April 28, 2011

Considerations for Proving Secondary Meaning of a Nondistinctive Mark

Asia IP

Among the criteria for trademark registration in Thailand, the issue of “distinctiveness” can often present a hurdle for applicants. If the Registrar finds that an applied-for mark lacks distinctiveness on absolute grounds, the applicant will be asked to submit evidence of use of the mark to prove that it has acquired distinctiveness through use. If the evidence fails to convince the Registrar that it has acquired distinctiveness, the application will be rejected and the applicant may then file an appeal with the Board of Trademarks and at the Courts, respectively. The appeal can be based on the inherent distinctiveness of the mark and/or on the acquired distinctiveness issue. Two recent Supreme Court decisions offer guidance in how the Thai authorities perceive distinctiveness on an inherent and acquired basis.

AUTHORS

RELATED INSIGHTS​