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

July 6, 2012

Thai Supreme Court Clarifies When Mark Is Suggestive, Rather Than Descriptive

Subscribe to Updates
World Trademark Review

This article first appeared on WTR Daily, part of World Trademark Review, in May 2012. For further information, please go to www.worldtrademarkreview.com.

Brand owners and Thailand’s Trademark Office frequently disagree as to how to distinguish between a suggestive mark and a descriptive mark.

According to Section 7(1) of the Thai Trademark Act BE 2534 (1991), as amended by the Trademark Act (No 2) BE 2543 (2000), a “distinctive” trademark is sign which enables the general public, or the consumers, to distinguish the goods bearing the sign from other goods.

In addition, Section 7(2) clearly states that:

“a trademark containing, 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 to be distinctive.”

Within the context of the legislation, disputes between brand owners and the Trademark Office—specifically, the registrar of trademarks and the Board of Trademarks—have frequently arisen over whether the marks applied for are distinctive.

A recent example, Liebherr-International AG v Department of Intellectual Property (Supreme Court Case 9466/2554), was published in April 2012.

In this case, Liebherr-International AG filed an application to register the mark BIOFRESH for “apparatus for refrigerating and freezing” in Class 11 of the Nice Classification. The registrar of trademarks deemed that the mark was descriptive of the goods; after reviewing the appeal filed by Liebherr, the Board of Trademarks confirmed the registrar’s decision that the mark was not registrable due to a lack of distinctiveness.

Liebherr filed a complaint with the Intellectual Property and International Trade Court (IP&IT Court), arguing that the board’s decision was incorrect because “biofresh” was an invented word; therefore, the BIOFRESH mark was not directly descriptive of the character or quality of the goods.

After reviewing the case and the arguments presented, the IP&IT Court found that the mark was distinctive, and ordered that the decisions of the registrar and the Board of Trademarks be withdrawn. The Department of Intellectual Property filed an appeal with the Supreme Court.

The Supreme Court held that BIOFRESH, when used with “apparatus for refrigerating and freezing” in Class 11, was a suggestive mark, which made consumers think, or imagine, that the goods can help maintain the freshness of fruits, vegetables or meat. Therefore, the term “biofresh” had no meaning which directly described the character or quality of the goods. The Supreme Court thus found that the mark BIOFRESH was distinctive and registrable.

However, the Supreme Court noted that, if the registrar determines that a part of a mark includes a word that is commonly used in trade, he/she may order that the applicant disclaim this part. The Supreme Court concluded that the board’s decision to reject the application for BIOFRESH was incorrect, and ordered that it be withdrawn.

There have been several other cases in which the IP&IT Court and the Supreme Court have disagreed with the registrar and the Board of Trademarks over the perceived distinctiveness of a mark. Brand owners should thus consider the possibility of raising an argument based on this issue, because, after review by the courts, their mark might be deemed to be suggestive, rather than descriptive.

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