On 24 February 2021, Thailand's Department of Intellectual Property ("DIP") published its draft amendments to the Trademark Examination Manual (the "Draft Manual"), outlining and formalising current practices of trademark examiners and providing guidelines on areas left to examiners' discretion. The Draft Manual aims to solve problems prevalent in the current Thailand trademark system and is open for public comment until 10 March 2021. Under the current system, the DIP rejects a majority of marks for being suggestive or descriptive. The average chance of overturning at the Trademark Board is also less than 40%. Brand owners have to resort to filing expensive an administrative litigation appeal with the IP Courts, which involves the full procedure of a court case. The result is that brand owners are frustrated with the system and the current practice discourages the filing of trademarks in Thailand, which benefits infringers and is detrimental to the robustness of the trademark system, Thai consumers and brand owners.
In summary, the following key amendments have been proposed in the Draft Manual:
- Inherent registrability:
- Five levels of distinctiveness (from highest to lowest) formally recgnised: fanciful marks, arbitrary marks, suggestive marks, descriptive marks, generic marks.
- Generic terms, symbols, and descriptions are considered as devoid of distinctiveness.
- Chinese character marks are nw recognised as inventive if the character combination does not have a meaning.
- A unique combination of letters and numbers of at least 3 symbols is now recognized as inherently distinctive. However, common sequences of letters or numbers (i.e. "ABC", "123") remain unregistrable.
- Detailed guidelines for proof of acquired distinctiveness have been set out. The TMO will take advertising n social media into account and a 'substantially extensive' period of time is now explained to be 2 or more years
- Prohibited marks:
- Country names or their abbreviations are prohibited from registration unless the applicant provides a letter of authorisation from the embassy, ministry of commerce or an equivalent authority from the relevant country to confirm that the applicant is eligible to use the country name or its abbreviation as a trademark. If the country name is used as part of a mark to indicate the source of the goods or services (e.g. 'from China', 'Made in Japan'), the mark will be registrable provided the applicant holds the corresponding nationality.
- Behavior of the applicant is now taken into account to examine whether a mark is against public policy, public order, or morality. A mark comprised of national landmarks, governmental or medical symbols, marks of other owners, or applied for illegal goods is prohibited from registration.
- The law currently prohibits registrations of marks featuring another party's well-known mark. The current 2016 Trademark Examination Manual outlines that examiners should look at the TMO's well-known mark database when assessing whether a mark is a well-known mark. The Draft Manual further supplements this by stating that examiners are also to consider decisions of the Trademark Board where a mark has been declared to be well-known.
- Disclaimers: states that a disclaimer affects all classes in a multi-class application.
- Citations: sets out the assessment of similarities for each type of mark in detail and requires the consideration of consumer groups, whether goods or services require supervision by experts, purpose(s) of use, channel(s) of trade, and price. Broad descriptions of services and more specific goods are considered as not overlapping.
- Letters of consent: sets out detailed guidelines of when a letter of consent can be used in a very limited circumstance, as permitted under the recent amendment to the Trade mark Act. Examiners can accept a letter of consent as a way to overcome a citation, provided that the cited owner of the mark and the applicant have a history of assigning confusingly similar marks between each other.
- Detailed formality guidelines (e.g. powers of attorney, translations)
The proposed amendments to the Manual are, in many ways, a step forward, and will provide further certainty for brand owners in the way applications will be assessed. There are still some areas where further discussion and refinement is likely to be appropriate. The DIP had allowed until 10 March for feedback. If you would like to provide feedback or discuss any of the proposed amendments, please get in touch with your usual Rouse contact, or Nuttachai Unaratana, Principal & Thailand Head of Trade Marks.