Distinctiveness is a fundamental requirement for a trademark’s registration and protection under Thai law. The Thai courts typically assess distinctiveness based on a mark’s inherent characteristics rather than its use, as proving acquired distinctiveness through use requires substantial evidence, including the duration of use, extent of distribution and promotional efforts.
However, the Intellectual Property and International Trade Court (IP & IT Court) has recently ruled that the figurative mark WEPLAY had acquired distinctiveness through use – an uncommon ruling under Thai trademark law. Subsequently, the Court of Appeal for Specialised Cases affirmed the mark’s inherent distinctiveness based on a holistic assessment of its components.
This article discusses the criteria for proving both inherent and acquired distinctiveness, offering examples from both courts to provide valuable insights into case preparation and understanding of how the courts assess distinctiveness.
Background
In 2017 the plaintiff filed a trademark application for the mark depicted below for goods in Class 28, including toy building blocks:
The registrar rejected the application on the grounds of non-distinctiveness under Section 7 of the Trademark Act. The plaintiff appealed to the Board of Trademarks, which considered that, when the term ‘weplay’ is used for goods in Class 28, it is descriptive of the nature of the goods applied for as “playthings”. Therefore, ‘weplay’ was deemed nondistinctive under Section 7, Paragraph 2(2) of the Trademark Act.
IP & IT Court decision
In 2024 the IP & IT Court ruled that the term ‘weplay’ is not a coined or invented word; instead, it is a combination of ‘we’ and ‘play’, conveying the meaning of ‘we play’. When the term is used for goods in Class 28, it describes the nature of the goods as “playthings”. Consequently, the mark was deemed non-distinctive.
However, the court considered the evidence presented by the plaintiff, which showed that the latter had been selling the product in Thailand for over 10 years. This evidence, including invoices, online and print catalogue advertisements, as well as other documentation, confirmed the continuous use of the trademark alongside widespread product distribution and advertising in Thailand for over 10 years. This evidence conclusively established that goods bearing the mark had been extensively sold, distributed and advertised; therefore, the mark had acquired distinctiveness through continuous use under Section 7, Paragraph 3 of the Act. The IP & IT Court, as the court of first instance, thus adjudicated that the mark was registrable.
Both parties appealed.
Appeal decision
On 26 February 2025 the Court of Appeal for Specialised Cases held that the mark at issue consisted of two key elements:
- the word ‘weplay’; and
- a rounded-shaped device with an unusual combination of colours.
The term ‘weplay’ was found to be suggestive rather than descriptive, requiring a consumer’s interpretation to associate it with the goods. When combined with the graphic element, the mark as a whole was distinctive, enabling consumers to identify and
differentiate the goods. Accordingly, the trademark meets the distinctiveness criteria under Section 7, Paragraph 1, and Section 7, Paragraph 2(8) of the act.
The appellate court thus concluded that the mark was inherently distinctive.
Comment
The case highlights the adoption by the Thai courts of a holistic approach, contributing to a more dynamic framework for assessing trademark distinctiveness. It also shows a growing tendency to consider acquired distinctiveness through use, making it a more flexible factor in trademark litigation.
This article first appeared in WTR Daily, part of World Trademark Review, in June 2025. For further information, please go to www.worldtrademarkreview.com.
