First requirement: distinctiveness
Second requirement: prohibitive characteristics
Third requirement: identicalness and confusing similarity
Comment
On 17 January 2022, the Department of Intellectual Property of Thailand issued the final version of the Trademark Examination Guideline (TM Guideline), which applies to all pending and new trademark applications. The new TM Guideline sheds light on many important issues – significantly, those relating to registrability.
First requirement: distinctiveness
Five spectrums of distinctiveness are included in the new TM Guideline, in order of distinctiveness:
- fanciful or inventive marks;
- arbitrary marks;
- suggestive marks;
- descriptive marks; and
- generic marks.
Combinations of three or more non-common sequential alphabets and numbers (eg, "TCL" and "HTC") are now capable of being categorised in the first spectrum of inherently distinctive or inventive marks.
Marks consisting of a combination of Japanese, Chinese and Korean alphabets are now capable of being inherently distinctive or inventive marks, provided that they do 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 ads 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 to non-dominant components of marks.
Second requirement: prohibitive characteristics
Country names and abbreviations are prohibited from registration unless the applicant submits an original official consent letter issued by the embassy and/or ministry of commerce (or their equivalent) to confirm that the applicant is eligible to use such names or abbreviations.
Country names and abbreviations are allowed to be used as part of a mark, provided that the applicant holds the corresponding nationality – for instance, "Made in [country name/abbreviation]".
The applicant's 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.
Third requirement: identicalness and 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 or services require experts' advice or supervision;
- purpose of use;
- trade or distribution channels; and
- the price of the goods or services.
Although the new TM Guideline is not a legally binding document, trademark examiners are expected to strictly conform with the rules therein.
For further information on this topic please contact Ian Mirandah at Mirandah Asia by telephone (+60 322 788 686) or email ([email protected]). The Mirandah Asia website can be accessed at www.mirandah.com.