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Manage your Intellectual Property in South-East Asia

Case Study 18 - Appealing against a descriptiveness refusal in trade mark filling in Thailand

Background:

“Company A” in Thailand submitted a trade mark application to the Thai Department of Intellectual Property (DIP) to register the mark “TMB Make THE Difference” for banking services in Class 36. After examining the application, the DIP accepted to protect the mark, but with the phrase "Make THE Difference" disclaimed for being descriptive. The company was reluctant to disclaim their right over the phrase "Make THE Difference" as they considered it an important slogan in the company’s branding strategy.

Actions taken:

Company A filed an appeal to the Board of Trade marks in relation to the disclaimed decision. However, such appeal was refused as the Board of Trade marks also considered that the phrase was descriptive and the company had not provide sufficient evidence to prove the wide-use status of the phrase.

Company A then filed a complaint to the Intellectual Property and International Trade Court (IP&IT Court). However, this court agreed with the Trade mark Registrar and ordered the case to be dismissed.

Following this, the company moved on to file an appeal with the Supreme Court of Thailand with the hope that it could have the right over the slogan.

Outcome:

The Supreme Court found that “Make THE Difference” is not a phrase common to other trade words published by the Trade mark Office. Furthermore, these words, together, are not directly descriptive of commercial banking services. Therefore, the Supreme Court ultimately concluded that the mark “TMB Make THE Difference” is fully registrable and the company was not required to disclaim the exclusive right to these words. The decision of the Board of Trade marks had to be withdrawn.

IP Lessons:

  • The case affirmed the test for distinctiveness in regard to slogan marks which provides trade mark applicants with a better chance of successfully arguing against the refusal of the trade mark office.
  • Pursuing various processes to appeal against a refusal case is lengthy and costly but it can yield positive results.
  • Do consult with a local attorney or trade mark agent before proceeding to any actions in order to evaluate the chance of success of each action.
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