Proof of use of trademark under section 7 of trademark act

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PROOF OF USE OF TRADEMARK UNDER SECTION 7

OF TRADEMARK ACT CONCERNING ACQUIRED

DISTINCTIVENESS BY COMPARATIVE

APPROACHES BETWEEN THAI AND

FOREIGN TRADEMARK LAWS

BY

MISS NEDPRAWEE RODSON

A THESIS SUBMITTED IN PARTIAL FULFILLMENT OF

THE REQUIREMENTS FOR THE DEGREE OF

MASTER OF LAWS IN BUSINESS LAWS

(ENGLISH PROGRAM)

FACULTY OF LAW

THAMMASAT UNIVERSITY

ACADEMIC YEAR 2016

COPYRIGHT OF THAMMASAT UNIVERSITY

Ref. code: 25595601040180WUS

PROOF OF USE OF TRADEMARK UNDER SECTION 7

OF TRADEMARK ACT CONCERNING ACQUIRED




BY


BY


A THESIS SUBMITTED IN PARTIAL FULFILLMENT OF

THE REQUIREMENTS FOR THE DEGREE OF

MASTER OF LAWS IN BUSINESS LAWS

(ENGLISH PROGRAM)

FACULTY OF LAW

THAMMASAT UNIVERSITY

ACADEMIC YEAR 2016

COPYRIGHT OF THAMMASAT UNIVERSITY

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Thesis Title PROOF OF USE OF TRADEMARK UNDER

SECTION 7 OF TRADEMARK ACT

CONCERNING ACQUIRED




Author Miss Nedprawee Rodson

Degree Master of Laws

Major Field/Faculty/University Business Laws (English Program)

Faculty of Laws

Thammasat University

Thesis Advisor Professor Jumphot Saisoonthorn, Ph.D.

Academic Years 2016

ABSTRACT

A trademark is considered a vital aspect of any business as it is used for

identifying the goods or services so that the 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 the connection between the goods or services

covered under that trademark with the consumers’ perception. According to the

trademark laws, if a trademark is inherently distinctive, then it is registrable.

Nevertheless, an inherently non-distinctive trademark may also be registrable if such

trademark satisfies the requirement of distinctiveness through use, i.e. acquired

distinctiveness.

Similar to other trademark systems, Thailand has also adopted the

concept of acquired distinctiveness. Nonetheless, in fact, there are certain problems in

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the laws and regulations for the proof of use in order to achieve acquired

distinctiveness, i.e. problems on the requirements for the proof of use, problems on

the evidence to prove use, etc. which obstruct the chance of trademark registrability

on this ground.

This thesis will focus on the general concept of distinctiveness and

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 the 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 the proof of acquired

distinctiveness together with the judgements of Central Intellectual Property &

International Trade Court and Supreme Court by comparing the laws, practices from

the examination guidelines and the judgements from foreign countries. In this regard,

the Author will approach the alternatives for improving the laws and practices for the

proof of use for acquired distinctiveness with the expectation that they could increase

a chance of trademark registration of inherently non-distinctive trademarks in

Thailand.

Keywords: Trademark, Distinctiveness, Acquired Distinctiveness, Proof of Use

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ACKNOWLEDGEMENTS

I would kindly devote my sincere gratitude to all the people that have been my

great support throughout the time of my study of LL.M Program at Thammasat

University.

Firstly, I express my deep gratitude to my thesis advisor, Prof. Jumphot

Saisoonthorn, for being my educational inspiration, especially to join this LL.M

program and giving me the golden opportunity to prepare this thesis and advices on

my personal life. Furthermore, I am deeply grateful to Dr. Satyapon Sachdecha for all

the valuable support providing me the academic resources and helpful suggestion on

the thesis. Also, I would kindly thank Prof. Anan Chantara-Opakorn for his help and

support during my study abroad in Wisconsin University. Moreover, I would kindly

express my appreciation to Committee members, Justice Nopporn Bhotirungsiyakorn

and Prof. Amnat Wongbandit who spent their precious time to participate in my thesis

examination and gave guidance for improving my thesis.

I would like to express my special thanks of gratitude to my parents and my

grandfather for the great support on my education, and always cheering me up in

order to pass difficult times. I would not have become what I am if I were without

them, and also my cousins who were besides me in every moment of my life and

gladdened me when I was down.

Moreover, I would kindly express my appreciation to the professors at

Wisconsin University for providing me an invaluable opportunity to study and receive

the legal knowledge and experiences.

In addition, I would like to express my deep appreciation to Mr. Sukhprem

Sachdecha and Mr. Kritsana Mingtongkhum at Satyapon and Partners Ltd., for their

kindness and assisting me and providing useful advices which enabled me to complete

this thesis. I greatly benefited from their keen legal insights and practical experiences.

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Furthermore, this thesis would not have been possible without the

encouragement and support of my supervisors and colleagues at Satyapon and

Partners Ltd., Mitsubishi Motors (Thailand) Co., Ltd., and my friends from LL.B. and

LL.M. class. I am very thankful to them for always understanding the situation that I

have been through and cheering me up during this tough time.

Lastly, I would like to thank Mr. Kritchawat Chainapasak for all the kindness

and being my pillar of strength during the time of my study. This thesis would not be

completed without his advice and useful recommendations.

Miss Nedprawee Rodson

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TABLE OF CONTENTS

Page

ABSTRACT (1)

ACKNOWLEDGEMENTS (2)

LIST OF FIGURES (8)

LIST OF ABBREVIATIONS (9)

