Registering a trademark is a crucial step in protecting brand identity and exclusive rights in the marketplace. However, applicants often face challenges such as refusals related to the distinctiveness of the mark or the clarity of the goods and services descriptions. This case study outlines key issues encountered during trademark registration in Thailand and offers practical lessons for brand owners on how to navigate and overcome common obstacles effectively.

The Thai Department of Intellectual Property (DIP) issued a total provisional refusal against an international 3D trademark application for a beverage can design under the Madrid Protocol. The refusal was based on lack of distinctiveness under Sections 6 and 7 of the Thai Trademark Act. The main element of the trademark—a picture of a can—was deemed descriptive because it directly represents the nature of the goods (beverages) and is therefore descriptive rather than distinctive.

The Thai Trademark Act B.E. 2534 (1991), as amended, protects various types of trademarks, including word marks, device marks, and non-traditional marks such as 3D shapes (product shape or packaging). Section 4 explicitly includes “the shape or configuration of an object” as registrable marks, so 3D marks can receive protection if they meet distinctiveness criteria.

• Section 6: Sets criteria for registrability, requiring marks to distinguish goods or services from others and prohibiting marks that are descriptive, generic, or confusingly similar to existing marks.
• Section 7: Defines distinctiveness, emphasizing that marks must not merely describe the nature, quality, or characteristics of goods but must indicate commercial origin. Simple replication of the product container’s shape without unique features typically fails this test.

If a 3D mark depicts a product’s container without additional creative or unique elements, it is classified as descriptive and ineligible for registration under Thai law.

• Distinctiveness of 3D Marks in Thailand: 3D marks representing the shape or packaging of goods must be inherently distinctive or have acquired distinctiveness through substantial and exclusive use.
• Descriptiveness vs. Distinctiveness: If the mark depicts the product’s container without additional unique elements, the Registrar may consider it merely descriptive of the goods’ nature or quality.
• Acquired Distinctiveness Evidence: Section 7 allows registration if the applicant can prove the mark has become well-known to the public as indicating goods of the applicant through long-term use.

Applicants can overcome refusal by proving the mark has acquired distinctiveness through extensive and exclusive market use. Evidence may include:

• Documents related to the right of the trademark: such as a copy of registration certificate in any jurisdiction, history of usage in Thailand, and the inspiration or origin of the trademark design.
• Documents related to the company: such as business license, company history, reputation, awards or certification marks.
• Documents showing trademark popularity: such as sales documentation, product samples, distribution channels, advertising expense receipts, and official website or social media presence.

• Non-Traditional Marks Require Stronger Proof: A standard container shape, even if associated with your brand internationally, may not meet Thai distinctiveness requirements without localized evidence of acquired distinctiveness.
• Localized Evidence: Foreign applicants should provide market-specific proof such as Thai advertising, local sales data, and consumer surveys.
• Modify or Enhance Design Elements: Adding distinctive graphic features or combining the 3D shape with word/device marks can improve registrability.
• Act Within Appeal Deadlines: The 90-day appeal period is strict; missing it could forfeit protection rights in Thailand.

DIP examines trademark applications including 3D marks against the Thai Trademark Act’s standards. Their balanced approach protects innovation while preventing monopolization of generic product shapes. Knowing their guidelines and precedents helps applicants prepare stronger applications.

In Thailand, an appeal against a provisional refusal must be submitted within 90 days of notification. The appeal involves presenting arguments and supporting evidence to the Trademark Board. Missing this deadline forfeits the right to challenge the refusal.

Protecting 3D trademarks is vital for global brands in Thailand as product differentiation increasingly involves packaging design. It safeguards brand identity and provides strategic advantages in a competitive market shaped by rapid technological and consumer changes.

The likelihood of obtaining trademark protection for 3D marks like a beverage can in Thailand increases significantly if the applicant can provide strong, localized evidence showing the mark’s acquired distinctiveness. Without such evidence, especially with generic shapes, the refusal under Sections 6 and 7 is probable.

Brands should proactively gather market data, use distinct branding elements, and design trademarks strategically. Legal counsel familiar with Thai IP laws can assist in preparing appeals and evidence packages.

Overall, while registration of 3D trademarks in Thailand is challenging, effective preparation and evidence of market recognition can lead to successful protection of unique product shapes.

When filing under the Madrid Protocol for a 3D mark in Thailand, prepare a comprehensive evidence package showing the mark’s uniqueness and market recognition before filing, to pre-empt 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.

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