2022 – Handbook for Trademark Registration in Thailand
Trademarks could be one of the most valuable assets to a business as they represent brand identity and help a business stand out from its competitors. In order to obtain protection for a trademark in Thailand, it is mandatory to register a trademark by submitting an application to the Department of Intellectual Property (DIP). Like most other countries, Thailand also applies a “first-to-file” rule in which the earlier in filing the application for trademark registration is the better.
According to the Trademark Act B.E. 2534 (1991) (as amended in 2000 and 2016) (the “Trademark Act”), Section 6 provides requirements for a registrable trademark, namely a trademark must (1) be distinctive; (2) not be prohibited under this Trademark Act; (3) not be identical or similar to a trademark filed or registered by another person.
The DIP has recently published the Trademark Registration Handbook B.E.2565 (2022) (the “Handbook”), a revised version of the Trademark Registrar Handbook B.E.2559 (2016), aiming to provide a clear, uniform and up-to-date guideline on procedures and practices regarding trademark registration in Thailand.
The Handbook contains an outline of the registration processes which the registrar is required to followed, as well as a detailed description of the substantive requirements for a registrable trademark as stated in Section 6. The revision also added formality requirements according to Sections 9, 10 and 11; the examination of service mark, collective mark, and certification mark; and the publication and opposition of trademark application.
One of the substantive requirements for registrable trademark is distinctiveness. The Handbook explains character of which a trademark shall be deemed distinctive as specified in Section 7 Paragraph 2. It looks like if the trademark is considered as fanciful, arbitrary or suggestive mark, it has a high chance of success that it will be registrable. Furthermore, the criterion for acquired distinctiveness through use according to Paragraph 3 of Section 7 is also given in which evidence is required to be provided and proved the use of such trademark (e.g. receipts of sales, marketing and advertisement). However, in order to determine whether a word, phrase or picture has a direct reference or explaining to the character or quality of goods, the Handbook still widely left it to the registrar to use their judgement and interpretation on a case-by-case basis.
Another requirement, according to Section 13, is that a trademark must not be identical or similar in substantial or significant part to filed/registered trademark. To assess the similarity of trademarks, the Handbook adopts a guideline from the precedents, provided that trademark needed to be examined as a whole, not solely based on its appearance or device/word component. Other factors that must be taken into account include similarities in phonetic, meaning, class, nature of goods/services, sale channels and targeted consumers. This looks like the registrar will open for further flexibility in examination of trademark application, increasing the chance of success in registering of trademark. Good example is in the case where the marks bear resemblance to one another but pronounced differently.
Overall, comparing to the previous edition, it looks like the Handbook offers more user-friendly and comprehensive guidelines by providing an in-dept explanation on both rules and practices relating to the examination of trademark applications. It could be a good start in developing a reliable standard for trademark registration even it still opens for the registrar’s opinion at some points.
Author: Panisa Suwanmatajarn – Managing Partner, The Legal Co., Ltd.