You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

November 23, 2016

Important Supreme Court Decision on Suggestive Marks

Subscribe to Updates
Informed Counsel

The recent amendments to Thailand’s Trademark Act No. 3 B.E. 2559 (2016) introduce a number of significant changes. No changes, however, were made to the requirement of distinctiveness in Section 7, paragraph 2, which states: “a trademark 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.”

Brand owners often create marks that directly or indirectly describe their products or services. In Thailand, registrars usually interpret the requirement of descriptiveness strictly, and they have broad discretion in determining the translations of marks and whether certain portions of marks must be disclaimed. In addition, as the Board of Trademarks rarely disagrees with the registrar on these issues, disputes have frequently arisen between brand owners and the Trademark Office over the rejection of suggestive marks for descriptiveness.

In general, a suggestive mark is different from a descriptive mark because in the case of a suggestive mark, a consumer has to use some imagination or creative thinking to determine what kinds of goods or services are being offered under the mark, as opposed to a descriptive mark, where these goods or services are readily apparent from the mark itself.

A decision on distinctiveness was recently issued by the Supreme Court under Supreme Court Case 2587/2559, TMB Bank Public Company Limited v. the Department of Intellectual Property. In this case, the plaintiff filed a trademark application to register the mark “TMB Make THE Difference” ( ) for banking services in Class 36.

After reviewing the application, the registrar agreed to accept the mark for registration on the condition that the plaintiff must disclaim the exclusive right to the words, “Make THE Difference,” because these words are descriptive. The plaintiff did not agree with the registrar’s disclaimer requirement and decided to file an appeal to the Board of Trademarks.

The Board of Trademarks confirmed the registrar’s decision that the words must be disclaimed on the basis that they are descriptive. The Board also found that the evidence submitted by the plaintiff was not sufficient to prove that the plaintiff had widely and continuously used the words “Make THE Difference” to the point where they had gained a secondary meaning.

The plaintiff then filed a complaint to the Intellectual Property and International Trade Court (IP&IT Court), contending that the Board of Trademarks’ decision on the disclaimer was incorrect because “Make THE Difference” is an unusual combination of the three individual words, and together, they are not directly descriptive of the character or quality of the services.

The IP&IT Court agreed with the registrar’s and the Board of Trademarks’ assessments and ordered the plaintiff’s case to be dismissed. The plaintiff then filed an appeal with the Supreme Court. The Supreme Court took a different view toward the issue and considered the meaning of the words in the context of the plaintiff’s services.

The Supreme Court found that “Make THE Difference” is not a phrase common to other trade words published by the Trademark Office and that these words, together, are not directly descriptive of commercial banking services. The Supreme Court, therefore, ultimately concluded that the mark “TMB Make THE Difference” is registrable and the plaintiff was not required to disclaim the exclusive right to the words “Make THE Difference.” The Board of Trademarks’ decision had to be withdrawn.

It is striking that the Supreme Court appears to have a more nuanced approach in making determinations based on the descriptiveness of a mark. In this decision, the Supreme Court appears to be clearly distinguishing between suggestive marks and descriptive marks. If the reasoning that underlies this decision is subsequently followed by the registrar and the Board of Trademarks, this decision should have a lasting impact on the registrability of suggestive marks in Thailand.

