In the evolving global marketplace, protecting brand identity through trademark registration is vital for companies to maintain their competitive edge. However, registering non-traditional trademarks such as three-dimensional (3D) shapes can present unique challenges, especially in jurisdictions with stringent legal requirements. This summary examines a recent case involving the provisional refusal of a 3D mark for a beverage can in Thailand, outlining the relevant legal framework, key considerations, practical guidance, and implications for trademark applicants in Thailand.

• Descriptive Marks in Thailand:

  Marks that directly refer to the nature, quality, or characteristics of the goods cannot be registered unless distinctiveness is acquired through extensive use.

• Foreign Language Marks:

  The DIP examines translations and transliterations. If the meaning is descriptive in Thai or English, the mark may face refusal.

• Specification Requirements:
  Broad or vague terms in the goods description can result in objections. The list must be clear, precise, and limited to the original scope.

• Section 7 of the Trademark Act BE 2534 states that trademarks must be distinctive. Marks that directly describe the characteristics or quality of the goods are non-registrable.
• Section 9 mandates that applicants specify their goods/services list clearly and precisely. A single application cannot cover unrelated goods.

1. Check Translations Before Filing – Always review the meaning of non-Thai words in your mark; if descriptive, consider adding distinctive elements.
2. Avoid Broad Goods Descriptions – Use clear, precise terms (e.g., “yeast for culinary purposes” instead of just “yeast”).
3. Evidence of Acquired Distinctiveness – For descriptive marks, prepare marketing, sales, and recognition evidence to support registration.
4. Meet Appeal Deadlines – The 90-day period is strict; missing it means losing the chance to protect your mark in Thailand.

This case highlights the two-layer review in Thailand’s trademark examination — assessing both the mark’s distinctiveness and the clarity of the goods/services list. Even if a mark is well-known abroad, it may face refusal in Thailand if the meaning is descriptive or if the specification is vague.

• 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 pre-filing to assess risks and tailor trademarks and goods 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.

The challenge of overcoming a refusal to register a trademark in Thailand varies depending on the grounds. If the refusal relates to overly broad goods or services descriptions (under Section 9), it is generally easier to address by amending the specification to be more precise, for example specifying “yeast for culinary use” instead of just “yeast.” However, refusals based on lack of distinctiveness (under Section 7(2)(2)), where the mark is considered descriptive of the goods’ qualities, are more difficult to overcome. In such cases, the applicant must prove acquired distinctiveness through consistent use, marketing, consumer recognition, and differentiation from generic terms. There is a viable possibility to reverse a refusal by filing a timely appeal with substantive evidence, which halts cancellation proceedings and can lead to successful registration.

When filing a foreign-language trademark in Thailand, submit both a translation and an explanation of non-descriptive significance to avoid objections.

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.

Contact:
Tel: (+66)2-011-7161 – 6
Email: [email protected]
Line : @idgthailand
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