CHAPTER 1 INTRODUCTION 1

1.1 Background and Problem 1

1.2 Hypothesis 3

1.3 Objective of study 3

1.4 Scope of study 4

1.5 Methodology 4

1.6 Expected Result 4

CHAPTER 2 GENERAL PRINCIPLES OF USE UNDER TRADEMARK LAWS 6

2.1 Historical Background of Trademark 6

2.2 Definition of Trademark 8

2.3 Functions of Trademark 9

2.3.1 Identification and differentiation function 9

2.3.2 Indication of origin function 10

2.3.3 Indication of quality function 10

2.3.4 Advertising function 10

2.4 Characteristics of the Registrable Trademarks 11

2.5 Doctrine of Distinctiveness 13

2.5.1 Fanciful or Coined Mark 14

2.5.2 Arbitrary Mark 14

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2.5.3 Suggestive Mark 15

2.5.4 Descriptive Mark 16

2.5.5 Generic Mark 17

2.6 Principles of Use Requirements for Trademark Acquisition 21

2.6.1 Requirement of use 22

2.6.2 Requirement of intention to use trademark 23

2.6.3 No requirement of use or intention to use of trademark 23

CHAPTER 3 PROOF OF USE OF TRADEMARK CONCERNING ACQUIRED

DISTINCTIVENESS UNDER FOREIGN LAWS 25

3.1 The United States of America 25

3.1.1 Overview and Background 25

3.1.2. Trademark Registration Procedure 26

3.1.2.1 Trademark Registration Procedure for Inherently

Distinctive Trademark 27

3.1.2.2 Trademark Registration Procedure for Non-Inherently


3.1.3 Proof of Use for Acquired Distinctiveness 33

3.1.3.1 Prior Registration 33

3.1.3.2 Five-Year of Use of Trademark 35

3.1.3.3 Actual Evidence 36

3.1.4 The Examination Guidelines for Proof of Acquired

Distinctiveness 38

3.2 Japan 39


3.2.2 Trademark Registration Procedure 40






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Distinctiveness 49

3.3 The Republic of Singapore 50


3.3.2 Trademark Registration Procedure 52






3.3.3.1 Requirement of Declaration of Use 53

3.3.3.2 Factors for Examination 54

3.3.3.3 Acquired Distinctiveness of Non-Conventional Trademark 57

3.3.3.4 Trademark Used for Monopoly 58

3.3.3.5 The Evaluation of Other Evidence 58


Distinctiveness 61

CHAPTER 4 PROOF OF USE OF TRADEMARK UNDER SECTION 7 OF THAI

TRADEMARK ACT AND RELEVANT REGULATIONS

CONCERNING ACQUIRED DISTINCTIVENESS 62

4.1 Overview and Background 62

4.2 Trademark Registration Procedure 64

4.2.1 Trademark Registration Procedure for Inherently


4.2.2 Trademark Registration Procedure for Non-Inherently


4.3 Proof of Use for Acquired Distinctiveness 69

4.3.1 Criteria of Use 71

4.3.1.1 Term of Use 71

4.3.1.2 Use with Goods or Services 72

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4.3.1.3 Use of Trademark 73

4.3.1.4 Use within Thailand 73

4.3.2 Evidence of Proof of Acquired Distinctiveness 74

4.4 The Examination Guidelines for Proof of Acquired

Distinctiveness 75

4.5 Problems on Proof of Use Concerning Acquired Distinctiveness 76

4.5.1 Problem on the Registration Procedure 76

4.5.2 Problem on Criteria for Proof of Acquired Distinctiveness 76

4.5.2.1 Term of use 76

4.5.2.2 Use with the goods or services 77

4.5.2.3 Use of trademark 77


Distinctiveness 79

CHAPTER 5 CONCLUSIONS AND RECOMMENDATIONS 80

5.1 Conclusions 80

5.2 Recommendations 83

5.2.1 To Adopt the Use Requirement for Trademark Registration 83

5.2.2 To Specify the Term of Use and Accept as Prima Facie Evidence 85

5.2.3 To Expand the Acceptable Evidence for Proof of Acquired

Distinctiveness 85

5.2.3.1 To Accept the Evidence of Similar goods or Services

for Proof of Acquired Distinctiveness 85

5.2.3.2 To Accept the Evidence of Similar Trademarks

for Proof of Acquired Distinctiveness 86

5.2.4 Amend or Implement Clearer Examination Guidelines for

Proof of Acquired Distinctiveness 88

5.2.4.1 To Clarify the Interpretation of Distribution, Publication

or Advertising of Trademark 88

5.2.4.2 To Clarify the Acceptable Period for Proof of Acquired

Distinctiveness 88

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5.2.4.3 To Clarify the Specifications of Goods or Services in the

Evidence 89

5.2.4.4 To Clarify the Characteristics of Non-Identical Trademark 89

5.2.4.5 To Clarify about the Person who Use of Trademark 90

5.2.5 To Indicate the Reason of Trademark Registrability in Trademark

Database 90

REFERENCES 94

BIOGRAPHY 99

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LIST OF FIGURES

Figures Page

2.1 Spectrum of Distinctiveness 14

3.1 Example of Acceptable Motion Mark 47

3.2 Example of Unacceptable Motion Mark 47

5.1 The database in the USPTO website 91

5.2 The database in the IPOS website 92

5.3 The database in the DIP website and its amendment 92

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LIST OF ABBREVIATIONS

Symbols/Abbreviations Terms

DIP Department of Intellectual Property

IP Court The Central Intellectual Property and

International Trade Court

IPOS

JPO

Ministerial Regulations

The Regulations

Thai Trademark Act

TMEP

T.M.R.P.

Trips Agreement

U.S.

USPTO

WIPO

WTO

Intellectual Property Office of Singapore

Japan Patent Office

Ministerial Regulations Re: The

requirement for proving the

distinctiveness regarding Section 7 las

paragraph of Trademark of Trademark

Act B.E. 2534 (1991) as amended by the

Trademark Act (No. 2) B.E. 2543 (2012)

The Regulations of the Trademark Board

regarding the Procedure of Appeal or

Petition for Cancellation of Trademarks

B.E. 2545 (2002)

Trademark Act B.E. 2534 (1991) as

amended by the Trademark Act (No. 3)

B.E. 2559 (2016)

Trademark Manual of Examining

Procedure

The Rules of Practice of the Trademark

Office

Agreement of Trade-Related Aspects of

Intellectual Property Rights

The United States of America

The United States Patent and Trademark

Office

World Intellectual Property Organization

World Trade Organization

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CHAPTER 1

INTRODUCTION

1.1 Background and Problems

A trademark is known as a significant tool in terms of business as it is used to

create some connections between the consumers and the business and be

distinguished from the others.1 Nevertheless, not every mark has the ability to create

such connection in the eyes of trademark laws because it must fulfill some criteria in

order to be accepted as a trademark under the law. One of the criteria is that the marks

must contain distinctive character. According to the trademark examination

procedure, the Registrar at the Trademark Office will determine whether or not such

trademark meets the registrability requirements, including the requirement of

distinctiveness. Under the trademark law, an inherently distinctive trademark may be

registrable without requirement of proving use. However, the distinctiveness in the

sense of trademark law is not limited to a trademark which is inherently distinctive,

but also covers a trademark which is not inherently distinctive. However, because of

non-inherent distinctiveness, trademark law specifies one more requirement for the

trademark owner to achieve which is the proof of use to ensure that consumers can

sufficiently identify the trademark even though its appearance may not be that

distinctive. The reason is that nothing could stop a mark from being a trademark, if

such mark can perform as a trademark. The measurement of non-inherently distinctive

trademark is based on the use of the marks in the course of trade and the capability of

distinguishing the goods or services from those of the others.2

Theoretically, a non-inherently distinctive trademark can be considered

registrable during the examination by the Registrar if the evidence of use meets the

requirements. In practice, non-inherently distinctive trademark is usually rejected and

the trademark owner has to appeal the rejection to the Trademark Board. During this

1 Joanna Schmidt-Szalweski, “The International Protection of Trademarks After the TRIPS

Agreement” [1998] 1 Duke Journal of Comparative & International Law 189 2 UNCTAD-ICTSD, Resource of Book on TRIPS and Development, (Cambridge University Press 2005,

230)

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process, the trademark owner has a chance to submit evidence of use to prove

distinctiveness. If the Trademark Board determines that such trademark is not

registrable as a result of lack of distinctiveness, the trademark owner has another

chance to prove use to the Court. Many cases regarding the registrability of non-

inherently distinctive trademark have been brought to the Court, some are successful,

and some are not. Upon considering those decisions, it is observed that some of the

unsuccessful trademarks do not meet the requirements for acquired distinctiveness as

the evidence submitted is insufficient. So far, the requirements for proof of use for

registering non-inherently distinctive trademark under Section 7 paragraph three of

Thai Trademark Act and its relevant regulations are insufficient on account of not

clearly specifying the acceptable evidence of use, for example, the amounts of

evidence, types of evidence, length of use or any other significant criteria.

