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

August 29, 2018

Letter Marks in Thailand: Supreme Court Provides Guidance on Distinctiveness

Subscribe to Updates
Informed Counsel

Many business owners wish to protect trademarks or service marks in Thailand in the form of abbreviations, acronyms, initialisms, or letters that are not generally used words or that cannot be pronounced. Thai Trademark Registrars and the Board of Trademarks take a conservative view of the distinctiveness of such marks, which is not always echoed by the courts. Brand owners therefore need to strategically consider how such marks are treated to determine whether their letter marks  are sufficiently distinctive to be registrable.

According to section 4 of the current Thai Trademark Act, a mark can be a “photograph, drawing, device, brand, name, word, text, letter, numeral, signature, combination of colors, figure or shape of an object, sound, or any combination thereof.”

Section 7 of the Trademark Act then sets out the criteria for trademark distinctiveness, stating that “a distinctive trademark is a trademark that enables the public or users of the goods under said trademark to know and understand that such goods are different from other goods. A trademark containing or consisting of one or more of the following as an essential element shall be deemed distinctive: … (4) An invented letter or numeral.”

According to the Department of Intellectual Property’s Guidelines on the Examination of Trademarks, an invented letter means any letter of any language that is represented in any of the following manners: (1) interconnected letters; (2) a letter (or letters) with depth; (3) a letter (or letters) with an inside pattern; and (4) a letter (or letters) with shadowing/shading. In interpreting these guidelines, the Registrar and the Board of Trademarks usually reject marks of three or four letters that do not form words or that cannot be pronounced, if they are not presented in stylized form. This leaves brand owners to question what threshold of stylization is sufficient in order to achieve distinctiveness.

A lot of letter mark applications are rejected by the Trademark Registrar and the Board of Trademarks on the grounds of lack of distinctiveness, most of which are then abandoned by the applicants. However, some applicants choose to pursue the registration of their marks after rejection, with some examples including:

After being rejected for lack of distinctiveness, the applicants for the above marks brought their cases before the Intellectual Property and International Trade Court (IP&IT Court), and then ultimately to the Supreme Court. The Supreme Court issued similar opinions in all three contested cases, finding that the unusual combination of three letters in each of the marks, even if not presented in a stylized manner, rendered each of the marks sufficiently distinctive and registrable.       

Despite the Supreme Court’s positive reasoning in these cases, the Trademark Registrar maintains a strict interpretation regarding the distinctiveness of non-stylized letter marks. In 2013, the Trademark Registrar denied the registration of the trademark . The owner of this mark chose to challenge this rejection in the IP&IT Court and the Supreme Court, as Supreme Court Case No. 862/2561.

The Supreme Court decided again to confirm the registrability of the unusual combination of letters. Its decision, handed down in May 2018, affirmed the decision of the IP&IT Court to reverse the decisions of the Registrar and the Board of Trademarks, which had previously rejected an application to register the mark in International Classes 7 and 9.    

The Registrar, with whom the Board of Trademarks agreed, found that the mark was nondistinctive because the letters “B,” “F,” and “t” were letters of normal appearance that were not presented in a stylized manner.   

Striking down that decision, the Supreme Court considered the mark to be comprised of three letters, “B”, “F,” and “t,” which do not form a specific word with any particular meaning, appearing on a red background, which helps to make these Roman letters more distinguishable and outstanding from normal non-stylized Roman letters. The court reasoned that this makes it easier for consumers to recognize and distinguish this applicant’s mark from other marks, and therefore deemed the mark sufficiently distinctive to be registrable under the Trademark Act.   

We can infer from this that Roman letters that are not assembled as words, cannot be pronounced, and are not presented in sufficiently stylized forms, are still not acceptable to the Trademark Registrar and the Board of Trademarks in Thailand. A business that wishes to apply for an initialism or a three-letter (or more) trademark of its company name, using only letters, might have to plan strategically, well in advance, to successfully apply for this type of trademark. If a brand owner wishes to avoid rejection based on nondistinctiveness during the examination stage, it should design a mark that is sufficiently stylized. This appears to be the best option for brand owners seeking a better-than-average chance of registering their letter marks without having to appeal to the courts. However, if an owner wishes to register this type of mark in a non-stylized form, the courts are more open-minded, and the well-informed owner can prepare to appeal any refusals before they occur.

