A trademark is an intellectual property that consists of a sign, symbol, or mark used to distinguish a company’s goods or services from others.
Trademarks are integral to branding and marketing, helping consumers recognize and connect with a company’s image and products. They foster trust and customer loyalty while contributing to a company’s popularity. Additionally, trademarks encourage businesses to invest in product or service quality, ensuring their trademark maintains a positive and enduring reputation. For these reasons, businesses prioritize trademark registration, granting them exclusive rights to use the mark. Trademark owners can also license their trademarks for additional revenue, such as through franchising agreements. Furthermore, trademarks can serve as collateral to secure loans or credit.
For a brief overview of trademark registration in Thailand, check out this article by Ravenwing: https://www.ravenwing.co/post/trademark-registration-in-thailand
This article "Thai Trademark Registration Examination Brief Guide (Latest Update)" by Ravenwing aims to provide applicants, representatives, and relevant parties with a clear understanding of the criteria and procedures for trademark registration, ensuring compliance with established standards.
We have organized the information into three broad categories for easier understanding:
Examination of Goods and Services
Examination of Pronunciation and Translation
Examination of Trademark Design
1.) Examination of Goods and Services
Goods and Services List
1. The goods for which protection is requested must be clearly defined, using concise and straightforward terms that describe the product's characteristics, functions, or uses. The description should not be overly broad and must clearly indicate the category to which the item belongs.
2. Multiple categories of goods may be listed in a trademark application.
3. If goods from multiple categories are being registered, each item must be clearly listed according to its appropriate category.
4. Once a trademark application is submitted, no additional goods can be added, except to clarify an existing item.
Examination Guidelines
The classification of goods and services should follow the Ministry of Commerce's notification guidelines. If the classification is incorrect, the applicant will be asked to make corrections.
Goods Examination:
1. Refer to the "Goods and Services List for Trademark Registration in Thailand" (https://tmsearch.ipthailand.go.th/).
2. If an item cannot be classified under a specific category, the following guidelines should be applied:
a. Finished products should be classified according to their utility or intended purpose. If unclear, compare the product to similar items in the alphabetical list. If classification is still unclear, consider the materials used or the product’s function.
b. Multi-purpose products (e.g., watches with built-in radios) can be classified under multiple categories based on their intended uses. If classification remains unclear, follow the guideline in point a).
c. Raw or semi-finished materials should be classified by their components.
d. Parts or components of products that cannot serve other purposes should be classified with the finished product. If they can be used for other purposes, follow the guideline in point a).
e. Products made from multiple materials should be classified according to the predominant material.
f. Packaging materials (e.g., boxes or bags) should be classified with the product they contain, such as eyeglasses and their cases.
Service Examination:
1. Services should be classified according to the description and intended purpose of the service. If unclear, compare with similar services listed in the alphabetical list.
2. Rental services should be classified with the rented item (e.g., phone rental falls under Class 38).
3. Consulting, advisory, or information services should be classified based on the subject matter of the consultation, such as transportation consulting (Class 39), business management consulting (Class 35), or financial consulting (Class 36).
4. Franchise services should be classified based on the business type of the franchise owner (e.g., business consulting services for franchises in Class 35).
If the goods list is unclear (e.g., describing a product as "shirts made from cotton, perfect for any occasion, attracts attention"), the descriptive part ("attracts attention") should be removed to clarify the listing (e.g., “shirts made from cotton”).
Goods can also be listed using transliterated terms, as long as they comply with the Department’s guidelines or are widely recognized terms (e.g., sushi, nigiri, takoyaki).
2.) Examination of Pronunciation and Translation
When a trademark includes words or phrases in foreign languages (such as English, French, German, Chinese, Japanese, Russian, Korean, Spanish, Latin, Arabic, and languages of ASEAN countries—totaling 20 languages), both the pronunciation and Thai translation must be provided. However, if the foreign text cannot be translated, this requirement does not apply. For Chinese, both Mandarin and Cantonese pronunciations and translations must be provided.
Examination Guidelines
1. If pronunciation and translation are not provided:
(1) A directive will be issued requiring the applicant to provide the correct pronunciation and translation in all cases.
(2) If the word lacks distinctive characteristics, a directive will be issued to provide pronunciation and translation, along with a reference to Section 7 or Section 17, as appropriate.
