Three-dimensional (3D) trademarks occupy an evolving space within Thai trademark law, reflecting the tension between protecting brand identity and keeping product shapes free for competition.
Under the Thai Trademark Act, 3D marks are registrable, provided they are distinctive, non-functional, and not customary in trade. In practice, however, distinctiveness is often the greatest hurdle, as consumers tend to perceive product shapes as purely ornamental or functional rather than as source identifiers. As a result, many applications for 3D marks are initially refused unless the applicant can demonstrate acquired distinctiveness through extensive use, advertising, or consumer recognition.
Once registered, challenges may arise in safeguarding 3D trademarks. These include defending against non-use cancellation actions and enforcing rights against infringers that may replicate or imitate the protected shape. A further complication occurs when infringers alter the form altogether; for instance, by reproducing a 3D mark in two-dimensional form, thereby raising complex questions before the Intellectual Property and International Trade Court (the IPIT Court) regarding what constitutes ‘use’ of the trademark.
Regulations on inherent registrability of 3D trademarks in Thailand
The Thai Department of Intellectual Property examines 3D marks under the same substantive standards as traditional word or device marks but with particular attention to whether the shape is dictated by technical function or trade norms. The Thai Trademark Office requires views that clearly show the mark’s depth, length, and width. Views may include front view, back view, left side view, right side view, top view, bottom view, and perspective view. If deemed necessary, the registrar may also instruct the applicant to submit a statement to explain or illustrate the actual or intended manner of use of the 3D mark.
Section 7, paragraph 2(10) of the Thai Trademark Act serves as the primary piece of legislation on the inherent distinctiveness of a “shape”, providing the following: “A trademark having or comprising of any of the following characteristics shall be deemed distinctive […]
“(10) A shape which is not the natural form of the goods or a shape which is not necessary to obtain a technical result of the goods or a shape which does not give value to the goods.”
While the statute does not clearly define a 3D trademark, the Department of Intellectual Property Regulations on the Criteria and Methods for Registering Marks in the Shape of Objects, issued on May 13 2002, and the Thai Trademark Office Examination Guidelines, issued on January 17 2022, attempt to provide more clarity pertaining to the registration of 3D trademarks.
As per the guidelines, a “mark that is in the form of the shape or form of an object means a mark in which characteristics are the shape or form that show the width, length, depth, which may be the product itself (Product Design) or the product packaging (Product Packaging).
“It has the following characteristics: (1) Shape or form that is not the natural characteristic of the product itself, such as the shape of vegetables or fruits for [the] selling vegetables or fruits. (2) Not the shape or form that is necessary for the technical functioning of the product, such as the shape of a gooseneck toilet used with sanitary ware, the shape of a gear for gear products, or a circle used with other ball products that require rolling movement, or the shape of spare parts that need to be in that shape so that the spare parts can work, etc. (3) Not the shape or form that increases the value of the product, such as decorating gold or diamonds on ordinary containers, or a shape that relies on design to create beauty or significantly add value to the product, such as jewellery, furniture such as sofas, lamps, tables, chairs, clothing, etc.”
Despite the existence of guidelines, the interpretation of the law and corresponding examination practice regarding the inherent distinctiveness of 3D trademark applications remain highly stringent. As a result, the majority of 3D mark applications encounter distinctiveness objections at the Trademark Office level, unless the marks are obviously distinctive. Applicants may, however, seek relief through appeals against decisions of the registrar and the Trademark Board. In practice, the IPIT Court and, on further appeal, the Court of Appeals for Specialised Cases have generally adopted a more progressive approach, frequently overturning conservative administrative decisions and recognising inherent distinctiveness as a valid basis for registration.
Proving acquired distinctiveness or secondary meaning for 3D trademarks
In cases where the marks are deemed not sufficiently distinctive on inherent grounds, the Thai Trademark Act also allows registration of 3D trademarks on the ground of acquired distinctiveness, with Section 7, paragraph 3 of the act providing that a “trademark having no characteristics under paragraph two (1) to (11), if used on goods which have been widely sold or advertised in accordance with the rules prescribed in a notification by the Minister and if it is proved that the rules have been duly met, shall be deemed distinctive”.
Applicants must strictly follow the Announcement of the Ministry of Commerce Re: Criteria to Prove Acquired Distinctiveness and meet the criteria provided under the guidelines should they wish to prove acquired distinctiveness. Based on the provisions in the announcement, to prove acquired distinctiveness, the following criteria must be met:
The mark has been used in Thailand continuously for a reasonably long period such that consumers to whom the goods or services are targeted would know that the goods or services are distinguished from those of others;
The mark may be regarded as distinctive only for those goods or services of which such use is proven; and
The trademark shown in the evidence submitted to prove use of the mark must be identical to the mark shown in the trademark application.
