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 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
August 6, 2026
Every month, VAT-registered businesses in Thailand calculate their output and input VAT and file a return to pay the net amount due or claim a refund. Yet a common and costly dispute arises when a business that has paid input VAT to its supplier—and done everything asked of it—later finds that input VAT rejected on the grounds that the tax invoice was issued by “a person not entitled to issue tax invoices.” In these cases, a buyer may have confirmed the supplier’s VAT registration on the Revenue Department’s website, paid through the banking system, received a complete tax invoice, and kept full payment and inventory records. Even so, if the Revenue Department later determines that the supplier did not genuinely make the sale or collected the VAT without remitting it, the department can disallow the input VAT and assess additional tax, surcharge, and penalty—often more than a year after the transaction. A new article from tax and dispute resolution specialists at Tilleke & Gibbins in Bangkok examines how the Revenue Department and the courts approach these disputes, including two recent Supreme Court (Tax Division) decisions confirming that the taxpayer bears the burden of proving a supplier genuinely sold and delivered the goods and received payment. It considers why the VAT registration system offers no legal safe harbor, why the evidentiary burden falls hardest on online and cross-border transactions where buyers and sellers never meet, and how the Revenue Department’s own digital infrastructure could detect non-remitting suppliers at the source rather than shifting the loss to good-faith buyers. The article also sets out practical guidance: how to build a comprehensive “know-your-supplier” file at the time of a transaction, the procedural steps and strict deadlines for challenging a VAT assessment, and why dispute readiness belongs alongside tax planning at the center
Read More
August 4, 2026
Intellectual property (IP) protection sometimes hinges on fame and recognition. However, this alone will not always be sufficient to overcome an IP dispute when it involves contractual obligations or registered rights. Below are five cases from around the world that tackle some of the basic issues in IP registration, ownership, commercialization, and enforcement. 1. USA: Taylor Swift Trademark Application Refused Taylor Swift recently filed a trademark application to register “The Life of a Showgirl,” which is the title of her 12th studio album. When examining a trademark application, the examiner considers various factors before deciding whether it should be registered. One of these factors is whether there is a likelihood of confusion (i.e., would a regular consumer mistake the origin of the trademark). In Taylor Swift’s case, the US Patent and Trademark Office (USPTO) decided that that there would be a risk of confusion. This decision was based on the existing registered trademark, “Confessions of a Showgirl,” owned by Maren Wade, which was registered in 2015. The USPTO refused Taylor Swift’s application based on the shared key distinctive element “of a showgirl,” the lack of sufficient distinguishing terms, the marks being used in overlapping markets (entertainment and performances), and because consumers may assume a common commercial source. Maren Wade then filed a lawsuit in California against Taylor Swift and her affiliated companies, arguing that Taylor Swfit’s branding is confusingly similar in structure, wording, and overall commercial impression to her registered mark. She is also drawing on the USPTO’s refusal of Taylor Swift’s application to support her argument of a likelihood of confusion. A judgment has not yet been reached in this case, but it serves as an important reminder of the importance of satisfying the essential elements required for IP registration. 2. Australia: Katy Perry v. Katie Perry In
Read More