In January 2022, the Department of Intellectual Property introduced the new trademark examination guideline to improve the examination standard in line with the precedents from the Trademark Board and the Courts as well as the intentional practices. It is also intended to establish clear, correct, modern, and consistent examination criteria among all examiners. The material points in this new guideline are as follows.
- An applicant may indicate multiple versions of its name in an application, for example “ABC Kabushiki Kaisha (also trading as ABC Corporation)”. However, only the first version will appear on the Trademark Office’s records and other relevant documents, e.g. registration certificates.
- A power of attorney may be notarized in other countries than the applicant’s state of incorporation provided that the applicant can prove that the power is signed in those other countries.
- In case that the descriptions of goods/services are broad or unclear, the Trademark Office will allow an applicant to amend them for three times. After that, the applicant will have to appeal with the Trademark Board.
- In case of priority claim, the mark in the Thai application may be in a different color from that in the basic application. In case of letters and words, nonetheless, the lettering styles must be identical.
- Word marks are categorized into five groups in accordance with their levels of distinctiveness, i.e. fanciful marks, arbitrary marks, suggestive marks, descriptive marks, and generic marks. It is further stated that the examiners shall refer to meanings from reliable sources and shall not exercise excessive imagination.
- Repetitive patterns without boundaries and slogans are non-distinctive.
- Three or more letters and numerals are distinctive if they are arranged in uncommon or non-alphabetical orders regardless of whether they are stylized or not. Non-stylized letters and numerals placed on frames or backgrounds are also distinctive. (Previously, the Trademark Office requires letters and numerals to be stylized regardless of the numbers or the arrangements.)
- The provision on prohibited marks should be interpreted narrowly because it materially restrict the applicant’s rights and freedom. However, in determining whether the mark is against public policy or not, the examiner should consider not only the mark itself but also the applicant’s intention in adopting the mark, e.g. bad faith.
- Confusing similarity should be assessed from all relevant factors. These include the overall appearances and pronunciations o the marks in their entirety (not only some parts of the marks), natures of the goods/services, and the intended consumers.
While the DIP’s authority in issuing this guideline is unclear and some rejection grounds as introduced in this guideline may be arguably broader than those provided in the Trademark Act, most of the new issues are improvements. More reasonable examination may be anticipated.