Download Full Article
Related Professionals

Practices

Dispute Resolution and Litigation

Intellectual Property

Location

RELATED INSIGHTS​ 

October 20, 2024
The annual statistics issued by the Intellectual Property Office of Vietnam (“IP Office”) in recent years show an increase in the number of IP transactions and applications to establish IP rights, including requests for the recordal of assignment of IP rights. Nevertheless, the numbers of trademark assignment recordals approved by the IP Office has not followed this trend, falling from 1,281 requests approved in 2022 to 1,120 requests approved in 2023. This decrease may be due to the IP Office’s overly strict viewpoint in approving trademark assignments, including its rejection of assignment recordal on the ground of conflict with the assignor’s trade name. IP Office’s practice on assignment recordal Vietnam’s IP Law restricts the assignment of trademarks in several cases, as set out in Article 139.4 that “the assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks.” Thus, when an assigned mark is identical to the dominant element of the assignor’s company name, the IP Office will view that the assignee’s use of the mark will result in confusion with the assignor’s trade name, and then instantly reject the assignment request. In this case, the IP Office will only accept the assignment if the IP holder can submit documents issued by relevant authorities proving at least one of the following conditions: The assignor has assigned all business premises and operations under its name to the assignee; The assignor has removed business lines relating to the goods/services bearing the trademarks and such removal is recorded in the Enterprise Registration Certificate; The assignor has been dissolved or does not exist after signing the agreement; The assignor has changed its name after signing the agreement so that it does not contain any element identical or similar to the assigned
Read More
October 7, 2024
Starting October 15, 2024, Cambodia will implement a new penalty for late patent annuity payments and restorations, according to an unofficial announcement from the country’s Department of Industrial Property under the Ministry of Industry, Science, Technology, and Innovation. This new penalty will apply to patents, utility model certificates, and plant variety protection registrations. To avoid additional charges and prevent the abandonment of any pending applications or the lapse of registrations, applicants and registration owners must pay each annuity within the six months before the annuity period starts, or by its due date. If the annuity is not paid by the due date, a grace period of six months is allowed for late payment, with a daily charge of KHR 500 (approximately USD 0.125) per day. If payment is not made within this grace period, the patent will be deemed withdrawn or will lapse. However, the Patent Office can initiate the restoration process within the last six months of the annuity period. This requires a USD 25 restoration fee plus an additional daily charge of USD 0.125 from the start of the grace period until payment is completed. To avoid additional charges and prevent the potential abandonment of applications or registrations, companies and their appointees need to keep track of all annuity due dates for patents, utility model certificates, and plant variety protection registrations and pay all annuities well in advance of the due date. For more details on this penalty, or on any aspect of intellectual property protection in Cambodia, please contact Tilleke & Gibbins at [email protected].
Read More
October 3, 2024
Lawyers from Tilleke & Gibbins’ intellectual property team, under the guidance of Darani Vachanavuttivong, managing partner and managing director of the firm’s intellectual property department, have contributed an update to Thomson Reuters Practical Law’s Intellectual Property Rights in Thailand: Overview guide for 2024. This guide provides a comprehensive overview of intellectual property (IP) laws in Thailand, covering key areas such as patents, trademarks, copyright, trade secrets, and registered designs. It also addresses the enforcement of these rights, as well as the procedures for registering patents, trademarks, and other IP protections. The Thailand chapter outlines important aspects of IP law, including: The conditions and procedures for obtaining patents and registered designs, including the different types of patent protection available. Legal requirements for registering trademarks, including what constitutes a distinctive and legally protectable mark. The scope of copyright protection and the rights granted to creators of original works, including economic and moral rights. Protection of trade secrets and confidential information under the Trade Secrets Act, which safeguards valuable business information. This guide is a valuable resource for legal practitioners and businesses seeking to understand the nuances of Thailand’s IP landscape. To explore the latest version of Intellectual Property Rights in Thailand: Overview, please visit the Practical Law website and enroll in the free Practical Law trial to gain full access.
Read More
October 2, 2024
As Thailand is a contracting state of the UN Convention on the Recognition and Enforcement of Foreign Arbitral Awards, international arbitral awards can, in principle, be enforced in Thailand. However, not all awards will necessarily be enforceable. The Arbitration Act BE 2545 (2002) gives courts the discretion to deny the enforcement of an award if the court determines that enforcing it would be contrary to “public order or the good morals of the people” (often referred to as “public policy”). Similarly, the Arbitration Act allows a court to set aside a domestic award if its recognition would violate public policy. This discretionary power of the court is prescribed by the law and does not require any party to make an argument on public policy grounds to trigger such power. A recent Supreme Court judgment demonstrates that a court considering an award will review the legality of the arbitral proceedings as well as the content of the award. In this case, the Supreme Court set aside an award on the grounds that it violated public policy because it was the result of arbitration that did not proceed in accordance with the relevant law. Under Thai bankruptcy law, after the Bankruptcy Court accepts a request for rehabilitation of a debtor, all civil proceedings against that debtor, including arbitration proceedings, must be stayed until the court orders otherwise or until the rehabilitation case ceases. In this matter before the Supreme Court, however, the arbitrator continued with the arbitration and went on to render an award even after the court had accepted the request for rehabilitation. The award was later challenged to be set aside on the grounds that continuing with the arbitration was against public policy. While setting aside the award was arguably unnecessary, in this case (as the relevant bankruptcy law
Read More