Thailand brings up Draft Amendment to TM Examination Manual

Thailand brings up Draft Amendment to TM Examination Manual

Recently, the Department of Intellectual Property (DIP) in Thailand publishes its draft amendment to the Trademark Examination Manual. Through this draft amendment, the Department tries to outline and formalize current practices of the Trademark Examiner and also providing guidelines on areas left to the examiner's discretion.

Nuttachal Unaratana, Principle & Thailand Head of Trademark at Rouse in Bangkok said, "The Draft Manual aims to solve problems prevalent in the current Thailand trademark system and is open for public comment until March 10, 2021,"

Why such a draft amendment was indeed necessary was because most of the marks are rejected by DIP for being suggestive and descriptive. The brand owners are made to appeal to the IP courts incurring a heavy cost and further delay resulting in frustration of brand owners and further lack of encouragement in filing in Thailand.

In summary, the following key amendments have been proposed in the Draft Manual:

• Inherent registrability:

 Five levels of distinctiveness (from highest to lowest) are formally recognized: fanciful marks, arbitrary marks, suggestive marks, descriptive marks, generic marks.

 Generic terms, symbols, and descriptions are considered devoid of distinctiveness.

 Chinese character marks are now recognized as inventive even if the character combination does not have a meaning.

 A unique combination of letters and numbers of at least three symbols is now recognized as inherently distinctive,

 Detailed guidelines for proof of acquired distinctiveness have been set out.

Unaratana says. "However, common sequences of letters or numbers (i.e. "ABC," "123") remain unregistrable." Moreover, he says, "The TMO will take advertising on social media into account and a 'substantially extensive' period of time is now explained to be two or more years

• Prohibited marks:

 Country names or their abbreviations are prohibited from registration unless the applicant provides a letter of authorization 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, Unaratana adds. "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."

• The behaviour of the applicant is now taken into account to examine whether a mark is against public policy, public order, or morality, Unaratana says. "A mark comprising 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," Unaratana adds. "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, Unaratana says. "Broad descriptions of services and more specific goods are considered as not overlapping."

• Letters of consent: set 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 Trademark Act, Unaratana says. "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 has 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," says Unaratana.