In Thailand, trade mark applicants often encounter rejections on the ground of non-distinctiveness, where the application is principally composed of an acronym or a combination of unpronounceable letters. The Thai Trademark Office has consistently found that combinations of such letters in only a slightly stylised manner do not form an invented word and as such cannot pass the distinctiveness requirement. These decisions are then, almost without exception, upheld by the Thai Trademark Appeal Board (TTAB). At that point, many applicants refrain from appealing to the Thai courts due to the lengthy litigation process and the significant costs involved.
Recently, there have been several Thai Supreme Court decisions indicating that the Thai Trademark Office's position on letter combinations should be modified.
Section 7 Paragraph 2 of the Thai Trademark Act enumerates various mark categories that are presumed distinctive by the registrar, for example, invented words (subparagraph 3) or stylised letters or numerals (subparagraph 4). Where a mark falls under one of the listed categories, its distinctiveness is often easily settled. However, problematic cases arise where the mark does not meet the specified criteria of any category for presumed distinctiveness.
Logically, in these cases, the subject marks should be assessed based on the general criteria of distinctiveness, which is defined in Section 7 Paragraph 1 as the ability of a mark to "enable the public or users to distinguish the goods with which the trade mark is used from other goods." In practice, however, failure of a mark to fit into one of the specified distinctiveness categories often results in a non-distinctiveness rejection.
In Beiersdorf AG v The Department of Intellectual Property, (case number 5432/2551 (2008)), the Thai Supreme Court was tasked with assessing the distinctiveness of the mark . The trade mark registrar and the TTAB decided the mark lacked distinctiveness as it did not constitute an invented word or a mark made up of highly stylised letters. The Supreme Court found distinctiveness of the mark must be assessed by the ability of the mark to indicate a source of the goods/services claimed that is distinguishable from the source of others.
The subject mark comprised the letter combination BFD, with minimal or no stylisation, followed by a series of four ordinary opaque circles. The Court had the view that, although the mark was composed of simple letters and geometrical shapes, the distinct arrangement of the generic elements rendered the resulting mark capable of distinguishing the relevant goods/services. Furthermore, the Court noted that the Roman letter combination BDF is derived from the applicant's company name, i.e. Beiersdorf AG. As there was no evidence this letter combination is commonly used in the trade connected with the claimed goods/services, the Court deemed it effective in designating the applicant as the origin of the goods/services claimed.
The Supreme Court employed an identical reasoning in HTC Corporation v The Department of Intellectual Property, (case number 13879/2556 (2013)), where the mark was deemed distinctive, as the letter combination forming the mark was derived from the applicant's company name and was not commonly used in the relevant trade.
The Central Intellectual Property and International Trade Court, with first instance appeal jurisdiction over trade mark cases, also demonstrated an affinity with the Supreme Court's analytical methodology, as reflected in its decision in BFT S.p.A. v The Department of Intellectual Property, (red case number TorPor.88/2559 (2016)), which was affirmed by the Supreme Court earlier this year.
Despite a wealth of jurisprudence on this point, we observe that the Thai registrar and the TTAB continue to issue and affirm lack of distinctiveness rejections for trade marks composed mainly of letter combinations that are not highly stylised. Thus, we recommend that trade mark owners wishing to obtain registration for their marks falling in this group be prepared to appeal their cases to the courts, where the chances of success will significantly increase.
Dhanasun Chumchuay, Daniel Grief and Saowaluck Lamlert
Spruson & Ferguson
Nos. 496-502 Amarin Plaza BuildingUnit Nos. 1806-1807, 18th Floor, Ploenchit Road, Lumpini Sub-District, Pathumwan District, Bangkok 10330 Thailand
Tel: +66 2 305 6893