One of the common reasons the registrars refuse to allow marks to register is because they are descriptive of the goods or services that fall under the mark.
Hunting for descriptive and suggestive marks, the registrars have developed the art of linking the meaning of the marks and the goods or services for which registration is sought, even when such a connection does not exist. Unsurprisingly, they often reject signs that are viewed as distinctive in many other jurisdictions making Thailand one of the most difficult countries to register trade marks. Section 7(2) of the Thai Trademark Act(1) is the registrars' legal weapon to ban from registration almost every mark that is not an invented or arbitrary word(2).
Click here to view table.
While the above section excludes from registration the marks which have "direct" reference to the character or quality of the goods, the registrars extensively apply it to also exclude marks which have "indirect" reference to goods or services for which they are applied for, such as suggestive marks. The hunting practices for suggestive marks result in the issuance of unnecessary office actions that hinder the prosecution of some trade mark applications, increase registration fees for trade mark owners, delay the market entry of products or services in Thailand and thus frustrate consumers. To echo the registrars' extraordinary imagination in linking the meaning of the marks and the goods or services, strategies need to be developed to protect brand owners' best interests. This article highlights five creative ways to protect your brand based on actual cases handled by our firm.
1. Anticipate the Registrar's thinking
A combination of plain letters is deemed devoid of distinctiveness and not registerable under the Trademark Act. Asahi Glass Company's mark click here to view logo is a combination of slightly stylized letters which are not pronounceable as a word likely to be rejected by the registrar. With this in mind, the mark was applied in International Classes 19, 21 and 40 together with evidence showing the actual use and acquired distinctiveness of the mark in Thailand. Evidence included a written submission stating that the applicant's mark has acquired distinctiveness through use and also the evidence from the applicant's customers. The Registrar reviewed the evidence of use and accepted the mark for registration.
2. Don't underestimate the Trade Mark Board's ability to have diverging views from the Registrar
When determining whether trademarks are distinctive, the registrars and the Trade Mark Board of Appeal ("TMBA") used to be highly consistent in their decision-making. If a registrar rejected a trademark and the applicant appealed the decision to the TMBA, the board would typically confirm the registrar’s order. Recently, there has been a divergence between the conservative decisions of the registrars and the TMBA's decisions driven by a broader view.
For example, the registrar requested that Google Inc. disclaimed exclusive rights in the word “tube” of the mark "Youtube" applied for “Software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications networks” in International Class 9. The applicant filed an appeal against the disclaimer order. Disagreeing with the registrar’s order, the TMBA held that the word element 'tube' in the applicant’s trademark is not directly descriptive of the goods applied for and allowed the mark to be registered without disclaimer.(3)
3. Be prepared to fight up to the Supreme Court, if needed.
3.1 Aquafeed case(4)
Cargill Incorporated filed a cancellation against the trade mark "Aquafeed" registration number Kor 9889 in I.C. 31 in the name of Thai Union Feed Mill Co., Ltd. The TMBA rendered its decision in favor of Cargill Incorporated and cancelled the mark. The word “Aquafeed” is a combination of the words “Aqua” and “giving food”, which could be translated as "giving food to animals in water". The TMBA ruled that the term “Aquafeed” when apply for “animal feeds” in class 31 is directly descriptive to the characteristic of the goods.
Thai Union Feed Mill Co., Ltd subsequently filed a civil suit before the Central Intellectual Property & International Trade Court ("CIPITC") in a further attempt to maintain the registration of its mark. In considering whether the “Aquafeed” mark was registerable, the CIPITC opined that a word or clause that contains a direct reference to the character or quality of the goods it represents if, when used in connection with a product, it enables consumers to instantly or very quickly understands from the mark what kind(s) of goods/services the mark is used for, then the mark is considered descriptive of the goods/services. If the public takes a considerable amount of time in understanding what kind of goods/services the mark is for, then such a mark is not descriptive of the goods/services but is merely suggestive of them and is then registerable. The CIPITC concluded that "Aquafeed" is a distinctive mark. On appeal, the Supreme Court also disagreed with the TMBA's decision and ruled that "Aquafeed" is not directly descriptive of the goods "animal feeds".
3.2 Courtyard case(5)
On July 24, 2003, the Marriot Worldwide Corporation applied for its word mark "Courtyard" application number 524993 in International Class 43 for hotels, villas, camps, restaurants; providing a general facility service for meetings, seminars or exhibitions; providing facility service for banquets and celebrations in special opportunities; and providing room reservations. The Registrar rejected the mark on the basis that it was descriptive of the services it represents (decision no. 0704/21679). The word “Courtyard” is a combination of the words “Court” and “Yard”, which could be translated as "open space enclosed by walls". The TMBA upheld the Registrar's decision (decision no. 435/2550). The Applicant subsequently filed a civil suit before the CIPITC.
