The Department of Intellectual Property in Thailand has issued the final version of the Trademark Examination Guideline (“TM Guideline”) on 17th January 2022 which applies to all pending and new trademark applications. The new TM Guideline sheds light on many important issues, pertinently those relating to registrability, highlighted as follows:
On the first requirement of ‘Distinctiveness’
- Five spectrums of distinctiveness are included in the new TM Guideline, in order of distinctiveness – (i) fanciful/inventive marks; (ii) arbitrary marks; (iii) suggestive marks; (iv) descriptive marks; and (v) generic marks.
- Combinations of 3 or more non-common sequential alphabets and numbers, e.g. TCL and HTC, are now capable of being categorised in the first spectrum of inherently distinctive/inventive marks.
- Marks consisting of a combination of Japanese/Chinese/Korean alphabets are now capable of being inherently distinctive/inventive marks provided that it does not have a definition.
- The minimum duration on the evidence of use in Thailand to prove acquired distinctiveness is now set as two years. The new TM Guideline states that evidence of use in Thailand such as advertisements on televisions, social media platforms, billboards and other form of print media suffice as evidence of use.
- The new TM Guideline also clarifies that the “Disclaimer Instruction” to a non-distinctive component of the mark is only applicable on the non-dominant component of the marks.
On the second requirement of ‘Prohibitive Characteristics’
- Country names/abbreviations are prohibited from registration unless the applicant submits an original official consent letter as issued by the embassy and/or ministry of commerce (or their equivalent) to confirm that the applicant is eligible to use such names/abbreviations.
- Country names/abbreviations are allowed to be used as part of the mark provided the applicant holds the corresponding nationality. For instance, “Made in [country name/abbreviation]”.
- The applicants’ intent is now a factor that can be taken into account when considering whether the mark is against public order, morality, and/or policy.
- The new TM Guideline states that trademark examiners ought to consider decisions of the Trademark Board where a mark has been recognised as a “well known” mark.
On the third requirement of identicalness/confusing similarity
- The new TM Guideline sets out the assessment of confusing similarity between the marks in detail and requires that the trademark examiners take into account factors such as: consumer groups, whether goods/services require experts’ advice/supervision, purpose of use, trade/distribution channels0, and price of the goods/services.
Although the new TM Guideline is not a legally binding document, trademark examiners are expected to strictly conform with the rules therein. For more details of the new TM Guideline, please contact us at firstname.lastname@example.org