(3) If the word has distinctive characteristics but the pronunciation and translation are missing, a directive will be issued to provide the correct pronunciation and translation.
2. If the pronunciation or translation is incorrect:
(1) If the mark is eligible for registration but the translation is incorrect (e.g., translating “BOY” as “girl” or “unable to translate”), the applicant will be instructed to revise the translation.
(2) If the translation is incorrect and the word has no distinctive characteristics, a directive will be issued under Section 7, without the need to provide a corrected translation.
(3) If the translation is incorrect but the word is not essential to the mark’s distinctiveness, the applicant will be instructed to correct the translation, along with a directive under Section 17.
3. Verification of Translations:
The applicant must submit documentation verifying the translation from an accepted dictionary or a reputable translation institute, using these documents as the official reference for the translation.
3.) Examination of Trademark Design
1. Image Requirements
The trademark image submitted with the application must be clear and show all details of the mark. The image should not exceed 5x5 centimeters in size. If the image exceeds this limit, an additional fee of 200 THB per extra centimeter (calculated based on width and length) will be charged.
2. Color Groupings
If the trademark involves a combination of colors, the applicant must provide a description of the colors used and their arrangement within the design.
3. Shape or Form of Objects
If the trademark involves a three-dimensional design (e.g., a shape or form), the applicant must provide a full representation of the object, showing its width, length, and depth. A description of the shape or form may also be included.
4. Sound Marks
For sound marks, the applicant must describe the sound clearly (e.g., a song, animal sound, music, or other sound) and provide a clear audio recording of the sound to be registered. The applicant may also submit musical notation, sound graphs, or other supporting materials to demonstrate the characteristics of the sound.
Examination Guidelines
1. If the trademark image is unclear
If the image is not clear, the registrar will request the applicant to submit a clearer version of the image, provided it does not alter the original trademark. The applicant can appeal if they disagree with the request.
2. If the trademark includes two separate marks
If the trademark consists of two marks, the registrar will issue a notification (Form T-9, Clause 10) requesting clarification or evidence of the trademark's use as submitted. The applicant may also be asked to amend the design to feature only one mark. The registrar will inform the applicant that failure to use the mark as submitted could result in a petition for cancellation under Section 63.
3. If the trademark contains the ® symbol or similar
If the trademark includes the ® symbol (or a similar one) and it is not part of the core design, the registrar will instruct the applicant to remove it, in accordance with Section 15(1).
4. Color Groupings
a. First, the registrar will assess whether the trademark consists of a group of colors. If not, the registrar will issue a notification (Form T-9, Clause 10) informing the applicant that the mark does not consist of a color grouping. If no further clarification is provided, the mark will be treated as a regular trademark.
b. If the mark is a color grouping, or if the applicant clarifies that it is, the registrar will evaluate whether the mark is distinctive under Sections 7 or 17.
5. Shape or Form of an Object
a. Initially, the registrar will determine if the trademark is a shape or form. If not, the registrar will issue a notification (Form T-9, Clause 10) informing the applicant that the mark does not involve the shape or form of an object. If no clarification is given, the mark will be considered a regular trademark.
b. If the mark involves a shape or form, or the applicant confirms that it does, the registrar will evaluate its distinctiveness using Sections 7 or 17.
c. If the applicant requests to modify the image to feature only one view of the object, the registrar will deny this request, as it alters the original intent of the application. The distinctiveness of the mark will then be assessed under Sections 7 or 17.
6. Sound Marks
a. If the description of the sound is missing, the registrar will request the applicant to include it using Form G.06.
b. If the applicant does not submit the required audio recording, the registrar will instruct the applicant to provide it using Form G.20.
7. If the trademark image exceeds 5x5 cm
a. If the application is submitted in person, the additional fee of 200 THB per extra centimeter will apply, calculated based on the width and length of the image.
b. If the application is submitted through e-Filing, the system will automatically calculate and apply the appropriate fee based on the image size.
Please note that these three categories are just examples selected from various considerations for trademark application review. For full details and additional considerations, please refer to the document at https://www.ipthailand.go.th/images/3534/2565/TM/ManualTM65.pdf, or contact Ravenwing for quick consultation and to simplify the process.
Disclaimer: Informational Article, Not Legal Advice
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