On 17 January 2022, Thailand’s Department of Intellectual Property (“DIP”) published its finalised trade mark Examination Manual (“Examination Manual”).
The Examination Manual provides examiners with guidelines on trade mark examination on areas that the Trademark Act leaves to examiner’s discretion. The trade mark examiners have begun using the updated Examination Manual since 17 January 2022 when examining all trade mark applications, including those filed before this date.
Most of the key points in the Examination Manual remains the same as those of the Draft Examination Manual (“Draft Manual”) published last year (see our report here). There are only some minor changes, mostly to the examples provided in the Manual. We provide a summary of key improvements:
- Five levels of distinctiveness formally recognised. From highest to lowest: fanciful marks, arbitrary marks, suggestive marks, descriptive marks, generic marks. Suggestive marks are explicitly stated as being . For example, GREYHOUND for ‘coach transportation services’ is merely suggestive as it requires secondary understanding that greyhounds are fast racing dogs, suggesting that the coach service is fast. Such marks are registrable.
- Marks consisting of a combination of Chinese characters are recognised as being inventive and registrable if the combination does not have a meaning.
- Combination of letters and numbers of 3 or more characters now recognised as inherently distinctive unless it is a common sequence e.g. 123, ABC.
Two or more years’ worth of online and social media advertising is considered “sufficiently ” period for proving acquired distinctiveness. This means that extensive online advertising for 2-3 years could be considered sufficient to prove that the mark has acquired a secondary meaning.
- Examiners may request applicants to disclaim exclusive rights to a non-distinctive part of the mark only if it is not the prominent part of the mark. The Examination Manual states that the “prominent part” of the mark should mean “proportionately larger so that it is the part recognised by the public or consumers”.
Although the Examination Manual is now in use, it is not legally binding and acts only as a ‘guideline’ for examiners when examining trade mark applications. The finalised Examination Manual is an improvement over the previous Manuals and Draft, though it remains to be seen how examiners implement these changes in practice.
Thailand Head of Trade Marks, Rouse
nunaratana@rouse.com
