Problems on the Prohibition of Trademark Registrations Consisting of Foreign Country Names and/or Foreign Country Abbreviations Under Trademark Act B.E. 2534 (1991) Amended by Trademark Act (No.2) B.E. 2543 (2000) and Trademark Act (No.3) B.E. 2559 (2016)

Abstract

The name and/or abbreviation of a country has the ability to unify business in a particular country under one banner, allowing trademark owners to benefit from the reputation and heritage of the country. However, under the Trademark Act B.E. 2534 (1991) as amended by the Trademark Act (No.3) of B.E. 2559 (2016), marks consisting of foreign country names and foreign country abbreviations can be either prohibited by law as per Section 8 (6) or can be considered non-distinctive as per Section 7 Paragraph 2 (2), depending on the official’s discretion. Without solid provisions controlling such discretion, officers may select one or both grounds for rejection of an application. This causes inconsistency in registration of marks comprised of foreign country names and/or foreign country abbreviations. In addition, the only route to overcome Section 8 (6) “unless permission is given by the competent officer of the foreign country” is also difficult to comply with in practice as the current law does not define who constitutes a “competent officer of the foreign country”.

          This Article will aim to find the root of the prohibition grounds for marks consisting of foreign country names and foreign country abbreviations in Thai trademark law and compare Section 8 (6) of Trademark Act B.E. 2534 (1991) as amended by the Trademark Act (No.3) of B.E. 2559 (2016) with Article 6ter of the Paris Convention and the trademark law of other foreign countries such as the United Kingdom, the United States of America and the Republic of Singapore. The study will also include judgments of the Supreme Court, Trademark Board Decisions and Trademark Registrar’s Instructions together with the opinion of an intellectual property lawyer and related authorities to find better alternatives to Section 8 (6).