Besides, it is found through the Court Judgements about the misunderstanding

between the trademarks that acquired distinctiveness through use and well-known

marks. For example, in the IP Court Judgement No. 129/2559, the Court stated that

“…the trademark “INKJOY” of the plaintiff is a well-known mark that is deemed to

be distinctive or not…” Instead, the Court should have determined whether the

trademark “INKJOY” has acquired distinctiveness through use or not.3

The effect of uncertain requirements for the proof of use is that it obstructs

the opportunity for the trademark owner to seek the protection of his trademark after

establishing his business. The problems of proof of use not only cause the delay in

registration of a mark but also incur huge cost to the owner. And the worst case is that

even after submitting the proof of use; such trademark may not be registrable.

In order to find a way to resolve the inadequate requirements for the proof of

use, this thesis will study the problems on the proof of use concerning acquired

distinctiveness by considering the requirements and decisions of the successful and

unsuccessful cases of non-inherently distinctive trademarks. Also, the Author will

apply comparative approaches to compare similarities and differences of proof of use

3 The IP Court Judgement No. 129/2559

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for acquired distinctiveness with regard to the provisions under Thai Trademark Act

and its relevant regulations together with other foreign trademark laws, such as, the

United States of America, Japan, the Republic of Singapore, including the study of the

court judgements, and indicate the problems on the proof of use concerning acquired

distinctiveness. Upon the study as aforesaid, the Author would like to propose the

alternative solutions for further resolving problems which are in accordance with the

current issues.

1.2 Hypothesis

The provisions of Section 7 paragraph three and Ministerial Regulations

dealing with proof of use of non-inherently distinctive trademark are insufficient to

accommodate proof in order to acquire distinctiveness. Such insufficiency causes

problems relating the criteria for the proof of use. In order to accommodate such

proof, the provisions of Section 7 paragraph three and Ministerial Regulations should

be amended by adopting approaches to the matter used in foreign trademark law.

1.3 Objective of study

1.3.1 To study the background and overview of the proof of use concerning

acquired distinctiveness

1.3.2 To study the situation of the proof of use concerning acquired

distinctiveness prescribed in trademark laws of foreign countries such as the United

States of America, Japan and the Republic of Singapore.

1.3.3 To study the Thai Trademark Act and its relevant regulations regarding

the proof of use concerning acquired distinctiveness, the current practice of the

Registrar, the Trademark Board’s decisions, and the judgements of the IP&IT Court

and the Supreme Court.

1.3.4 To propose the solutions or alternatives in order to solve the problems

for the proof of acquired distinctiveness by amending Section 7 of Thai Trademark

Act and its relevant regulations, or implement the regulations for the proof of use in

order to clarify and standardize the requirements thereof.

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1.4 Scope of study

This thesis will focus on the legal problems relating to the proof of use under

Section 7 of Thai Trademark Act concerning acquired distinctiveness, the Ministerial

Regulations, , the Trademark Board’s decisions, and the judgments of the Court, by

comparing them with the foreign trademark laws on the issues of the trademark

registration procedure, the proof of use for acquired distinctiveness and the

examination guidelines for proving acquired distinctiveness and its rationale by

considering better solutions or alternatives for the improvement of Thai trademark

Act.

1.5 Methodology

This study methodology concerns documentary research by examining and

analyzing legal texts regarding trademarks, Thai and foreign legislative provisions

and judgements, legal publications published on online database including the legal

opinions from the experts or practitioners who have experience in area of trademark

laws.

1.6 Expected Result

1.6.1 To understand the overview and background of use concerning acquired

distinctiveness.

1.6.2 To understand the concept of use and the proof of use concerning

acquired distinctiveness described in the foreign trademark laws.

1.6.3 To understand the concept of use and the proof of use concerning

acquired distinctiveness under Thai Trademark Act and its relevant regulations.

1.6.4 To understand the problems regarding the proof of use concerning

acquired distinctiveness under Thai Trademark Act and its relevant regulations, and

offer solutions and alternatives to improve Thai Trademark Act and its relevant

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regulations with regard to the proof of use for acquired distinctiveness.

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CHAPTER 2

GENERAL PRINCIPLES OF USE UNDER TRADEMARK LAWS

Use is one of the essential concepts with regard to trademark laws. It is widely

accepted that without use, a mark will lose its ability to become a trademark. This

chapter will provide information in brief of the history of trademarks to demonstrate

how trademarks were developed till the present day, and then inform the readers about

the definitions of trademark by explaining the types of characters that can be applied

as trademark. This chapter also elaborates about the functions of trademarks and

characteristics of a registrable trademark. The principles provided in this chapter are

based on international agreements and conventions which the member countries apply

as a basis of trademark registration in their respective jurisdictions.

2.1 Historical Background of Trademark

Trademark came into existence when people started exchanging their goods or

services among each other. Therefore to allow recognition of such goods or services

by the consumers, the traders started to use trademark to identify their goods or

services and distinguish them from those of others.4

The history of use of trademarks started from the beginning of commerce and

trading of goods.5 Marks were not created for trading initially as was seen from the

exposure of the evidence of the antiques from ancient Egypt demonstrating that there

were symbols affixed to such antiques owing the religious beliefs of the Egyptian

people.6 Then in Greek and Roman periods, there were marks used to determine the

makers of items.7 As time passed, marks were used with goods for the purpose of

4 Dr. Shoen Ono, ‘The History and Development of Trademark Law’ (1999) Overview of Japanese

Trademark Law 2nd edition, 1<http://www.iip.or.jp/e/e_publication/ono/ch2.pdf> accessed 3 January

2017 5 Ibid 6 Ibid 7 Ibid

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distinguishing them from the others.8 In that sense of use, the marks eventually

became trademarks as they are known today.9

The concept of trademark protection had been abundantly expanded due to the

development of the international trade from one country to another. Once the

exchange of commerce and trade increased significantly, the issue of protection of

trademarks arose. In order to standardize the rules for trademark protection among the

countries, an international agreement regarding trademarks, namely TRIPs Agreement

was established which prescribed the minimum requirements for the member

countries to apply in their respective jurisdictions.10

In terms of trade, trademark is a part of intellectual property laws that is used

to prevent unfair competition. The imitation of trademarks and tradenames was

believed to be the oldest method for seeking advantages of the others.11

In the

beginning, the protection of trademarks was subject to criminal law and tort law, and

then it had developed to be applied with trademark law. Currently, trademark law has

created the rules for trademark registration in order to obtain exclusive rights of use of

trademarks by the registered owner.12

Trademark law does neither prevent any activity with regard to the imitation

of goods or services, protect any word or mark that is used as trademarks nor protect

the goods or services to be used in connection with such trademarks. But, instead, the

heart of trademarks is to control the right source or the origin of goods or services so

that the trademark will establish the relationship between the goods or services with

the owner of such goods or services. As long as the said relationship remains, the

rights upon the marks will continue.13

8 Ibid 9 Ibid 10

World Trade Organization (WTO). ‘Changing the face of IP trade and policy-making’