Download Full Article
Related Professionals

Practices

Dispute Resolution and Litigation

Intellectual Property

Location

RELATED INSIGHTS​ 

August 13, 2026
Modern agricultural machinery is no longer purely mechanical but instead technology dependent. Modern tractors, harvesters, and other farm equipment increasingly incorporate embedded software, electronic control units, sensors, and digital diagnostic systems. While such technologies enhance efficiency, productivity, and precision farming, they also affect the manner of equipment repair and maintenance. As a result, farmers and independent repair providers may have little practical choice but to rely on authorized dealers, even for routine maintenance and repairs. Section 36 of Thailand’s Patent Act reflects the principle that the authorized sale of a patented invention usually exhausts the exclusive right of the patent owner over the specific product. This means that upon legal sale of the patented product, it can typically be used or resold without further authorization from the patent holder. This principle is relatively straightforward when applied to traditional mechanical equipment. Ownership of a machine ordinarily carries with it the practical ability to diagnose faults, replace worn parts, and restore the equipment to working order. Modern agricultural machinery, however, increasingly depends on embedded software, proprietary diagnostic systems, firmware updates, and other digital resources that may remain under the control of the manufacturer or patent holder. This tension lies within the “right to repair” debate. In the United States, on July 8, 2026, the Federal Trade Commission and five states announced a settlement with Deere & Company resolving allegations that Deere had unlawfully restricted farmers’ and independent repair providers’ ability to repair their equipment. Under the terms of the settlement, for the next ten years, Deere must provide repair resources, including software capabilities, on terms equivalent to those provided to authorized dealers. The Deere settlement highlights that the nature of ownership is changing, but legal concepts have not kept pace. Traditional patent-law concepts, including patent exhaustion, were developed with physical products
Read More
August 11, 2026
Cambodia’s Ministry of Justice has launched a new platform on its official website to publish notices of forced sales issued by each municipal and provincial court of first instance. The platform’s stated purpose is to inform the public and facilitate greater participation in forced-sale auctions conducted in connection with court-ordered enforcement proceedings. How the Platform Works The platform publishes forced-sale notices from courts of first instance across Cambodia’s municipalities and provinces and includes a link where the public can view properties currently subject to forced sale. To participate in a forced-sale auction, individuals can download Khmer-language bidding application forms through links provided on the platform. The form typically requires the applicant’s name, sex, year of birth, identity card number and issue date, and address, together with details identifying the immovable property (including its ownership certificate number), the relevant enforcement case number and date, and the reference to the public auction or tender announcement issued by the court. Completed application forms must be submitted directly to the specific municipal or provincial court that issued the forced sale. For further inquiries about a particular forced sale, interested parties should likewise contact the relevant municipal or provincial court. Forced Sale of Immovable Property in Cambodia The publication of these notices relates to the forced sale procedure for immovable property under Cambodia’s Code of Civil Procedure (CPC). Unlike property seizure by a court, a forced sale is a compulsory execution proceeding—a subsequent enforcement step that arises only after an underlying dispute has been adjudicated and a debtor fails to pay the debt or outstanding amount due under a final and binding judgment or other enforceable title of execution. For the purposes of this procedure, the term “immovable property” under the CPC refers to land, registered buildings, jointly held shares of such property, registered
Read More
August 10, 2026
Thailand has finalized its social media KYC (“know your customer”) rules under Notification of the Electronic Transactions Commission on Measures to Prevent Technological Crimes for Social Media Service Providers (No. 2), which was published in the Government Gazette on May 5, 2026, and will take effect on November 1, 2026. While an early draft of the notification proposed requiring social media platforms to arrange identification of every user account, the final notification is significantly more targeted, focusing on paid online advertising and advertiser identity verification. Though the regulatory initiative primarily aims to combat online fraud and technology-related crimes, it also has important consequences for intellectual property enforcement, because the verified platform records that will be generated under the new requirements can help IP rights holders to identify anonymous online infringers. Key Regulatory Mandates The notification requires social media service providers to verify the identity of advertisers before their paid advertisements are published and disseminated in Thailand through social media, regardless of whether the advertising fees come from the advertisers or third parties. Verification of an advertiser is valid for one year, after which verification would have to be performed again before the platform could publish additional paid advertisements from the advertiser. Permitted verification methods are specified under the notification. A platform may verify an advertiser by checking identity evidence and confirming the connection between the advertiser and that identity evidence, with the notification giving facial comparison against certain government-issued identity documents as an example. Alternatively, platforms may verify advertisers through a digital identity verification and authentication system with an identity-proofing assurance level not lower than the level prescribed by Thailand’s Electronic Transactions Commission. The notification further requires platforms to retain only the advertiser’s information necessary to identify the advertiser, beginning from the start of the advertising activity and for
Read More
August 6, 2026
Introduction: A Trademark Paradox in Sustainable Packaging Walk into any Thai supermarket, and the label-free water bottle is no longer a novelty. Thailand’s packaging market, valued at approximately USD 15.68 billion in 2025, is shifting toward minimalist, plastic-light designs as ESG pressures reshape how brands present their products. The country generated roughly 5.68 million tons of plastic waste in 2021, with a recycling rate of only 19 percent, and regulators are now considering rules that would allow label-free bottled water relying on embossing, laser printing, or QR codes instead of wrap-around labels. As packaging itself becomes the brand identifier, a paradox emerges: designs built to say the least often struggle hardest for protection under Thai intellectual property law. The Trademark Barrier: When Shape Is Not Enough Section 7, paragraph 2(10) of the Thai Trademark Act deems a shape distinctive only if it is not the natural form of the goods, is not necessary to achieve a technical result, and does not add value to the goods. The Department of Intellectual Property’s 2022 examination guidelines apply this test conservatively, as the following examples illustrate. A plain water bottle relying on subtle contours to signal its brand is typically read as just another bottle, not a source identifier. Acquired distinctiveness offers a theoretical escape route, but it demands extensive evidence of sales, advertising, and consumer recognition—an especially heavy burden for new entrants whose minimalist packaging has not yet achieved market prominence. The result is a structural bias against precisely the design innovation that sustainability goals are meant to encourage. Design Patents: A Partial, Imperfect Substitute Design patent protection, covering a product’s shape, configuration, or ornamentation, appears to offer an alternative route. In practice, it is constrained by the same forces driving the minimalist trend. Because many brands converge on similar solutions—clear
Read More