The CIPITC views that the Trademarks Act prescribes provisions which establish the intention to limit the rights of the service mark applicant. Thus, these provisions must be interpreted strictly or narrowly as to not exceed the meaning in the Trade Marks Act. Even though the service mark “Courtyard” means “an open space in a house” which is a word referring to other areas outside the walled part of the house, it is merely a suggestive word. To this extent, it does not convey or describe the characteristics or qualities of the services for which "Courtyard" is applied because the public or service users would not comprehend instantly what services the mark is related to or understand what types of services are for the service mark “Courtyard”.
The CIPITC further added that the service mark “Courtyard” does not directly describe the characteristics or qualities of the services because an open space in a house may be utilized in many ways; it does not need to be used to provide specific services related to human activities.
The registrar appealed against the CIPITC's decision. On 19 May 2011 The Supreme Court ruled that the word "Courtyard‟ is merely a suggestive term to the services in Class 43. The term "Courtyard‟ is not directly descriptive of the services applied for and is therefore registerable.
4. Don't fall into the registrar's trap to prove "acquired distinctiveness" when your mark is actually inherently distinctive(6)
The New Era Cap Co., Inc applied for its trademark "59FIFTY" logo click here view logo in International Class 25. Both the registrar and TMBA rejected the mark because"59"are numbers not presented in a stylized manner and "FIFTY" is a common word. The applicant subsequently filed a civil suit before the CIPITC. The Court ruled in favor of the applicant. The "59FIFTY" logo is not a commonly used or directly descriptive term for the goods applied for in class 25, and is inherently distinctive and registerable.
The Court found that the TMBA's finding was flawed. This is because Section 7 of the Trademark Act provides that a distinctive trademark is a mark which enables the public or users to distinguish the goods with which the trademark is used from other goods. There is no provision that defines a mark which is a common or dictionary word as indistinctive. The Trademark Act only prohibits registration for a mark which is a word or term that is common in trade. A distinctive mark can be a fanciful, arbitrary or suggestive mark. The mark 59FIFTY is not directly descriptive of the goods applied for and not a common term in the trade, and is therefore distinctive and eligible for registration.
The mark 59FIFTY is not a commonly used or descriptive term for the goods applied for in class 25, and can be considered inherently distinctive. The CIPITC further ruled it is not necessary to consider whether the mark has acquired distinctiveness under Section 7 of the Trademark Act unlike the registrar and TMBA requested.
The Court ruled to cancel the registrar's order and the TMBA's decision and ordered the mark to register.
5. Find good alternatives to trade mark protection
Three-dimensional objects can be protected under the Trademark Act, but to date, few applications have been successful. The Department of Intellectual Property (DIP) adopted its examination guidelines for the registration of three dimensional trade marks on 13 May 2002. According to the guidelines,
- 3D marks that are shapes or figures of the goods or services being sought for registration or that are related to the goods or services covered by the application;
- 3D marks that are not the shape or figure of goods, even though such marks have been designed or decorated, if the goods or services applied for registration are still visible or if the shape may be perceived as related to the goods or services.
are not distinctive. The DIP’s current guidelines have been drafted so that such 3D marks are unlikely to be registerable in Thailand.
Copyrights are protected and governed by the Copyright Act (1994) and Ministerial Regulations (1997).
There is no requirement for copyright to be registered with any authority. However, one can file an application with the DIP for copyright recordation.
Three-dimensional objects might be deemed as ‘works of applied art’, which are defined in Section 4 of the Copyright Act.
Longchamp's most popular line is their "le Pliage" collection. Le Pliage collection includes a canvas surface, the bag folds up and snaps closed and there are leather accents on both the handles and the top flap. The product quality and elegance of Le Pliage collection is recognized and enjoyed worldwide. But this won't be deemed as sufficient for the registrar to register it as a three dimensional mark. Aware of this, Longchamp successfully recorded "le Pliage" as a copyright work (artistic work) with the DIP (7).
Click here to view image.
Click here to view image.
The Supreme Court has supported the protection of three-dimensional objects as ‘works of applied art’ under the Thai Copyright Act, in a 1994 decision. The CIPITC has rendered the opposite decision in 2007 regarding the shape of a pen, finding that it cannot be protected as a work of applied art even though the process of designing the product might be covered as a sculptural work under applied art. However, the shape of the pen was protected as a design patent. The court probably did not want to provide overlapping protection.