Commonly used words and phrases can cause various difficulties when referring to marks containing general statements.
The process of registering a trademark in Thailand is complex and challenging, especially when it comes to trademarks containing general statements, as many brand owners may use common words and phrases as trademarks. Thailand’s trademark examination method plays a vital role in evaluating and examining trademark applications. Despite the complexity of the process, there are ways for applicants to successfully navigate these challenges.
Thailand Trademark Examiner Practice
Thai trademark examiners are notoriously cautious. They believe that trademarks containing general statements make it difficult to distinguish between different brands of goods and services, and therefore generally reject applications for such trademarks. General statements are phrases or terms that lack specific details and are commonly used across industries or across multiple businesses. Trademark applications that have been rejected for being general statements in the past include: “wisely” Category 8 (Application Number: 180143129), “CLASS ONE” Category 3 (Application Number: 200131239), “mybest” Category 35, 41 and 43 Class (Application No.: 200134125), “BLUE BLUE” Classes 14, 18, 24, 25 and 35 (Application No. 200132158) and “That.” Class 45 (Application No. 210104056).
Despite the strict scrutiny, it is important to note that the Thai Trademark Law does not define commonly used words or words in the dictionary as lacking distinctiveness. The Trademark Law only prohibits the registration of words or terms that are common in the relevant industry. In addition, some past decisions of the Supreme Court have also supported general statement trademarks, such as “WEAR YOUR ATTITUDE” Class 35 (Supreme Court Decision No. 5332/2558) and “Make THE Difference” Class 36 (Supreme Court Decision No. 8825/ Judgment No. 2558). These judgments provide that as long as these trademarks are not entirely descriptive and are not generic terms widely used in industries related to the goods and services involved, they are inherently distinctive and eligible for registration.
Unfortunately, the examiners and the Trademark Review and Adjudication Board did not follow the court’s precedents, and some trademarks containing general statements were still rejected by the examiners. Nonetheless, the current censorship system is a work in progress. There are various indications that the Trademark Office (including examiners and Trademark Review and Adjudication Board) is working hard to integrate with international best practices and actively learn from international organizations such as the World Intellectual Property Organization and the United States Patent and Trademark Office. They will provide Thai examiners with information from time to time. training. We believe that future review practices will be in line with international best practices.
face the challenge
While obtaining general representation trademark registration in Thailand is challenging, it is not hopeless. Here are some strategies to increase your chances of success:
- Add a distinctive element: Consider adding a distinctive element to the general statement to create a more distinctive mark. This can be achieved by adding a logo or unique design.
- Acquires Secondary Meaning: If a generally stated mark acquires a secondary meaning over time, then it is eligible for registration.
- Consult a Trademark Professional: It is important to seek advice from an experienced local trademark attorney. A trademark attorney can help navigate the complexities of the application process, conduct a thorough search, and suggest alternatives that have a better chance of approval.
In conclusion
Thailand Trademark Examination Practice provides an in-depth look at trademarks consisting of general statements. The biggest challenge faced by these trademarks is the presumed lack of distinctiveness. Despite the difficulties, there are strategies that can improve your chances of successfully registering such a trademark. Working with a trade mark professional and incorporating elements of distinctiveness can greatly improve the chances of your general statement mark being registered. By understanding the difficulties in the trademark examination process and approaching them strategically, applicants can protect their brand image and benefit from Thai trademark protection.
For further information, please contact:
Nuttachai Unaratana, Rouse
nunaratana@rouse.com
