April 27, 2011

Watch Out – Your Famous Mark Could Be Rejected!

Thailand: IP Developments, Tilleke & Gibbins Client Newsletter

Trademark owners are frequently surprised by a particular approach used by the Board of Trademarks which has now become entrenched in its practice. Over the past several years, the Board has main­tained its decision-making trend regarding marks which consist of a distinctive word or well-known house mark combined with other descriptive or nondistinctive words, in which the Trademark Registrar initially required the disclaimer of such descriptive\nondistinctive words. The applicants of such trademarks, who disagreed with the disclaimer requirement and appealed the disclaimer requirement with the Board of Trademarks, usually ended up losing their mark as a whole. This is because the Board not only rejects the contested disclaimer requirement; its decision extends to rejecting the mark in its entirety without mentioning the remaining distinctive word\house mark incorporated in the mark. This article illustrates the Board’s practice through examples and provides advice to trademark owners on how best to deal with the situation.

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