<http://www.wto.org/english/thewto_e/20y_e/trips-brochure2015_e.pdf.> accessed 15 January 2017 11 Jakkrit Kuanphot, ‘International Law concerning Copyright Patent and Trademark’ 259 12 Ibid, 259 13 Ibid, 260

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2.2 Definition of Trademark

The definition of trademark is prescribed in Article 15(1) of TRIPs

Agreement which states that “Any sign, or any combination of signs, capable of

distinguishing the goods or services of one undertaking from those of other

undertakings, shall be capable of constituting a trademark. Such signs, in particular

words including personal names, letters, numerals, figurative elements and

combinations of colours as well as any combination of such signs, shall be eligible for

registration as trademarks. Where signs are not inherently capable of distinguishing

the relevant goods or services, Members may make registrability depend on

distinctiveness acquired through use. Members may require, as a condition of

registration, that signs be visually perceptible.”14

According to Article 15(1) of TRIPs Agreement, a trademark could be any sign or

any combination of sign that is inherently capable of distinguishing goods or services

of an entity from the others. This article also demonstrates some examples of

characters that are deemed to be accepted as a trademark such as “words, personal

names, letters, numerals, combination of figurative elements and combinations of

colors as well as any combination of such signs”15

for the member countries to have a

common vision about the definition of trademark. Nevertheless, any sign that has not

been stated in Article 15(1) of TRIPs Agreement may be registrable if such sign can

distinguish the goods or services from those of the others,16

not limited to any sign

that is visually perceptible. Regarding the last sentence of Article 15(1) of TRIPs

Agreement, it states that member countries may set out, as one of the requirements for

the registration, that the sign be visually perceptible. From the interpretation of

wording “may”, it means that any sign that is not visually perceptible, such as sounds,

scents, taste and textures, shall be registrable as well.17

Nowadays, the trend of non-

visually perceptible mark is widely accepted in many countries, for example, the

registration of Roaring Lion by MGM Entertainment (Registration No. 73553567) or

14 TRIPs Agreement, Article 15(1) 15 Ibid, 262 16 Ibid, 262 17 UNCTAD-ICTSD (n2) 229.

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Looney Tunes Theme Song by TIME WARNER ENTERTAINMENT (Registration

No. 75934534) in the United States of America, On April 1, 2015, Japan accepted

Motion Mark, Hologram Mark, Color Per Se Mark, Sound Mark, and Position Mark

and referring to the latest amendment of Thai Trademark Act, Thailand has accepted

non-conventional trademarks such as three-dimensional trademark, sound mark and

combination of color mark.18

In case of a mark lacking distinctive character, the

member countries may accept the registration of any mark that is not inherently

distinctive but capable of distinguishing goods or services upon the proof of

distinctiveness through use.19

The Purpose of Article 15(1) of TRIPs Agreement is to standardize and

broaden the scope of protectable trademarks20

which each member country can follow

for the implementation in its territory. In this regard, the definition of trademark given

under TRIPs Agreement is broad because of the intention to expand the broadest

scope of trademark protection.21

2.3 Functions of Trademark

In general, a trademark performs 4 functions which are: 1) identification and

differentiation function; 2) indication of origin function; 3) indication of quality

function; and 4) advertising function. Each of these functions can perform separately

or jointly in one trademark.22

2.3.1 Identification and differentiation function

To function as a trademark, it has to be able to identify and distinguish goods

or services of the owner from the others. This function leads to the one of the

significant concept of trademark which is the distinctiveness. The distinctiveness of

trademark makes the mark itself dominant and different from the goods or services of

18 Thai Trademark Act, Section 7paragraph two 19 UNCTAD-ICTSD (n2) 229. 20 Jakkrit Kuanphot (n11) 262. 21 Ibid, 262 22 Thatchai Suppapholsiri, ‘The Explanation of Trademark including Trademark Act B.E. 2534’ 8

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the others. In such case, the distinctiveness protects the consumers from misleading

goods or services that could possibly occurred when the consumers consume product

or services.23

2.3.2 Indication of origin function

This function is similar to the identification and differentiation function above.

With this function, the consumers can acknowledge that the goods or services desired

to be purchased come from which manufacturer or seller. Moreover, the trademark

attached to the goods or services connects to the consumers’ perception which ensures

that whenever the consumers purchase or obtain goods or services under this

trademark, they come from the same source.24

2.3.3 Indication of quality function

When the consumers purchase the goods or services from the same trademark

as previously purchased, they realize that within the same trademark, they will receive

the product or service with the same quality. The quality itself does not guarantee the

level of the quality, in other words, the quality does not have to be perfect, but it has

to be good enough and satisfy the consumers so that they will choose to buy it once

again from the impression of the product or services through trademark attached

thereto.25

2.3.4 Advertising function

The manufacturers or sellers usually use trademark to create an impression

among the consumers vis-à-vis their goods or services. Without trademark, it will be

difficult to advertise the goods or services in order to be different from other

proprietors who sell the same or similar goods or services. Moreover, trademarks also

create demand of such goods or services resulting from the advertisement because the

23 Ibid, 9 24 Ibid, 9 25 Ibid 10

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consumers will choose the goods or services which they appreciate through

trademarks that they remember.26

2.4 Characteristics of the Registrable Trademarks

Generally, any trademark specified in Article 15(1) of TRIPs shall not be

denied for registration on other grounds, unless it is prohibited pursuant to the

provisions of the Paris Convention.27

According to Article 15(2) of TRIPs Agreement,

there are two grounds for the member countries to deny the registration: first, the

rejection of registration of trademark must be in accordance with any cause specified

in Paris Convention; and (2) the rejection of registration may occur due to other

reasons, as long as it does not conflict with the provisions prescribed in Paris

Convention. The provision under Paris Convention that describes the events for

refusal is Article 6quinquies, stating that there are three grounds for refusal: (1) the

mark that infringes any acquired rights of third party in the same country where

protection is sought; (2) the mark that lacks distinctiveness or consists of or

designates the kind, quality, intended purpose, value or place of origin of the goods or

services; and (3) the mark that is against the good moral or public order.28

The

member countries are required to adopt and implement their national laws based on

“as is” basis in accordance with the criteria under Article 6quinquies of Paris

Convention.29

Apart from the refusal ground as aforementioned, the Paris Convention

specifies other grounds for refusal that the member countries may voluntarily adopt in

their own countries which are:

1) The refusal of the registration of trademark that is similar to the

well-known mark

26 Ibid, 11 27 TRIPs Agreement, Article 15 (2) 28 Paris Convention, Article 6quinquies 29 UNCTAD-ICTSD (n2) 231.

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According to Article 6bis of Paris Convention, the member countries

can refuse or withdraw the registration of trademark or prevent a proprietor from

using trademark if the use of such mark cause confusion with a well-known mark in

those countries.30

2) The refusal of the registration of trademark that is identical or

similar to State Emblem, Official Hallmarks and Emblem of that country

Regarding Article 6ter (1)(a) of Paris Convention, the member

countries agree to refuse or invalidate the registration, and prohibit using, without

having obtained appropriate authorization, a trademark or part of trademark that

contains armorial bearings, flags, and other State emblems of member countries,

official signs and hallmarks which are controlled or warranted by those countries.31

3) The refusal of the registration of trademark that is identical or

similar to State Emblem, Official Hallmarks and Emblem of other member

countries

Referring to Article 6ter (1)(b) of Paris Convention, the obligation

under Article 6ter (1)(a) of Paris Convention shall be applied to the armorial

bearings, flags, and other emblems of the international intergovernmental

organizations, except for those that are already prescribed in the international

agreements.32

In conclusion, the characteristics of registrable trademarks can be categorized

into three main criteria: (1) a trademark must be distinctive either by itself or through

use in case of lack of distinctive character; (2) a trademark cannot be identical or

similar to the others’ registered trademark, in other words, a trademark must not

infringe others’ rights, including but not limited to the intellectual property rights or

30 Jakkrit Kuanphot (n11) 266. 31 Paris Convention, Article 6ter (1)(a) 32 Paris Convention, Article 6ter (1)(b)

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any right governed by laws; and (3) a trademark must not be subject to the

prohibitions prescribed in either Paris Convention or national law.

