In Thailand, the leading ground for trade mark rejections is the finding of descriptiveness. Much to the dismay of applicants, descriptiveness rejections at times differ from findings in other trade mark offices. For example, some examiners reject applications when they are descriptive of anything, as opposed to using the more internationally accepted criteria where marks should only be rejected on descriptiveness grounds if they merely describe a characteristic of the goods or services specified in the application.
In its rulings, the Thai Supreme Court has demonstrated a nuanced understanding of the internationally accepted criteria and, on occasion, overruled the trade mark examiner's and the Thai Trademark Appeal Board (TTAB)'s descriptiveness findings. On this complex issue, the Supreme Court's decision number 15020/2558 (DKH Retail Limited v The Department of Intellectual Property – 2015) provides clearer directions, evidencing a positive development, guiding examiners to apply more internationally accepted criteria for analysis and giving brand owners a greater understanding as to which trade marks may and may not be accepted on distinctiveness grounds.
In 2009, the applicant applied for Superdry in both English and Japanese (pictured) for goods in class 25. The trade mark examiner found the Japanese and Roman characters, interpreted as "quick-drying", directly descriptive of a quality of the goods and thus rejected the application. The TTAB upheld this decision. Conversely, the Intellectual Property and International Trade (IPIT) Court, and ultimately the Supreme Court, disagreed.
In its decision, the Supreme Court observed that in deciding whether a mark or a portion thereof is directly descriptive of the goods' qualities/characteristics under Section 7(2) of the Thai Trade Mark Act, it must be determined whether the relevant words enable the public to immediately recognise the relevant quality/characteristics of the goods. It is not sufficient to conclude non-distinctiveness if the mark describes a quality or characteristics, but such quality/characteristics must also be relatable to the goods through the word element in question.
The Supreme Court accepted the IPIT Court's analysis that Superdry does not mean "quick-drying" as the examiner claimed, but "extremely dry". Although this meaning is not directly accessible through an invented word, it can be understood by the public with fairly little use of imagination, and this meaning of "extreme dryness" does not signify a quality that the public generally seeks in, or associates with, the relevant class 25 goods. As the word mark in question is not capable of linking the quality it signifies with the specified goods in the application, the mark cannot be said to directly describe a quality or characteristics of the goods.
This logic is in line with the wording of Section 7(2), which states that a mark is distinctive if it is "…a word or phrase having no direct reference to the character or quality of the goods". As such, if a mark describes a quality that does not pertain to the specified goods in the application, then it should not be considered non-distinctive.
In conclusion, the DKH Retail Limited case provides good analytical guidance to Thai trade mark examiners and applicants in Thailand on which marks should be considered distinctive. Applicants can – where applicable – refer to the case to counter direct descriptiveness rejections by arguing that applied-for marks do not identify the targeted goods by describing a pertinent quality that consumers associate with such goods. On the other hand, if met with a general descriptiveness rejection, it would be wise for applicants to argue the necessary involvement of considerable imagination in drawing the link between the mark and the targeted goods or services.
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Daniel Greif |
Dhanasun Chumchuay |
Spruson & FergusonNos. 496-502 Amarin Plaza BuildingUnit Nos. 1806-1807, 18th Floor, Ploenchit Road, Lumpini Sub-District, Pathumwan District, Bangkok 10330 ThailandTel: +66 2 305 6893mail.asia@spruson.comwww.spruson.com
