Registration and Protection of Word Marks in Thailand

In Thailand, the registration of a brand falls under the authority of the Department of Intellectual Property, a Commerce Ministry agency. Section 7 of the Trademark Act stipulates a fundamental condition for trademark registration. It holds that a distinctive trademark must allow the public or consumers to understand that the goods bearing the mark are different from the goods of other parties (known as “inherent distinctiveness”). The second paragraph of this provision lists a number of essential elements that constitute distinctiveness. For word marks, the trademark must not directly refer to the character or quality of the goods.

Unfortunately, this regulation often comes into conflict with a company’s desire to create a trademark that can be easily associated with its products. Examples might include the trademark Best Foods with food and beverages, Craft wood with construction instruments, or Wrestle Mania with wrestling broadcasting services.

There is a risk that these trademark applications will be rejected by the Registrar and the Board of Trademarks on the basis that they directly refer to the character or quality of the goods. Regardless of whether they agree with the rejection, many applicants simply decide to abandon their applications and invent new trademarks that are more likely to be registered. This is often a practical decision in order to avoid the difficulties and investment necessary in seeking judicial review by fling a civil suit with the court.

Abandoning the mark, however, may not be a viable option for companies that have already invested significant resources in marketing their brand and developing recognition among consumers. The third paragraph of Section 7 provides a resolution in this circuit stance.

Under this paragraph, a mark that would normally be viewed as nondistinctive (and thus un registrable) can nevertheless is deemed distinctive if it has been widely distributed or extensively used in Thailand. Through this wide distribution and use, the mark develops a secondary meaning; that is, consumers are able o recognize it as a trademark even hough it is not inherently distinctive.

According to a 2003 Commerce Ministry notification, the following evidence can be presented to the authorities: receipts for goods or services, receipts for advertising fees, delivery notes, purchase orders, license o set up a factory, advertisements published in various media, samples of goods, or other evidence or witness statements.

There is no limitation in presenting he documents to the Court as long as the documents can prove that the trademark has been widely distributed or extensively used. Also, there is no set period of time that will prove hat the mark has acquired secondary meaning. Instead, it depends more on he company’s strategies to advertise or promote the trademark with products in the Thai market until brand awareness or consumer recognition s created among the public.

In Supreme Court Case No. 3685/2551 (Hewlett-Packard Company vs The Department of Intellectual Property), the plaintiff submitted several reference books, including dictionaries that recognized and provided the definition of the trademark in dispute. The dictionaries defined that such mark was a trademark used by the plaintiff with the products covered by the application.

In IP&IT Court Case No. Red IP 46/2548 (World Wrestling Entertainment Inc. vs. The Department of Intellectual Property), the plaintiff submitted several advertising materials, news articles, websites, online forums, and magazines providing information on its products and services bearing the disputed trademark. Although most of the evidence was initiated by members of the plaintiff’s fan club, the court accepted its validity and ruled that the plaintiff’s trademark had achieved secondary meaning through wide use. The mark was therefore remittable in accordance with Section 7, paragraph 3.