2.5 Doctrine of Distinctiveness

One of the most significant characteristic of registrable trademark is

distinctiveness. This condition has been stated in Article 6 quinquies (B)(ii) of Paris

Convention that the member countries may assume that the non-distinctive character

of trademark or trademark which consists of or designates the kind, quality, intended

purpose, value or place of origin of the goods or services, is non-registerable33

or such

trademark is incomplete.34

The terminology of distinctiveness in trademark law differs from the meaning

that we commonly use in daily parlance35

which we understand to mean “the quality

of being individual or easily distinguishable”,36 but in terms of trademark law, the

distinctiveness refers to the ability of trademark to be distinguished from the others’

goods or services. This meaning is set in accordance with the true purpose of

trademark in performing as a tool to indicate the origin of goods or services of

registered owner.37

The level of distinctiveness is firstly established in the case Abercrombie &

Fitch v. Hunting World that categorizes distinctiveness upon the protection of

trademark which could be explained by the spectrum as shown below, types of

trademark can be divided based on the strength of trademark into 5 categories which

are: (1) fanciful or coined mark; (2) arbitrary mark; (3) suggestive mark; (4)

descriptive mark; and (5) generic word.38

33 Paris Convention, Article 6 quinquies (B)(ii) 34 Jakkrit (n 11) 264 35 J. Thomas McCarthy, ‘McCarthy on Trademarks and Unfair Competition 4th’ Section 11:2 36 Oxford Dictionary wording distinctiveness 37 Jakkrit (n 11) 264 38 Abercrombie & Fitch Co. v. Hunting World [1976] 2nd Cir., 537 F.2d 4

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Figures 2.1 Spectrum of Distinctiveness39

2.5.1 Fanciful or Coined Mark

A fanciful mark or coined mark is the strongest mark pursuant to the spectrum

of distinctiveness. This mark is invented from the mixtures of letters or numeras into a

new word without meaning, for example, KODAK for film and camera products

(Registration No. 0085423), EXXON (Registration No. 090244) or ESSO

(Registration No. 0176408) for petroleum products. A fanciful or coined mark

becomes the strongest mark because it has no inherent meaning and can only

represent as a trademark that is used for distinguishing goods or services from those

of the others.40

2.5.2 Arbitrary Mark

An arbitrary mark is a mark that consists of a word or combination of words

which has meaning, but it is attached to the goods or services that are not related to

39 Making a Mark: The Importance of Trademarks in Establlishing a Distinct Identity in the Marketplace

<http://www.wipo.int/edocs/mdocs/sme/en/wipo_smes_kul_11/wipo_smes_kul_11_ref_theme_02_01.

ppt> accessed 15 January 2017 40 Trademark Strength, updated 2014

<http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx#>

accessed 16 January 2017

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the meaning of the mark,41

such as, APPLE for computer (Registration No. 3928808),

CAMEL for clothing (Registration No. 1059939). This type of mark is deemed to be

highly distinctive because even the word has meaning that meaning does not relate to

the goods or services. So, the customer will recognize such word as it represents the

goods or services only.

2.5.3 Suggestive Mark

A suggestive mark indirectly refers to the nature of the goods or services

without expressly describing the goods or services. It requires the consumers to make

a mental leap in order to understand the connection between a suggestive mark and

the goods or services.42

In other words, a suggestive mark hints at the details that can

refer to the goods or services, i.e. the quality, ingredients or characteristics. But such

details are not enough to understand what the goods or services are.43

A suggestive

mark is still deemed to be inherently distinctive, but weaker than fanciful or coined

mark and arbitrary mark.

The Supreme Court held that “BIOFRESH” has no meaning in the dictionary.

It is the combination of two words, “BIO” and “FRESH”, which means the fresh

living thing. When this mark is applied with the specifications of goods in Class 11,

i.e. refrigerator and freezer which are general kitchen apparatus, the mark

“BIOFRESH” could qualify as a suggestive mark which refers to the trademark that

encourages the consumers to think or imagine about the characteristics or quality of

goods in the sense that it could keep the freshness of food, vegetables, fruits and meat.

The mark “BIOFRESH” does not directly refer to the characteristics or quality of

goods, so such trademark is distinctive subject to Section 7 paragraph two (2) of

Trademark Act B.E.2534.44

41 Leelanau Wine Cellars, 502 F.3d at 513 n.3 42 Drawing the Line between Descriptive and Suggestive Trademarks,

http://www.rc.com/upload/article-drawing-the-line-between-descriptive-and-suggestive-trademarks-

heath-fall-2010.pdf 43 OBX-Stock, 558 F.3d at 340 44 Supreme Court Judgement No.9466/2554

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Also, the mark “COKE ZERO” which is the combination of “COKE” and

“ZERO”, it is widely understood that “COKE” is the brand of beverage, and “ZERO”

means one of the numbers, zero, or no value. When “ZERO” and “COKE” are used

together, it should be understood that the ingredient contained in the beverage is small

amount or none. In which only the interpretation of “COKE ZERO” cannot

understand that this beverage does not contain sugar unlike showing in the

advertisement. Although, the consumers can guess that such ingredients which is less

amount or none refers to sugar, but the trademark itself is not clearly express in that

way because the missing ingredient could be anything apart from sugar. Therefore,

the mark “COKE ZERO” is a suggestive mark which is registrable pursuant to

Section 7 paragraph two (2) of Trademark Act B.E. 2534.45

2.5.4 Descriptive Mark

The trademark itself may not have distinctive character but the distinctiveness

is attained by the use of trademark with the designated goods or services within

certain periods that enables the public to distinguish the goods on which the

trademark is applied from the other goods used in connection with other trademarks.46

The non-inherently distinctive trademarks include trademarks that are merely

descriptive, primarily geographically descriptive47

or personal name, tradename, name

of juristic person or trademark that is not represented in a special manner.48

Referring to the spectrum of distinctiveness, a descriptive mark is non-

inherently distinctive because it directly indicates goods or services or essential

elements or sources which obviously refer to such goods or services such as “best” or

an adjective that describes the quality of the goods or product. When such descriptive

word is applied as a mark, the consumers may believe that the goods or services have

quality as said in the trademark. In the perspective of trademark, a descriptive word

should not be registerable in order to protect the consumers and not allow anyone to

45 Supreme Court Judgement No.14583/2557 46 Jakkrit (n11) 265 47 Sprectrum of Distictiveness (n41) 48 Thai Trademark Act B.E. 2534 (1991) (amended B.E. 2559 (2016)), section 7(1)

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have an exclusive right to use descriptive word as a trademark. An example of a

descriptive mark is the mark “LASERJET.”