To fulfil the criteria, applicants must also collect and submit evidence of extensive use of their 3D mark in Thailand before the filing date. Subject to individual matter requirements, some of the generally acceptable evidence includes the following:
A brief history of the origin and creation of the mark;
Photos of the mark available for sale in commerce;
Revenue or sales figures, licence fees, and advertising expenses worldwide and in Thailand;
Evidence of sales in Thailand, including catalogues, brochures, receipts, invoices, import and export bills, and/or tax receipts;
Evidence of advertising or promotion in Thailand, such as copies of advertisements, magazines, and promotional materials, and/or social media presence, if any;
News articles or any other documents by third parties showing use and recognition of the mark;
Surveys, sales ranking, brand valuation, awards, and certifications from established organisations;
Printouts from the applicant’s website, if any, showing use of the mark; and
Printouts from other websites, blogs, or online newspapers mentioning the mark to show consumer recognition by the Thai public.
The Trademark Office places a very high burden of proof on the applicant in terms of the volume of evidence, requiring, at the very minimum, a period of two to three years of extensive use before the applicant files a trademark application for the 3D mark. Also, the evidence of use of the mark that is submitted must feature exactly the same mark as that intended to be filed.
Registration and exclusive rights in 3D trademarks
Upon registration, a 3D trademark is afforded the same level of protection as a standard word mark or a device mark. Section 44 of the Trademark Act governs the exclusive rights in a registered trademark, with the law stating that subject to “Sections 27 and 68, a person who is registered as the owner of a trademark shall have the exclusive right to use it for the goods for which it is registered”.
To preserve the validity of a registered trademark and maintain the exclusivity it confers, the registrant must ensure that the mark is used in the precise form in which it was registered with the Trademark Office. For 3D trademarks, this requires that the version employed in commerce corresponds exactly to the registered specimen in all dimensions, including width, length, and depth.
Although judicial precedents addressing non-use cancellation of 3D marks in Thailand remain scarce, existing case law concerning traditional marks demonstrates a strict interpretation of ‘use’, where even minor deviations from the registered form have been deemed sufficient to justify cancellation. It follows that the evidentiary threshold for 3D marks is unlikely to differ substantially, leaving registrants vulnerable if the commercial version of the 3D mark departs materially in its dimensions from the registered version.
Enforcement of registered rights in 3D trademarks
Extending the exclusivity principle in terms of enforcement of rights, the registered owner of a 3D trademark can bring a lawsuit on the ground of trademark infringement against any third party using an identical or confusingly similar mark in respect of exactly the same registered goods or services.
While the unauthorised use of an identical shape or a confusingly similar shape for the same goods or services grants the registered owner the right to initiate a legal action on the ground of trademark infringement under sections 108 and/or 109 of the Trademark Act, the Thai courts have yet to adjudicate case laws where the infringers alter the form of the registered mark, particularly for non-traditional marks, such as converting a registered 2D mark into a 3D shape, or vice versa.
Particularly in instances where an infringer takes a registered 2D trademark and converts it into a 3D shape for use, the court may look at whether the use of the 3D shape is intended to be a trademark use in order to constitute the offence of infringement, and if so, whether there is an intent to mislead by the infringer. Again, in the absence of judicial precedents in Thailand providing clarity on this issue, one may look at jurisprudence on traditional trademarks and argue that when a 2D trademark is used in a 3D manner on certain goods, it essentially presents the 2D shape, main elements, and combinations contained in the trademark on the goods, without changing the trademark itself.
The functional value of a 2D trademark being a source identifier extends to the goods covered by the trademark, so that consumers can naturally associate the source of the goods or services when purchasing related goods or enjoying related services, thus realising the purpose of “the use of the trademark”.
The same principle may apply when a registered 3D trademark is converted by an infringer to a 2D mark, in that the essence of the trademark being a source identifier remains, and by making an unauthorised use, the infringer violates the registrant’s exclusive right over the registered trademark.
Considering that Thai law provides for a remedy against trademark imitation, it can be argued that, despite alterations in form, the marks as essentially presented to the public – the main elements and their combinations – remain similar. Therefore, even an alteration in form may fall within the ambit of a trademark imitation offence.
Key takeaways on 3D trademarks in Thailand
While examination standards for 3D trademarks at the Trademark Office remain conservative, rendering registration on the ground of inherent distinctiveness difficult, the Thai courts have adopted a more progressive and liberal approach, overturning administrative refusals and allowing applicants to register their 3D trademarks.
Therefore, proprietors seeking protection for novel product shapes are well advised to obtain specialised legal guidance from local intellectual property experts and pursue registration on inherent distinctiveness where possible. Alternatively, applicants able to compile sufficient evidence of use to establish acquired distinctiveness at the time of filing may find this route a more practical and effective basis for registration.
Ultimately, the successful protection of 3D marks requires strategic navigation of both administrative and judicial processes. As jurisprudence continues to develop, greater clarity and consistency may emerge, both in terms of protection and enforcement of rights in 3D marks, reinforcing the role of 3D trademarks in safeguarding brand identity.
