TradeDistinctiveness of Trademark
The distinctiveness helps performing main function of trademark that is to help distinguishing goods bearing trademark of one proprietor from other person’s goods.
Under the Trademark Act B.E. 2534 amended by Trademark Act (No. 2) B.E. 2543, a trademark having or consisting any of one of the following essential characteristics is deemed distinctive:
1. A personal name, surname not being such according to its ordinary signification, a name of juristic person or trademark represented in a special manner;
2. A word or words having no direct reference to the characteristics or quality of the goods and not being a geographical name prescribed by the Minister in the Ministerial Notifications
3. A combination of colors represented in a special manner, stylized letters, numerals or invented word
4. The signature of the applicant for registration or some predecessor in his business or the signature of another person with his or her permission
5. A representation of the applicant or of another person with his or her permission or of a dead person with the permission of his or her ascendants, descendants and spouse, if any
6. An invented deviceHowever, it may be possible for a trademark which otherwise is not distinctive to be deemed distinctive and to become registrable if the goods bearing the mark has substantially and extensively been used and advertised until it is recognized among consumers in the relevant field. It is significant to prove the distinctiveness through uses as set forth by the Announcement of the Ministry of Commerce.
According to the Announcement of the Ministry of Commerce, the following criteria must be established:
1) The goods bearing trademark has been continuously sold, distributed or advertised for a considerable period of time until it could make the public in Thailand recognize and understand that such goods are distinguished from other person’s goods.
2) The sale, distribution or advertisement of goods until it could make the mark widely known to public in Thailand is deemed for trademark to be distinctive for registration only against such goods only.
3) The mark sought for proving the distinctiveness must be the same trademark applied for registration.
The evidences of uses for proving the distinctiveness of trademark should consist of any evidence showing sale, distribution and advertising of trademark in Thailand, such as, receipts of sales of goods, receipts for advertising of goods, invoices, purchase orders, manufacturing license, promotional materials, samples of products, and etc.
It is also worth to note that under the current ministerial announcement concerning the criteria for proving distinctiveness of trademark, if in the Trademark Registrar’s view, the trademark applied for registration is not distinctive, the Trademark Registrar shall notify the applicant to submit any supporting evidences proving the distinctiveness of the mark to the Trademark Registrar within 60 days. Nevertheless, it is possible for the applicant to submit supporting evidences proving the distinctiveness through uses at the appeal stage as well.
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