The mark “LASERJET” is a combination of two words, “LASER” meaning

a device that produces a beam of light which cause them to radiate their energy in

phase and “JET” meaning liquid, gas or dust that is sprayed in phase. When the mark

“LASERJET” is used with toner contained in cartridge which is applied with copy

machine and printer, the toner of plaintiff functions as dust sprayed from the cartridge

like laser light. The mark “LASERJET” is a descriptive mark that directly refers to

the characteristics or quality of the goods. Therefore, such mark is not distinctive and

registrable pursuant to Section 7 paragraph two (2) of Trademark Act B.E.2534.49

Even though suggestive mark and descriptive mark are similar, there is a

borderline to differentiate these marks apart from each other. If the meaning of a mark

directly refers to the characteristics or qualifications of goods or services, then it can

be implied that such mark is descriptive. On the other hand, if the meaning of mark

does not relate to the characteristics or qualifications of goods or services, then it is

only suggestive mark. In addition, referring to the judgements from the U.S., a

descriptive mark originates from the characteristics of goods which affect the

consumer’s decision whether or not to buy the goods or it could correspond with the

meaning in a dictionary. In some cases, a descriptive mark which identifies the

characteristic of a particular product can be considered similar to an adjective.50

2.5.5 Generic Mark

Generic name is the name of goods or services and it cannot function as a

trademark because generic name is what public used commonly for calling such

goods or service instead of leading to the source of goods or services.51

Nonetheless,

49 Supreme Court Judgement No.3685/2551 50 Leelanau Wine Cellars (n41) n.5 51 J. Thomas McCarthy (n35) 12:1

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the generic name is not prohibited to be registered as a trademark, if it is applied with

other products, provided that such products are not related to the prohibited one.52

According to the Supreme Court Judgement No. 2592-2593/2553, the Court

held the determination of generic mark in the sense of trademark law by stating that

“generic mark, which is unregistrable, means a word that is used for calling such

particular goods in common such as “CHAIR” for a chair and no one can be solely

and exclusively entitled to use that word.”53

In some cases, a word that does not originally appear as a generic name can

become a generic name if the principal significance of the word is understood by the

public to be an indicator of the goods or services, not the origin.54

This situation

happens to the trademark that is applied on a product that is patented. When the

trademark owner is the sole company which produces such product in the market, and

uses the trademark with such product together with the extreme sale and advertisings

throughout the time that he has an exclusive right to produce or sell such product

under the patent law, normally ten to twenty years, such period is long enough to

make the consumers believe that the trademark is the common word for calling such

product.55

“Aspirin” was a brand name for a medicine produced by Bayer. During the

exclusivity period of the patent, Bayer made no endeavor to imprint to the consumer’s

perception that “Aspirin” is not a generic name of that medicine, and after the patent

expired, the word “Aspirin” became generic name.56

The same happened to the mark

“ESCALATOR” as the trademark owner failed to prove the indication of origin of

goods, i.e. moving staircase, by using a mark “ESCALATOR” and the public can

understand the ESCALATOR and moving staircase are the same thing, in other

words, the word “ESCALATOR” is the common word for calling staircase. In such

52 Ibid 53 Supreme Court Judgement No.2592-2593/2553 54 Coca-Cola Co. v. Overland, Inc. [1982] 9th Cir., 692F.2d 1250, 1254 note 10 55 The Genericide of Trademark, John Dwight InGramt, Buffalo Intellectual Property Law Journal Vol.

2:154 p. 158 56 Bayer Co., Inc. v. United Drug Co., [1921] S.D.N.Y. 272 F. 505

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case, the mark “ESCALATOR” becomes a generic name which cannot be registrable

and protectable by laws.57

Therefore, a trademark owner should try to prevent his trademark from being

used as a generic name by way of introducing to the public that the word named for

the goods or services is the trademark, and at the same time, also advertise another

common word or words for describing the goods or services, for example, PALM

PILOT for connected organizers, WALKMAN for personal stereos and ROLLER-

BLADE for in-line skates.58

The differentiation between the generic name and descriptive term are difficult

to define.59

Sometimes, people may be confused between generic mark and

descriptive mark because both of them are not registrable, even though descriptive

trademark can be registered by the proof of use. Conceptually, both generic mark and

descriptive mark are completely different on the point that generic mark refers to

particular goods or services without need of interpretation or translation. On the other

hand, for a descriptive mark, the interpretation or translation is still required but it

must directly describe the characteristics or qualifications of goods or services.60

Nevertheless, in the practice, the border to differentiate a highly descriptive term and

generic name is undefinable. The reason is that generic name can be interpreted in the

way of common descriptive name. Thus, the common descriptive name could confuse

people from misunderstanding that it is descriptive term, even though it is different.

Consequently, if the generic name and highly descriptive name cannot be separately

distinguished, it will be disadvantageous for both public order and individual, i.e. if

generic name is defined as highly descriptive name, it will be registrable by proving

secondary meaning even it though it is supposed to be freely use by the public. On the

contrary, if highly descriptive term is deemed as generic name, it will be prohibited

from registration although the trademark owner should be entitled to use such

57 Proper Used, Trademark are Forever, Sidney A. Diamond, American Bar Association Journal,

December 1982 Volume 68 page 1576 58 John Dwight InGramt, ‘The Genericide of Trademark’ Buffalo Intellectual Property Law Journal

Vol. 2:154, 159 59 J. Thomas McCarthy (n35) 12:20 60 Ibid

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trademark with his goods or services if he could satisfy the proof of secondary

meaning.

With regard to the differentiation of generic word and descriptive term, The

U.S. Court has implemented in test to define whether such mark will be subject to

generic mark or descriptive mark. A test is specified in the case Zatarian, Inc. v. Oak

Grove Smokehouse, Inc. through the analysis of the mark “FISH-FRI” of Zatarian Inc.

(“Zatarian”) and “FISH FRY” that is used on packaging of Oak Grove Smokehouse,

Inc. (“Oak Groove”) and Visko’s Fish Fry, Inc. (“Visco’s”) as competitors of

Zatarian. Zatarian claims that the mark “FISH-FRI” is a descriptive term which can be

registrable by proving acquired distinctiveness. On the other side, Oak Groove and

Visco’s declare that such mark is generic word which cannot seek for exclusivity of

use under trademark law. The Court invented these tests in categorizing a mark as

descriptive:

(1) The meaning from dictionary

The dictionary is significant for interpreting descriptiveness in the way that

the definitions of words in dictionary are appropriate and common for

understanding in the public.61

In this case, the meanings of “FISH-FRI”

from the dictionary are a picnic which fish are caught and, fried and

consumed or fried fish. Therefore, “FISH-FRI” is deemed descriptive

because it describes the purpose of goods rather means the product itself.

