In the modern era, slogans are an essential tool for building brand identity and communication. However, under Thai trademark law, a slogan must function as an indicator of the origin of goods or services, rather than merely serving as an advertising message, to be eligible for trademark protection. Careful planning and preparation are crucial to meet the legal requirements for registration.

A foreign cosmetics company sought protection in Thailand for an English-language slogan under the Madrid Protocol, covering goods in Class 3.

The Trademark Registrar issued a total provisional refusal on two grounds:

1. Lack of distinctiveness — The slogan was considered a promotional phrase rather than a distinctive brand indicator, making it incapable of distinguishing the applicant’s goods from others under Section 7, first paragraph of the Thai Trademark Act.
2. Vague identification of goods — The use of the term “cosmetics” was considered too general and required specification, such as “lipsticks” or “facial creams.”

• Distinctiveness of Slogans (Section 7(1))

Under Section 7, first paragraph of the Trademark Act B.E. 2534, a mark must be capable of distinguishing the goods or services of one business from those of others. Generic or promotional phrases lacking distinctiveness are not registrable as trademarks. Slogans that merely convey advertising messages do not qualify as distinctive marks.

• Requirements for Specification of Goods or Services (Section 9)

Applications must specify the goods or services accurately and precisely. Broad terms such as “cosmetics” are insufficient because they lack clarity and may cause confusion. The applicant must use specific accepted terms from the Department of Intellectual Property’s Goods and Services Lists, for example, “lipsticks,” “facial creams,” etc.

• Evidence of Acquired Distinctiveness

Where a slogan is initially refused for lack of distinctiveness, the applicant may submit evidence showing that the slogan has acquired distinctiveness through continuous use, advertising, and consumer recognition to overcome the refusal.

1. Choose Slogans Carefully – Avoid phrases that sound purely promotional or descriptive of product features.
2. Support with Evidence – If using a slogan internationally, provide proof of recognition in Thailand, including local advertising and market presence.
3. Be Specific in Goods Descriptions – Use precise terms, e.g., “lipsticks,” “facial creams,” instead of generic “cosmetics.”
4. Plan Early for Appeal – The 90-day window for responding or appealing is strict.

This decision underscores Thailand’s strict approach to slogan trademarks. Even a well-known international phrase can be refused if it appears to be advertising rather than a distinctive brand signifier.

Amending the Specification of Goods or Services is a relatively straightforward process. The trademark owner can file a request to amend the application by specifying the goods or services in more detail—for example, changing from a general term like “cosmetics” to specific items such as “lipsticks” or “facial creams.” This type of amendment is not considered a material change to the application and can be submitted directly to the Department of Intellectual Property within the prescribed timeframe, usually 90 days. The amendment request should be accompanied by supporting documents, such as signed forms and a power of attorney if filed by a representative.

In contrast, overcoming a refusal due to Lack of Distinctiveness is more complex. It cannot be resolved merely by amending the application but requires filing an appeal with the Trademark Office. The appeal must be supported by evidence demonstrating the slogan’s acquired distinctiveness, such as advertising materials, sales reports, consumer surveys, and media recognition in the Thai market. This process requires thorough planning and often takes considerable time.

Before filing a slogan in Thailand, test whether it sounds like an ad tagline or a brand name. If it’s more promotional, consider combining it with a distinctive logo or design.

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.

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