DIP officially announces new Trademark Examination Manual 2022

The Department of Intellectual Property of Thailand ("DIP") recently announced a new Trademark Examination Manual, which updates important guidelines on trademark examination that may affect the result of the examination.

The important points of the new Trademark Examination Manual are summarised below.

1. An unordered (not arranged in order, e.g. a list of unordered numbers) combination of letters and numbers of three or more characters is currently considered distinctive. This does not include the transliteration of such letter-number combinations because Thai transliteration of said combination of letters and numbers tends to be considered non-distinctive. Please see the following examples provided in the new Trademark Examination Manual:
    

Distinctive (unordered)	Non-distinctive (common order, e.g. ABC and 123)

2. There are five levels of distinctiveness of the mark, i.e. (1) fanciful mark; (2) arbitrary mark; (3) suggestive mark; (4) descriptive mark; and (5) generic mark, which are sorted from the highest to lowest level. Notably, a suggestive mark is now explicitly stated to be a distinctive mark that should be registrable. For instance, the mark "GREYHOUND" for services such as "bus transportation services" is considered a suggestive mark that can be registered according to the new Trademark Examination Manual.

3. The new Trademark Examination Manual states that a prominent element of the mark shall be considered from the overall mark. That is, it expressly states that if any of the elements of the mark is prominent to the extent where it is recognised by the general public or consumers, it is considered a substantive element of the mark. In this regard, the Trademark Registrar (“Registrar”) may request that the applicant disclaims exclusive rights to a non-distinctive element of the mark if it is not the substantive element of the mark. As such, proportion of the distinctive element of the mark compared to the overall scale of the mark must be substantive for the mark to be acceptable for registration. The proportion of distinctiveness of 60% and non-distinctiveness of 40% is no longer recommended in this new guideline.

4. The new Trademark Examination Manual states that the "sufficient period" to prove distinctiveness through use of marks in Thailand should be two or more years. For example, if there are numerous advertisements across various types of media, such as online and social media advertising, in Thailand for two or more years, this could demonstrate that the mark has acquired distinctiveness through use. This provides more clarity for applicants who submit evidence of use of their trademarks in support of their application or appeal. However, it is still at the discretion of the Registrar to consider whether the submitted evidence of use of the mark within those two years is sufficient to acquire the secondary meaning through use.   

Moreover, when examining priority claims for the mark in Thailand, the new Trademark Examination Manual provides further details on the criteria to be used, as follows:

It might be worth noting here that despite the foregoing, the new Trademark Examination Manual is only a guideline for Trademark Registrars when examining trademark applications; the Trademark Registrars are not bound by this guideline. In such regard, it will be interesting to see whether or not the Trademark Registrars implement such new manual and update the way they examine trademarks in practice.

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