Trademark protection establishes brand identity in Thailand’s competitive food market. However, applicants using foreign-language terms often face heightened scrutiny. This is especially true when officials deem the terms generic or descriptive. This case note reviews a recent refusal of a Chinese-character mark in Class 30 and highlights the challenges of distinctiveness under the Madrid Protocol.

Recently, a foreign food producer applied for trademark protection in Thailand for a Chinese-character mark under the Madrid Protocol. Subsequently, the Trademark Registrar issued a total provisional refusal. The Registrar rejected the mark because the term was “commonly used”. Specifically, the characters referred to a descriptive phrase meaning “south overseas Chinese”.

Consequently, the Registrar determined that this wording was generic. Therefore, it did not function as a distinctive indicator of origin for the goods. This decision relied on Section 7, first paragraph, of the Thai Trademark Act.

You cannot register a mark that consists of common or generic expressions in any language unless it has acquired distinctiveness through extensive use.

The Department of Intellectual Property (DIP) translates and interprets foreign words. They assess whether the terms are descriptive or generic in relation to the goods or services

The applicant must provide strong evidence to prove their case. Specifically, they must show that Thai consumers associate the term exclusively with their goods, despite the generic meaning.

This case demonstrates that foreign-language marks undergo the same distinctiveness scrutiny as Thai or English marks. Furthermore, officials may refuse widely recognized terms if they carry a generic or descriptive meaning in translation.

If a trademark merely describes the characteristics of the goods, the applicant must pursue an appeal. However, you must substantiate this appeal with strong evidence. Specifically, you need to demonstrate extensive use in Thailand for at least three to four years. Without sufficient proof of use, the likelihood of success on appeal remains relatively low.

Alternatively, applicants should modify the trademark to increase its registrability. For instance, you can incorporate a distinctive device element that does not describe the nature of the goods. You might also change the name to a coined term or a combination of words without descriptive meaning. Once you revise the mark, you can file a new application to improve your chances of securing registration.

1. Check Translations First: Even if a term is unique in one market, its meaning in Thai or English could be generic, so check this before filing.

2. Add Distinctive Elements: Finally, consider pairing the wording with unique graphics or a stylized logo to increase registrability.

3. Gather Local Evidence: Advertising, media coverage, and consumer recognition surveys from the Thai market help overcome objections.

4. Avoid Common References: The Registrar often refuses terms referring to regions, ethnic groups, or common categories, so avoid these geographic references.

Before filing in Thailand, conduct a multi-language meaning check. This ensures the wording in your mark is neither generic nor descriptive in Thai or English.