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Effective January 17, 2022, a new Registrar’s Examination Handbook (“Examination Handbook”) replaced existing guidelines that aim to ensure trademark examinations meet global trademark office standards.
Some of the changes are summarized as follows:
Under the previous requirement of a notarized power of attorney (“POA”), registrars have discretion over formatting or language used. As part of the new exam manual, formatting or language is now standardized, which should include the jurisdiction (or state of incorporation) of the applicant, for example, Spruson & Ferguson Pty Limiteda company duly organized and existing under the laws of Australia .
The notary public notarizing the power of attorney need not be of the same nationality as the applicant, but must be in the same country at the time of execution.
Clarity on distinctiveness
Before the Examination Manual was updated, the determination of distinctiveness of a mark relied heavily on the broad individual discretion of the examining Registrar, resulting in inconsistent decisions. According to past examination practice, marks that were distinctive in most jurisdictions did not meet the distinctiveness test and were not registrable in Thailand. As part of the new Examination Handbook, Supreme Court decisions have been adopted to clarify the distinctiveness test:
A wordmark containing more than 3 standard characters that are not generic, descriptive, or in standard order (i.e. ABC, 123) and will be deemed distinctive and registrable, such as:
Previously, marks of this nature had to be filed uniquely or show that they had acquired distinctiveness through use.
B. Generic brands
The exam manual also provides examples of generic marks that are not distinctive and cannot be registered:
- Generic term/word: International, Global, Warranty, First, Second, ABC, 123, 3D, 4D
- Nation/ethnicity generic word/term: Silkroad (refers to a well-known Arab trade route), Land of the Rising Sun (refers to Japan)
- Color: Green, Red, Blue, Gold
- Phrase: Technology for life, make it better
- Universal symbol: £, $, Σ, ♀, ♂, ▶, ⏯
- Device: A standard shape, label, or repeating patterns with no other distinct components such as:
Specification of goods/services
Although Thailand adopts the Nice Classification, the specification must be clear and precise, while general terms will not be allowed. It has also been clarified in the new examination manual that each item must be clearly specified and detailed, and general terms such as food supplements in class 5, and alcoholic beverages (except beers) in class 33 are not acceptable. An acceptable term should specify the main ingredient such as mineral-based food supplements, or clearly specify each item such as
wine; Gin; whiskeys. As an indication, a list of approved goods/services is available at: https://tmsearch.ipthailand.go.th/
Also, there are only three opportunities to respond to a specification objection, and after the second response, the 3rd the objection will require the applicant to file a full acceptance of the Registrar’s proposal or a full appeal against the objection with no further changes permitted.
Overall, the compliance of the new examination manual with international practices is an encouraging development for trademark holders seeking protection in Thailand. If you have previously had distinctive marks rejected in Thailand, it may be possible to re-file those marks if they meet the criteria for distinctiveness under the new guidelines. It is also expected that there will be a reduction in the number of objections raised as Thai examiners are now adopting the new examination manual when examining applications. For more information on the exam manual and general intellectual property issues in Thailand, please contact our trademarks team.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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