(2) The imagination test

Imagination test determines the linkage between the designated trademark

and the goods which is used with trademark.62

If the imagination is

required in order to refer to the goods, then it is suggestive term. But in

case of “FISH-FRI”, the consumers can guess that this product is the

processed fish batter; thus, it is descriptive term.

61 American Heritage Life Insurance Co. v. Heritage Life Insurance Co., [5th Cir.974] 94 F.2d 3, 11 n.5 62 Stix Products, 295 F.Supp. at 488

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(3) The mark is useful for the competitors to describe their goods

This test is applied in order to determine whether the competitors need

such term to describing their products or not.63

The term of “FISH-FRI”

can be replaced with other terms to define the same or similar products

such case coating mix or batter mix for fish, or “FISH FRY” or describing

their products. As a result, the mark “FISH-FRI” is a descriptive term, not

a generic word.64

(4) Use for marketing

The last test for considering descriptive term is that whether the mark is a

common word that other sellers used for marketing goods or services are

similar to the designated goods or services of the trademark owner, then it

can be implied that this mark is descriptive. In this case, the word “FISH-

FRI” is merely a descriptive word that the competitors who sell fish batter

usually apply to their goods for advertising or describing their products, in

such case “FISH-FRI” can be deemed as descriptive mark.65

2.6 Principles of Use Requirements for Trademark Acquisition

Article 15.3 of TRIPs Agreement, it states that member countries may require

use as a requirement for trademark registration. Nonetheless, actual use must not be

the requirement for filing an application for the registration. Moreover, an application

for a mark shall also not be refused on the ground that the mark was not used before

expiry of three years form the date of application.66

The concept of use requirement comes from the unfair competition law of

Commonwealth jurisdiction that is willing to address claim arising out of taking

unfair advantage from other’s trademark or business name.67

This concept provides

broader protection not only to the trademark, but also against the infringement by

63 Union Carbide Corp. v. Ever-Ready, Inc., [1976] 7th Cir., 531 F.2d 366, 379 64 Barton BeBee, Trademark Law: An Open-Source Case Book-Part I, 19 65 Ibid 66 TRIPs Agreement, Article 15.3 67 UNCTAD-ICTSD (n2) 232

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using others’ business name or distinctive characteristics of business.68

In other

words, the first concept of trademark protection originates from use of trademark.

Nevertheless, it is difficult to prove a preferential right upon use of trademark;

therefore, the registration is required for trademark protection.

In this regard, the registered owner shall have exclusive right of use of the

trademark, unless such trademark is used by a third party before the registration,

pursuant to which such person is deemed to have preferential right of trademark and is

entitled to cancel such trademark registration.69

Use requirement for registration is not strictly required for the member

countries. Hence, it depends on the member countries whether to adopt requirement of

use for registration or not. Still, trademark is required to be used or otherwise its

registration can be revoked.

According to the trademark acquisition system in the world regarding use

requirements, the principles of use requirement can be categorized into three

systems:70

2.6.1 Requirement of use

This system requires an actual “use” of trademark to be one of the

requirements for trademark registration. The trademark owner has to use trademark

with the goods or services before filing the application for trademark registration. The

purpose of the use requirement is to prove the ownership of trademark and to prevent

the accusation of an exclusive right by another party after the trademark is registered.

Moreover, this system also facilitates the request for the remedies for the trademark

68 UNCTAD-ICTSD (n2) 232 69 Jakkrit (n 11) 267 70 Thatchai (n22) 11

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owner in certain situations.71

The countries that apply use requirement are the U.S.

and the Republic of the Philippines.72

2.6.2 Requirement of intention to use trademark

This system states that the trademark owner must certify that he has an

intention to use trademark, but the trademark is not required to be used prior to the

application for the registration. This system compels the trademark owner to use such

trademark after filing an application; otherwise, the trademark will be vulnerable for

revocation. The countries which apply this system are the United Kingdom and other

countries whose trademark system is influenced by the United Kingdom.73

2.6.3 No requirement of use or intention to use of trademark

This system provides the exclusive right to the trademark owner without the

requirement that the trademark must be used or certifying that the trademark will be

used. Provided that, the trademark owner must use the trademark after the registration

for a certain period; otherwise, the trademark may be subject to the cancellation, or

the exclusive right upon the trademark may be diluted. For example, there may be a

requirement that the trademark owner is required to use the trademark for five years in

order to obtain the right for preventing the other party from the infringement of the

owner’s trademark.74

In comparison to the trademark systems above, Thailand has no requirement

of use or intent-to-use of trademark system because there is no provision specified in

Thai Trademark Act that requires the trademark owner to submit a declaration of use

or intent-to-use in order to file an application for trademark registration.75

However,

the trademark owner may lose his exclusive right upon the trademark if the trademark

71 Ibid 11 72 Ibid 12 73 Ibid 12 74 Ibid, 12 75 Ibid, 12

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owner does not use trademark for at least three years before the claim of the

cancellation based on non-use is raised.76

76 Thai Trademark Act, Section 63

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CHAPTER 3

PROOF OF USE OF TRADEMARK CONCERNING ACQUIRED

DISTINCTIVENESS UNDER FOREIGN LAWS

In the world of business, trading and exchanging goods and services

undeniably play an immense role across the globe. Therefore, to ensure smooth trade

and commerce, the countries have mutually created and agreed upon the international

rules and regulations to be applied as common requirements. The international rules

and regulations have set the minimum requirements for the member countries to

follow subsequently implement in their national trademark laws. In this regard, this

chapter will study trademark laws of the member countries of the international

organization, namely, WIPO, i.e. the United States of America, Japan and the

Republic of Singapore concerning the requirements of registration, especially the

proof of use for acquired distinctiveness. Even though trademark laws originate from

the same international regulation such as Paris Convention and TRIPs Agreement,

each country may implement or establish the law differently from the standard or

above the standard provided under international rules and regulations depending on

the appropriateness in such country, provided that such implementation must not in

conflict with, violate or be below the international rules. The Author believes that the

chosen countries can represent the idea of trademark law under different judicial

systems that can be compared to our trademark law and adopt rules that are

advantageous to Thailand to improve our trademark system.

3.1 The United States of America

3.1.1 Overview and Background

Trademark protection under trademark laws of the U.S. is divided into state

level and federal level in which the process and level of protection are different, i.e.

for state level, the protection of trademark will be only within the state that the

trademark owner registers trademark; therefore, the protection is lower than the

federal level. In order to obtain legal protection for the trademarks, the trademark

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26

owner is required to register trademark together with the designated goods or services

intended to be used in the course of trade. The U.S. applies “use-based” requirement

or “use-based application” for the registration which means the trademark owner must

submit the declaration of use to show that the trademark was used before the

registration, and for the presumption of validity, such trademark will be used

continually after the trademark is registered. However, the declaration of use need not

be submitted at the time of filing the application. The trademark owner may file the

application for the mark based on use of the mark or a bona fide “intent-to-use”.77

These applications are deemed to be filed in the Principal Register.78

Upon the examination by the Examination Attorney at the USPTO, the

Examination Attorney may, by his discretion, order that such trademarks lack

distinctiveness. However, according to Section 2(f) of the Lanham Act, 15 U.S.C. §

1052(f), the trademark owner may have another chance to register trademark if he/she

can prove the acquired distinctiveness upon the use of such trademarks. After receipt

of registration, the trademark owner will have exclusive rights to utilize trademarks

3.1.2 Trademark Registration Procedure

The U.S. trademark law is separated into state level and federal level.

