Under Thai practice, an application for a trade mark with multiple meanings may be rejected if one of the possible meanings of the mark could be considered descriptive of the goods for which registration is sought. Contrary to this common practice, however, the following case provides an example of a trade mark application that was initially rejected by the registrar on grounds of descriptiveness, but was subsequently accepted for registration by the Board of Trade Marks.
In December 2005, Ericsson filed an application to register the mark TEMS in Class 9 for "computer software and hardware for use with telecommunication network implementation". The registrar rejected the mark, reasoning that the mark was inherently indistinctive for registration as a trade mark. In particular, the registrar considered that the term TEMS was an acronym for telecommunications management system and was thus directly descriptive of the goods covered in the application. Ericsson filed an appeal petition with the Board of Trade Marks in an attempt to overturn the registrar's rejection.
The Board examined the appeal and stated that the term TEMS was not found in any dictionary except www.dictionary.com. According to this website, the term TEMS functions as an acronym of several different phrases, including tactical emergency medical support, total electronic migration system, tufts emergency medical services, and telecommunications management system.
The Board further held that even though telecommunications managements system is one of several meanings of the acronym TEMS and may be related to the goods covered in Ericsson's trade mark application, this term cannot be considered directly descriptive of the characteristics or quality of the goods covered in the application. In addition, the public is not aware of which meaning of the acronym TEMS is being specified. The term TEMS should be considered an invented word which is inherently distinctive for registration as a trade mark. As a result, the Board overturned the earlier decision and instructed the registrar to accept Ericsson's trade mark for registration.
This decision implies that a trade mark which has various definitions, one of which relates to the goods for which registration is sought, may be acceptable for registration if such a definition is unusual and unobvious to the general public. Since this may be indicative of a move toward more flexible criteria on trade mark examination, it may be worthwhile for owners of such trade marks to attempt to register their trade marks with the Thai Trade Mark Office.
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| Kittiphan Khattiwiriyaphinyo |
Tilleke & Gibbins International Ltd
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Thailand
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