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:
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.