Chinese / Japanese / Korean characters – Under the new guidelines, marks containing foreign characters such as Chinese, Japanese or Korean characters will be considered distinctive and registrable, as long as the mark as a whole renders no meaning. The Registrars will continue to examine each character individually to determine distinctiveness, but if the mark as a whole lacks any meaning (supported by a certified translation issued by a reliable Language Institute), then the Registrars will allow registration of such mark.
c. Combination of Two English words – The practice in relation to examination of a word which is a combination of two or more English words with dictionary meanings remains the same as before, meaning that marks like “Clearview” will continue to be divided into individual words (i.e. “Clear” + “View” ) and examined for distinctiveness accordingly.
d. On point of acquired distinctiveness, the guidelines indicate that the Registrars must consider whether the mark has been used in Thailand continuously for a reasonably long period of time, that is to say, whether the period of use is long enough for Thai public at large or in such relevant sector to recognize or distinguish such mark. The guidelines also provide key factors to be considered, e.g., number of advertisements through media, such as TVs, social media, print media, including marketing activities etc., for at least 2 years.
The examination guidelines are expected to be uniformly followed by all Registrars while examining the applications. For further details on the examination guidelines regarding examination of trademarks and general IP matters, please contact us at email@example.com