Change of Practice at Thailand’s Trademark Office
‘Distinctiveness’ is a key feature of trademark registration in Thailand. Using the full name of a juristic person without stylization, descriptions of the character or quality of particular products or services, and well-known geographical names are all considered ‘non-distinctive’ for trademark registration, according to Section 7 of the Thai Trademark Act.
If a trademark has gained public recognition and evidence of its use can be produced to prove its distinctiveness, such trademark can be registered in Thailand. Objections on the grounds of non-distinctiveness are issued at the time of examination by the Thai Trademark Office, with the trademark owner having a chance to present evidence of such trademark’s use before any such objection is issued. In the event of non-submission of evidence, or that the evidence of use that is submitted is not sufficient to prove its distinctiveness, a second official letter will be issued. The trademark owner will then have a chance to file an appeal application to show the Thai Trademark Board how the objected trademark is distinctive, contrary to the Registrar’s opinion.
Trademark applications are normally examined within 2 years. A Ministerial Regulation concerning evidence of distinctiveness was announced on 11th October 2012. From this date, submission of evidence would only be allowed at the time of filing the trademark application. In order to comply with the new regulation, trademark registrars in Thailand were forced to reject evidence submitted after the initial examination, creating issues for trademark owners who had intended to register trademarks on such trademark-use basis.
It means that trademark owners should file all new trademark applications together with any evidence of use, so as to avoid waiting up to 2 years — potentially in vain — without any trademark protection. Trademark owners are urged to check their mark’s distinctiveness prior to filing any application, in order to save time on the process of examination and to avoid the risk of receiving nothing in return.
Blumenthal Richter & Sumet’s Intellectual Property (“IP”) specialists can assist you with analyzing the distinctiveness of your mark(s) and advise on the registrability of your IP rights. The firm has more than 15 years’ experience in the field, and its practitioners enjoy a close relationship with senior trademark personnel at the Thai IP office.
For more information, contact Mr. Akkaraporn Muangsobha at: [email protected].