Effective as of 17 January 2022, a new Registrar's Examination Manual ("Examination Manual") has replaced the existing guidelines which seek to ensure that trade mark examinations are in alignment with global trade mark office standards.
Some of the changes are summarised as follows:
Under the previous requirement for a notarised Power of Attorney ("POA"), Registrars have the discretion on the formatting or language used. Under the new Examination Manual, the formatting or language are now standardised which should include the jurisdiction (or state of incorporation) of the Applicant, for example, Spruson & Ferguson Pty Limited, a corporation duly organized and existing under the laws of Australia .
The Notary Public notarising the POA does not have to be the same nationality as the Applicant but must be in the same country at the time of execution.
Clarity on distinctiveness
Prior to the updated Examination Manual, to determine whether a trade mark is distinctive would depend heavily on the broad individual discretion of the examining Registrar which resulted in inconsistent decisions. Under the previous examination practice, marks which were distinctive in most jurisdictions failed the distinctiveness test and were not registrable in Thailand. Under the new Examination Manual, the Supreme Court decisions were adopted to clarify the test on distinctiveness:
A wordmark containing more than 3 standard characters which are not generic, not descriptive, nor in standard order (i.e., ABC, 123) and will be deemed distinctive and registrable, such as:
Previously, marks of such nature must be filed in a unique manner or show that it has acquired distinctiveness through use.
B. Generic Marks
The Examination Manual also provides examples of generic marks which are not distinctive and cannot be registered:
- Generic word/term: International, Global, Warranty, First,
Second, ABC, 123, 3D, 4D
- Generic word/term related to the nation/ethnicity: Silkroad (refers to a well-known Arab trade route), Land of the Rising Sun (refers to Japan)
- Colour Name: Green, Red, Blue, Gold
- Phrase: Technology for life, Make it better
- Universal symbol: £, $, Σ, ♀, ♂, ▶, ⏯
- Device: a standard shape, label, or repetitive patterns without other distinct components such as:
Specification of Goods/Services
Although Thailand adopts the Nice Classification, the specification must be clear and specific, whereas broad terms will not be allowed. It has also been clarified under the new Examination Manual that every item must be clearly specified and itemised, and broad terms such as dietary supplements in class 5, and alcoholic beverages (except beers) in class 33 are not acceptable. An acceptable term would have to specify the main ingredient such as dietary supplements made of mineral, or clearly specify each item such as wine; gin; whiskeys. For the purpose of reference, a list of approved goods/services is accessible at: https://tmsearch.ipthailand.go.th/
Further, there are only three opportunities to respond to a specification objection, and after the second response, the 3rd objection will require the applicant to either file a total acceptance of the Registrar's proposal or a full appeal against the objection with no further amendments allowed.
As a whole, the conformity of the new Examination Manual with international practices is an encouraging development for brand owners seeking protection in Thailand. If you have had distinctive marks rejected in Thailand before, there may be an opportunity to refile those marks if they meet the distinctives criteria under the new guidelines. It is expected that there will also be a reduction in the number of objections raised as the Thai examiners now adopt the new Examination Manual when examining applications. For more information about the Examination Manual and general IP matters in Thailand, please get in touch with our trade marks team.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.