The Supreme Court of Thailand recently reaffirmed the test for distinctiveness in regard to trade marks, in a positive decision that will hopefully provide brand owners with better prospects for successfully arguing before the Thai Trade Marks Office and Appeal Board that their distinctive word marks should be registrable.
The decision in TMB Bank Public Company Limited v The Department of Intellectual Property (Case Number 2587/2559 – 2016) reaffirms the Court's interpretation of the definition of trade mark distinctiveness, as outlined in its 2011 decision, Burger King Corporation v The Department of Intellectual Property 5448/2554 (2011).
In Thailand, the primary definition of trade mark distinctiveness is given in Section 7 of the Thai Trade Mark Act: "A distinctive trade mark is one which allows the public to distinguish between those trade marked goods and other goods." Further, Paragraph 2 of this Section prescribes that "a trade mark having, or consisting of, a word or clause that has no direct reference to the character or quality of the goods, and is not a geographical name as prescribed by the Minister in the Ministerial Notifications (among others), shall be deemed distinctive".
In the 2011 decision, Burger King Corporation v The Department of Intellectual Property, the claimant's application to register the mark Have It Your Way for class 43 services had been rejected by the Registrar and the Trade Mark Appeals Board consecutively. Initially the Registrar's rejection was based on the interpretation that the mark was descriptive of the relevant class 43 restaurant services. However, on appeal, the Appeal Board analysed the mark and found it non-distinctive for being a generic phrase, a position reversed by the Central Intellectual Property and International Trade Court (CIPIT). The Supreme Court, upon final appeal, observed that, although Section 7 commands that the words or phrases comprising a trade mark must not directly describe a characteristic or quality of the goods/services in relation to which the mark is used, there is no law stating that generic terms or expressions cannot be distinctive. Thus, the point considered by the Supreme Court was whether the primary definition under Section 7 was satisfied. On that point, the claimant's case was won on consideration of extensive evidence of use.
Under Thai case law, it can be seen that marks comprising general words or expressions can be distinctive. However, at the Registrar level, such proposed marks are often rejected, and any general word or expression component is usually met with a disclaimer request or rejection from the Registrar. This practice is traceable to the Trademark Office's internal Trademark Examination and Opposition Manual (issued 2011), which instructs registrars to pronounce non-distinctive trade mark components that are general words or expressions. As this manual is internal and does not form part of the binding body of law and regulations, it bears little, if at all, on the statutory interpretation at the court stages. This means there is a higher level of legal certainty and closer following of the law in full litigation court stages, and therefore the state of this practice area often requires applicants to litigate to reach a favourable outcome.
More recently, the Supreme Court in TMB Bank Public Company Limited v The Department of Intellectual Property (Case Number 2587/2559 – 2016) focused on the fact the slogan mark in question (TMB Make THE Difference) constituted a suggestive mark, that is one that is not directly descriptive.
This case, again, involved the Registrar, Appeals Board and even the CIPIT Court agreeing that the mark is descriptive of the relevant banking services. However, the Supreme Court did not find the mark descriptive, finding the expression was not common among the expressions used by other providers of similar services, making it a good indication of the source of the services, which presents a direct and liberal approach to interpreting Section 7 Paragraph 1, as seen earlier in the 2011 Burger King decision. Another implication of this 2016 decision is how distinctiveness, being a measure of a mark's ability to distinguish the source of the goods/services is linked to use, as such use will suggest that consumers and the public identify the relevant goods/services as originating from the applicant.
Ultimately, if a non-prohibited mark is inherently distinctive or so widely used by the applicant that consumers and the public identify the relevant goods/services with the applicant, then the mark is legally registrable. Historically, to reach this conclusion, applicants in Thailand have often had to take cases all the way to the Thai Supreme Court, which entails several years of appeals and significant expense.
The decision in TMB Bank Public Company Limited v the Department of Intellectual Property (Case Number 2587/2559 – 2016) is a positive development for brand owners and, it is hoped, this decision will be considered by the Registrar, the Appeals Board and the CIPIT Court in evaluating word marks brought before them for consideration, resulting in fewer decisions rejecting proposed marks on non-distinctiveness grounds.
Spruson & Ferguson
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