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Manage your Intellectual Property in South-East Asia

Case Study 19 - The Thai Supreme Court’s interpretation on descriptive trade marks

Background:

A UK distributor of men's and boys' apparel and furnishings (Company A) is interested in the Thai market and would like to register a trade mark for its products to be distributed in the local market.

Actions taken:

Company A submitted its application to the Trade mark Registrar for the mark ‘SUPERDRY’ in both English and Japanese for goods in Class 25 - Clothing, footwear, headgear.

Outcome:

The Trade mark Registrar rejected the application on the grounds of no distinctiveness because they took the view that the applicant’s mark, ‘SUPERDRY’ in Class 25, was descriptive of the characteristics of the goods.

However, the Supreme Court ruled differently. In its decision, the Court said that this trade mark is distinctive and gave a new definition: “If the word is a generic term that is closely related to the nature or characteristics of the goods, or if the general public can use only limited judgment to know the nature or characteristics of the goods bearing the trade mark, that word shall be deemed directly descriptive of the nature or characteristics of the goods.” Moreover, if a trade mark is a word for which consumers need to use significant consideration or imagination to understand its nature or characteristics of the goods under such a trade mark, that word would not be regarded as being directly descriptive of the nature or characteristics of the goods.

Furthermore, the Court interpreted ‘SUPERDRY’ as “extremely dry”, instead of “quick-drying” which is what the Trade mark Registrar claimed. As the meaning of “extremely dry” does not signify a quality that the public generally seeks in the relevant Class 25 goods, the mark cannot be said to directly describe a characteristic of the goods.

IP Lessons:

  • The lack of distinctive character is one of the most common reasons raised by the Trade mark Registrar and the Board of Trade marks in Thailand to reject a trade mark for registration.
  • This Supreme Court’s decision serves as a good guideline for brand owners who may face similar problems when registering their trade marks in Thailand. Moreover, if the Trade mark Registrar and the Board of Trade marks will strictly rely on the guidelines provided by the Supreme Court, this would standardize trade mark registration practice in Thailand to be identical to and consistent with international trade mark practice.
  • To determine whether a word is directly descriptive of the nature or characteristics of the goods, one should consider whether the word enables the public to immediately know or understand the characteristics of the goods. If a mark describes a quality that does not pertain to the specified goods in the application, it should not be considered non-distinctive. Applicants can, where applicable, refer to the case to counter direct descriptiveness rejections by arguing that applied-for marks do not identify the targeted goods by describing a pertinent quality that consumers associate with such goods. On the other hand, if met with a general descriptiveness rejection, it would be wise for applicants to argue the necessary involvement of considerable imagination in drawing the link between the mark and the targeted goods or services.
  • EU SMEs shall consult with lawyers with local expertise to understand the orientation of the Trade Mark Registrars as well as Court decisions which might be relevant to their own case.
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