When dealing with trade marks that comprise general statements; common words and phrases may cause difficulties
In Thailand, the process of registering a trade mark can be complicated and challenging. This is especially so when dealing with trade marks that comprise general statements; common words and phrases that may be used by many brand owners. The Thai trade mark examination practice plays a crucial role in evaluating and scrutinising trade mark applications. Despite the complexities, there are ways that applicants can navigate these challenges successfully.
Thailand’s Trade Mark Examiner Practice
Thai trade mark examiners are known for their cautious approach. They often reject marks that contain general statements, deeming them incapable of distinguishing one brand’s goods and services from another. General statements are phrases or terms that lack specific details and are commonly used across various industries or by multiple businesses. Examples of trademarks rejected in the past for being general statements include “wisely IC 8 (App. No. 180143129), “CLASS ONE” IC 3 (App. No. 200131239), “mybest” IC 35, 41 and 43 (App. No. 200134125), “BLUE BLUE” IC 14, 18, 24, 25 and 35 (App. No. 200132158) and “That.” IC 45 (App. No. 210104056).
Despite this strict practice, it is essential to note that there are no provisions in the Thai Trade Mark Act explicitly defining common or dictionary words as indistinctive. The Act only prohibits registration of words or terms that are common in the relevant trade. Furthermore, several past Supreme Court decisions have ruled in favour of marks that are general statements, such as “WEAR YOUR ATTITUDE” IC 35 (Supreme Court Decision No. 5332/2558), and “Make THE Difference” IC 36 (Supreme Court Decision No. 8825/2558). These decisions have established that these marks are inherently distinctive and eligible for registration, provided they are not directly descriptive or widely used common terms in the industry related to the covered goods and services.
Unfortunately, the examiners as well as the Trade Mark Board do not follow the Court’s precedents, and we still see marks containing general statements being rejected by examiners. Nevertheless there is hope for improvement. We see signs that the Trademark Office (both examiners and the Trademark Board) is making efforts to align with international best practices and is open to education from international organizations like WIPO and USPTO, which occasionally provide training for Thai examiners. We anticipate outcomes more consistent with international best practices in the future.
Navigating the Challenges
While obtaining trade mark registration for general statements in Thailand can be challenging, it is not impossible. Here are some strategies to increase the chances of success:
- Addition of a Distinctive Element: Consider incorporating a distinctive element alongside the general statement to create a more distinctive trade mark. This can be achieved through the addition of a logo or a unique design.
- Acquiring Secondary Meaning: If a mark considered to be a general statement has acquired a secondary meaning over time, it may become eligible for registration.
- Consultation with Trade Mark Professionals: Seeking advice from experienced local trade mark attorneys can be invaluable. They can help navigate the complexities of the application process, conduct a thorough search, and suggest alternatives that are more likely to receive approval.
Conclusion
The Thailand trade mark examination practice closely studies trade marks that consist of general statements. These marks face challenges related to a presumption of lack of distinctiveness. Despite the difficulties, there are strategies to improve the chances of successfully registering such trade marks. Collaborating with trade mark professionals and incorporating unique elements can significantly enhance the chances of obtaining registration for trade marks with general statements. By understanding the difficulties of the trade mark examination process and approaching it strategically, applicants can protect their brand identity and enjoy the benefits of trade mark protection in Thailand.
For further information, please contact:
Nuttachai Unaratana, Rouse
nunaratana@rouse.com
