The number of mobile applications available for consumers to download onto their mobile devices is staggering. From AI-powered photo-editing applications to standard applications such as Contacts, Email, and Settings, all mobile applications usually have one thing in common: icons for users to access the application on their mobile device. The function of an application icon is to help users visually recognize and distinguish one application from another and navigate their mobile devices easily. This function echoes those of trademarks: a recognizable sign or design which can identify products or services of a particular source from those of others in the market. Not surprisingly, many technology companies have registered their application icons as trademarks. However, while registration of such marks should be straightforward, it is not the case in Thailand. We will discuss the reasons why this is and advise what applicants can do to help protect their application icon in Thailand.
As a graphical sign, application icons should be considered inherently distinctive and registrable as a trademark, especially if the icon is a new design and not merely a generic icon e.g. a standby icon or Wi-Fi icon.
In Thailand, however, trademark examiners often exercise a lot of imagination when examining graphical trademarks, including application icons. If they can draw a meaning from the application icon, which usually contains visual clues as to what the mobile application does, and make a connection with the function of the software, the mark is rejected for being directly descriptive. For example, an address book for contacts application, a musical note for music application, a map for maps application, a telephone handset for telephone calling application, all, despite of stylistic or unique design, may be considered descriptive by Thai examiners.
The practice of the Thai examiners has resulted in a considerable number of rejections against mobile application icons. For example, the following marks have been rejected when applied for computer software in class 9, which covers mobile applications, even when the design of the mark is new and distinctive:
(App.No. 890332) (App.No. 890331) (App.No. 974542)
This restrictive approach by the examiner has caused much concern to technology companies when trying to register their application icons in Thailand even though the icons have been registered elsewhere around the world. Therefore, we provide suggestions for those who are seeking to apply to register their application icons in Thailand:
- Apply for computer software/software applications without specific function –To increase the chance of success in obtaining registration, it is possible to apply to register the goods “computer software” or “software applications” alone without specifying the function of software. Such descriptions are generally accepted by Thai examiners and are broad enough to cover all types of software. It is unnecessary to specify further what the software does. This will make it more difficult for examiners to draw the connection between the icon and the function of the mobile application.
- Submit evidence of use to prove acquired distinctiveness - If substantial evidence of use of the application icon is available, it is possible to submit it upon filing the trademark application to show that the application icon has acquired distinctiveness. Substantial evidence showing use of the icon in Thailand is required and the chance of success will depend on the volume and type of evidence available. The number of active users or downloads should be included. However, in practice, the examiner requires a substantial amount of documents showing traditional methods of sales and advertising, such as sales invoices and local advertisements in newspapers, magazines or public places to show acquired distinctiveness. This is unreasonably burdensome and not in tune with the digital age and consumer behavior in purchasing or using mobile applications. It is therefore often challenging to produce the preferred type and volume of evidence required by examiners.
- Be prepared to take the case to the court – Thai courts adopt a more international approach when considering distinctiveness. In particular, the courts have found marks containing images invented or created by the applicant to be inherently distinctive and registrable. This approach is much less restrictive compared with the approach adopted by examiners or the Trademark Board. Therefore, if the application icon is an invented image created by the applicant, the chance of successfully registering application icons on appeal to the court is good. Nevertheless, an appeal to the Trademark Board against the examiner’s objection is a required stepping stone to the courts.
- Consider an alternative form of protection – Finally, copyright can offer an easy way to obtain protection of application icons as a graphical element. Although optional, we recommend recording the copyright with the Department of Intellectual Property in Thailand. Without the copyright recordal, it is difficult in practice to obtain assistance from law enforcement officers when trying to enforce copyright against a third party. Another benefit of copyright protection is that the right is not limited to certain goods or services. Any unauthorized reproduction is potentially a copyright infringement.
It is also worth noting that a trademark application takes up to a year to be examined. If the applicant files an appeal and successfully reverses the examiner’s rejection, such appeal adds another 2 to 3 years before the mark is finally registered. Given the short life of most application software, by the time the application icon is registered as a trademark, the design of the icon may have changed, updated or no longer valuable in the fast-changing digital age. Trademarks may be useful for application icons that are the developer’s core product where a longer market life can be anticipated or icons that include the developer’s corporate logo which is unlikely to change. A good filing strategy could save valuable time and costs.
Although the examiner’s restrictive approach when considering distinctiveness of a trademark is not isolated towards application icons, the underlying function of application icons in mobile devices and the proliferation of mobile applications in the digital age points towards an increasing rate of trademark rejection on such grounds in Thailand. Application developers, designers and tech companies who seek protection of their application icon through trademark in Thailand should bear in mind the examiner’s practice and consider our suggestions to avoid being caught off guard when applying to register a trademark in Thailand.