PROOF OF USE OF TRADEMARK UNDER SECTION 7 OF TRADEMARK ACT CONCERNING ACQUIRED DISTINCTIVENESS BY COMPARATIVE APPROACHES BETWEEN THAI AND FOREIGN TRADEMARK LAWS

Abstract

A trademark is considered a vital aspect of any business as it is used for identifying the goods or services so that consumers are able to recognize such goods or services as originating from a particular source through the trademark. Everything can be used as a trademark, such as letters, numerals, phrases, colors, pictures, symbols, etc., but not everything can be registered as a trademark. One of the most essential requirements for registration of a trademark is distinctiveness. Distinctiveness is important in the eye of trademark law because a distinctive trademark is the tool which creates a connection between the goods or services covered under that trademark with the consumers’ perception. According to trademark laws, if a trademark is inherently distinctive, then it is registrable. However, an inherently non-distinctive trademark may also be registrable if such trademark satisfies the requirements of distinctiveness through use, i.e. acquired distinctiveness.

Similar to other trademark systems, Thailand has also adopted the concept of acquired distinctiveness. However, there are certain problems in the Thai laws and regulations regarding proof of use in order to achieve acquired distinctiveness, i.e. problems with the requirements for the proof of use, problems  with the evidence to prove use, etc. which obstruct the chances of trademark registrability on this ground.

This Article will focus on the general concept of distinctiveness and the requirements for proving acquired distinctiveness through use of a trademark by using comparative approaches between Thai and foreign laws such as The United States of America, Japan and the Republic of Singapore whose trademark laws, especially regarding proof of use for acquired distinctiveness, are quite comprehensive. This study will be based on the requirements under Section 7 paragraph three of Thai Trademark Act B.E. 2534 (1991) as amended by Act (No.2) B.E. 2543 (as amended by Act (No.3) B.E. 2559) and Ministerial Regulations for proof of acquired distinctiveness together with judgements of the Central Intellectual Property & International Trade Court and the Supreme Court by comparing the laws, practices from the examination guidelines and the judgements from foreign countries. In this way, the Author will discuss the alternatives for improving the laws and practices for the proof of use for acquired distinctiveness with the expectation that they could increase the chances of trademark registration of inherently non-distinctive trademarks in Thailand.