In today’s competitive consumer goods market, trademarks play an essential role in differentiating cleaning and household products. However, descriptive English word marks face significant hurdles in Thailand, where the law requires distinctiveness and precise goods descriptions. This summary reviews a recent case involving a total provisional refusal, outlining the applicable legal framework, key considerations, and guidance for trademark applicants.

A foreign company sought protection in Thailand for an English-language word mark under the Madrid Protocol, covering cleaning products in Class 3

The Trademark Registrar issued a total provisional refusal on two grounds as follows

1. Lack of distinctiveness — The mark was deemed descriptive, as the wording directly referred to the nature or quality of the goods, making it non-distinctive under Section 7, second paragraph (2) of the Thai Trademark Act.
2. Vague identification of goods — The term “cleaning preparations” was considered too broad under Section 9, requiring amendment to more specific product descriptions.

• Descriptive Marks in Thailand
  English words that directly describe the purpose, nature, or quality of the goods will likely be refused unless distinctiveness can be proven.
• Goods Specification Requirements
  Broad descriptions like “cleaning preparations” must be narrowed down to precise, accepted terms listed in the DIP’s Goods and Services Lists.
• Evidence for Distinctiveness
  Evidence of acquired distinctiveness through advertising, sales, and consumer recognition may help overcome descriptiveness refusals.

• Section 7, second paragraph (2): Marks that directly describe the quality, characteristics, or intended purpose of goods/services are deemed non-distinctive and unregistrable unless acquired distinctiveness is proven.
• Section 9: Requires applicants to specify goods/services clearly and precisely. Vague or overly broad terms are not accepted and must be amended.

1. Avoid Purely Descriptive Words – Consider creative or coined terms to reduce the risk of refusal.
2. Prepare a Specific Goods List – Replace broad terms with precise categories (e.g., “multi-purpose cleaning gels,” “glass cleaners”).
3. Gather Local Evidence – Show how Thai consumers associate the mark with your goods.
4. Mind the Appeal Period – The 90-day deadline to respond or appeal is strictly enforced.

This case reinforces that English descriptive marks are scrutinized in the same way as Thai-language descriptive marks. Without distinctiveness, they face refusal even if widely used abroad.

• Upon receiving a refusal, applicants have 90 days to file an appeal to the Trademark Board.
• Appeals must contain strong arguments explaining the mark’s uniqueness, differences from cited marks, and supporting evidence such as market usage and consumer recognition.
• Recent 2022 Supreme Court appeals show the importance of timely and well-documented appeals to protect trademark rights in Thailand.

• Consult IP experts prior to filing to assess risks and tailor trademarks and goods/services descriptions to meet Thai legal standards.
• Monitor application status vigilantly and submit appeals promptly if needed.
• Understand the difference between descriptive terms and distinctive elements to ensure higher success chances.

Overcoming a refusal on the grounds of lack of distinctiveness can be pursued through an appeal by presenting clear legal arguments supported by evidence of actual use. However, the chances of success are relatively low. An alternative and often simpler option is to file a new trademark application that avoids terms directly referring to the designated goods, such as “Clean,” “Wash,” or “Mop.” Applicants may also adopt different strategies, such as using an invented word with no inherent meaning or filing an application where a figurative element or logo constitutes the essential part of the mark.

As for refusals based on overly broad specifications, these can usually be resolved more easily by amending the goods/services descriptions to align with the terminology accepted by the DIP and making the list of goods more specific, such as clearly indicating the type of cleaning preparation. These approaches help increase the likelihood of securing trademark registration.

Before filing in Thailand, run a descriptiveness check on your mark’s meaning in English and Thai to avoid unnecessary refusals.

Need help with appealing a trademark refusal in Thailand?

Our team at IDG assists with pre-filing strategies, evidence preparation, and appeal submissions to the Thai Trademark Board.