Trademark registration for marks composed of combinations of Roman letters and/or Arabic numerals has long been challenging in Thailand, particularly for those that are neither stylised nor pronounceable. There have been conflicting perspectives regarding the interpretation of “invented letter(s) and numeral(s)” under Section 7 of the Thai Trademark Act. The Department of Intellectual Property (DIP) has considered that letters and numerals must feature notable visual enhancements to be inherently distinctive, and “invented” must be in the form of stylisation, such as overlapping or interlocking letters, or intricate designs like traditional Thai oral patterns or geometric motifs.
Some examples of acceptable letter and numeral marks according to the DIP
The courts, however, have consistently recognised that three-letter marks, even when presented without stylisation, can be inherently distinctive. The rationale is that these marks, viewed as random and unusual combinations, can in many cases be distinguishable from common words and sufficient for the public to identify the associated goods/services, and distinguish them from others.
Following Supreme Court precedents on registrability, the DIP officially updated its Examination Guidelines in January 2022 to recognise that combinations of three or more letters, even if not stylised or forming pronounceable words, can be deemed inherently distinctive. Challenges persist, however, for two-letter marks, which still face significant obstacles in achieving registrability.
The JD case
Background
Beijing Jing Dong 360 Du E-Commerce, one of China’s largest e-commerce companies, led trademark applications for the marks JD.COM (and device) and JD.CO.TH (and device) for services in Class 35 related to advertising and business management:
The registrar rejected the applications, citing insufficient stylisation of ‘JD’ and describing ‘.com’ and ‘.co.th’ as common descriptive terms. The applicant appealed to the Board of Trademarks, which upheld the refusal, echoing the registrar’s reasoning and asserting that the marks were devoid of inherent distinctiveness overall.
Undeterred by the initial rejections, the applicant took a bold step and led a civil suit challenging both decisions, firmly arguing that ‘JD’ was an arbitrary combination of letters deriving from the applicant’s company name and that ‘.com’ and ‘.co.th’ were not descriptive of the services in Class 35. Thus, the marks were inherently distinctive.
IP & IT Court decision
This time, the Intellectual Property and International Trade Court (IP & IT Court) ruled in favour of the applicant, finding that although ‘JD’ consisted of ordinary Roman letters, these were derived from the applicant’s corporate name (Beijing Jing Dong 360 Du E-Commerce) and combined in an unordinary manner, making them distinctive under Section 7 of the Trademark Act. The IP & IT Court also acknowledged that there was no prohibition against registering common terms such as ‘.com’ as trademarks, provided that they distinguished the services. The IP & IT Court determined that, when combined with ‘.com’ or ‘.co.th’, ‘JD’ was distinctive and eligible for registration.
Appeal court decision
The DIP, as the defendant, appealed the decision to the Court of Appeal for Specialised Cases, arguing that examination by dissection was legitimate and that the mark was devoid of inherent distinctiveness, because ‘JD’ lacked distinctiveness and ‘.com’ and ‘.co.th’ were common descriptive terms. On 9 January 2022 the Court of Appeal upheld the IP & IT Court’s decision, stating as follows:
‘Invented’ letters refer to arranging letters in an unusual manner not typically used so that the public can distinguish
“the services associated with the mark from others. It does NOT mean that each letter is designed with special characteristics, nor with creative arrangements… In the case of the applicant’s marks, the Roman letters ‘J’ and ‘D’ are placed together on a single plane without translation or specific meaning, and there is no evidence that such an arrangement of letters is commonly used. Therefore, ‘JD’ is considered an invented arrangement of letters and has its own distinctiveness according to the Trademark Act.”
Supreme Court decision
On 8 August 2024 the Supreme Court rejected the DIP’s motion for a final appeal, making the decision of the Court of Appeal final and confirming the registrability of the two JD marks.
Comment
This case, and in particular the court’s recognition that ‘JD’ constituted a distinctive invented arrangement of letters, highlights the positive evolution of legal standards for the registrability of two-letter marks in Thailand. This case reveals to future applicants that two-letter marks might indeed be registrable with a well-constructed case and if distinctiveness as a whole is demonstrated.
For further information, please contact:
Nuttaphol Arammuang, Partner, Tilleke & Gibbins
nuttaphol.a@tilleke.com
