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Overcoming Geographic Barriers: Thai Court Allows Registration of Well-Known Trademarks

posted 3 weeks ago

For decades, obtaining a trademark registration in Thailand for a geographic name or a product’s own shape was an uphill battle. The country’s Trademark Act B.E. 2534 (1991) and its amendments prohibited registration of marks lacking inherent distinctiveness, including geographic terms and product designs or shapes that merely describe the goods themselves. However, two decisions from Thailand’s Supreme Court have charted a potential path forward for brand owners to secure rights in such non-traditional marks.

The first hurdle in 2018, the Supreme Court, decision no. 4216/2561, appeared to shut the door on registering geographic names as trademarks in a case involving the city name “MILWAUKEE” for tools. The plaintiff had sought to register the MILWAUKEE mark based on extensive use, advertising, and sales in Thailand over many years.

However, the court found the evidence submitted – promotional materials, sales invoices, and website printouts – was insufficient to prove the geographic term had acquired distinctiveness as a source identifier in the minds of Thai consumers. Merely showing promotional and sales documents was not enough. Under the Trademark Act and Ministry of Commerce Regulations, the plaintiff needed to conclusively demonstrate that the geographic name alone had become a well-known brand for its specific products through longstanding, widespread exposure and consumer recognition across Thailand. The court noted the evidence did not specify the start date of use, sales volumes over time, geographic extent of sales, or how long the promotional activities had continued. Without such details, the court could not infer that Thai consumers would perceive “MILWAUKEE” as a brand rather than just a city name.

An Opening for Well-Known Marks

Just a few years later, the Supreme Court’s specializing in Intellectual Property and International Trade Court, decision no. 5449/2549, took a different stance in a case brought by a fruit producer. This time, the court approved the registration of a trademark containing both the geographic term “WASHINGTON” and a stylized apple design for the company’s fresh apple products (Class 31).

On its face, the evidence submitted was similar to the previous case – advertising and promotional materials, sales data, product packaging samples, and documentation of trademark registrations in other countries. However, the court found this evidence compelling enough to meet Thailand’s stringent acquired distinctiveness requirements.

Key factors that appeared persuasive included:

Testimony from the company’s witnesses that Thai consumers did indeed recognize the “WASHINGTON and Stylized Apple” trademark as uniquely identifying the branded apples as distinct from competitors’ products.

Proof of decades of extensive nationwide promotional efforts across Thailand, with details on advertising expenditures. Massive sales volumes and retail sales values showing the branded apples were consistently available through major supermarket chains in all provinces over more than 30 years. Physical packaging examples demonstrating how the trademark was prominently displayed on bags/labels as the primary brand identifier. Taken together, this evidence persuaded the court that the combined “WASHINGTON and Stylized Apple Design” trademark had cumulatively acquired strong source-identifying capacity among Thai consumers, despite incorporating non-distinctive components individually. Even though geographic names and representations of the product itself typically cannot be registered alone, the court found this well-known composite mark had achieved distinctiveness through sustained, widespread use and marketing over decades.

Charting a path forward these two Supreme Court decisions indicate that while registering geographic names and product shapes/designs remains very challenging in Thailand, it is possible for brands to secure trademark rights in such non-traditional, non-inherently distinctive marks. However, the evidentiary requirements are stringent – brand owners must amass overwhelming evidence that the applied-for mark has achieved widespread consumer recognition and association as a source identifier through sustained, nationwide use and intensive promotional campaigns over many years.

Critically, the evidence must specify details like the start date of use, annual advertising expenditures, sales volumes and values over time, the geographic scope of sales/marketing, and consistent trademark usage on packaging/labeling. Simply submitting generic advertisements and invoices is unlikely to be sufficient.

For foreign brand owners exporting products to Thailand featuring geographic and product shape/design elements, this underscores the importance of implementing a long-term, nationwide branding strategy from the outset. Consistent trademark use, major advertising investments, physical branding on packaging, and meticulous recordkeeping of marketing spend and sales data can help pave the way for enhanced trademark rights and enforcement, even for non-conventional marks that Thai authorities may initially view as non-distinctive.

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