Generally, each state has its own laws for applying with trademark issues, such as the

registration requirement, registration procedure, infringement, damages including the

practices for the officers. However, the trades and commerce cannot be limited to one

state. They have to be expended to other states. Therefore, the U.S. trademark law for

federal level is enacted and applied for federal registration.

Nevertheless, not every trademark can be registered at federal level, because

of wider protection, that need more intensive requirements. For the state level, it

depends on the state to issue the requirements for trademark registration which, in

77 The Lanham Act, 15 U.S.C. § 1051(b), Section 1(b) 78 The U.S. Trademark Registers: Supplemental vs. Principal

<http://www.inta.org/INTABulletin/Pages/TheUSTrademarkRegistersSupplementalvsPrincipal.aspx#>

accessed 3 January 2017

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general, are the requirements of use or intent-to-use within states, distinctiveness,

non-similarity, and not subject to prohibition. The scope of requirement of use for

state level is only within that state, also the protection for trademark is provided only

within that state.

The federal trademark registration provides the broadest protection for

thetrademark, i.e. the protection throughout the territory in the U.S. Distinctiveness is

one of the requirements in order to qualify the registration. For the trademark to

qualify as distinctive, it will be considered whether (1) it is inherently distinctive of

source or (2) a trademark is distinctive by the development of acquired distinctiveness

of source.79

In other words, a mark is inherently distinctive if “its intrinsic nature

serves to identify a particular source.”80

The hidden supposition is that if the

trademark is inherently distinctive, upon the first impression of consumers, the

consumers will be able to recognize such trademark with the origin of goods or

services. Moreover, non-inherently distinctive trademark can be qualified as

distinctive if it has developed acquired distinctiveness through the proof of use.81

In

this regard, the registration procedure at federal level can be categorized into two

instruments depending on the distinctiveness of trademark which are the Principal

Register for inherently distinctive trademark and the Supplemental Register for non-

inherently distinctive trademark.


Distinctive Trademark

The registration procedure for distinctive trademark can be done on the

Principal Register. There are three requirements for registration: (1) a mark must be

used in interstate commerce; (2) a mark must be distinctive; and (3) a mark must not

be prohibited as stated in 15 U.S.C. § 1052.82

The registration procedure can be called

trademark prosecution. Trademark prosecution begins with filing of an application

79 Ibid (n64) 9 80 Was-Mart Store, Inc. v. Samara Bros., Inc., 529 U.S. 205 210 (2000) 81 Ibid (n64) 9 82 Shubha Ghosh, Richard Gruner, Jay P. Kesan & Robert I. Reis. ‘Intelletual Property Private Rights,

The Public Interest, and The Regulation of Creative Activity’ 532

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with the USPTO. As mentioned above, the U.S. trademark system requires use of

trademark for the registration. Hence, there are two types of applications: use

application for a trademark that has been actually used prior to the registration and

intend-to-use application for a trademark that has not been used before registration but

the trademark owner has an intention to use such trademark. The objective of intend-

to-use application is to grant the trademark owner a chance to protect a trademark

even if the use requirement has not been met yet. In such case, the trademark

prosecution for filing applications based on use and intent-to-use are different,

especially regarding timeline for trademark examination. The details of trademark

prosecution of both use and intent-to-use applications are as follows:

1) Use Application

A mark can be qualified for the registration as required under

15 U.S.C. § 1052, i.e. distinctive and not prohibited by laws, and such mark should

have been used in commerce with the goods or services prior to the registration.83

The

trademark owner must indicate the date of using the trademark including the specimen

of use to demonstrate how the trademark is being used with goods or services.84

Moreover, the trademark owner is obliged to submit the requisite fee for

registration.85

After filing the application, if the trademark is not refused by the

Examining Attorney, the trademark will be published in the Official Gazette for

allowing anybody who is concerned that he or she will be damaged from the

registration of such trademark to oppose the registration within thirty days of

publication in the Official Gazette.86

The publication period can be extended for

another thirty days if a request for such extension is submitted during the first thirty

days and it is done with the good reasons.87

If no one opposes trademark registration

or the trademark owner succeeds the opposition, the trademark will be registered in

the Principal Register.

83 The Lanham Act, 15 U.S.C. § 1051(a) 84 Trademark Application and Post-Registration Process Timelines <https://www.uspto.gov/trademark/trademark-timelines/trademark-application-and-post-registration-

process-timelines> accessed 3 May 2017 85 Shubha Ghosh, Richard Gruner, Jay P. Kesan & Robert I. Reis (n62) 532 86 The Lanham Act, 15 U.S.C. § 1162 87 The Lanham Act, 15 U.S.C. § 1163

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2) Intent-to-Use Application

To file the intent-to-use application, a mark must meet the

requirements as prescribed in 15 U.S.C. § 1152 same as filing application based on

use, the only difference being that the mark has not been used before registration. The

trademark owner has to file intent-to-use application with the requisite fee for

registration. If a mark is not rejected or subject to any request by the Examining

Attorney, it will be published in the Official Gazette. If there is no opposition, then

the Examining Attorney will issue a notice of allowance for the trademark owner to

submit the evidence of use in interstate commerce within six months for the issuing

date. Nonetheless, the trademark owner may request, within the first six months from

the extension of submission period of another six months. Moreover, the trademark

owner may request, with reasonable ground, for the additional extension for another

twenty-four months. The total period for submission of specimen of actual use is

thirty-six months. The cause of extension arises from the reason that before using the

trademark with goods or services in the course of trade, the business must be

established first, and such establishment consumes time. But the trademark cannot be

held longer than thirty-six months in order to be actually used, otherwise registration

will not be granted.



Even though, the trademark itself is not distinctive, such

trademark still does not lose the ability to perform as a trademark upon the condition

that such trademark can be distinctive through use. The trademark prosecution of non-

inherently distinctive trademark is more complicated than the distinctive mark

because the evidence of use must be submitted corresponding with requirements for

registration. Also, proof of use must be made in order to demonstrate that the non-

distinctive trademark has registrability, i.e. it can be used for distinguishing goods or

service of the others.

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30

If the trademark owner desires to register the non-inherently

distinctive trademark, the trademark owner may choose to register trademark with the

same process as inherently distinctive trademark and wait for obtaining the refusal of

registration from the Examining Attorney or register trademark by way of registering

non-inherently distinctive trademark. When the trademark owner decides to register

trademark pursuant to 15 U.S.C. § 1052(f), the point to be consider is not whether the

trademark is distinctive or not because the trademark owner admits that the trademark

lacks distinctiveness,88

but should consider whether such trademark has acquired

distinctiveness instead.89

Another option for the trademark owner when receiving the refusal

based on non-inherently distinctive trademark is that to argue such order to the

Examining Attorney, and at the same time, the trademark owner may alternatively

claim that such trademark can have acquired distinctiveness.90

Nevertheless, claiming

acquired distinctiveness as alternative cannot be deemed that the trademark owner

admits that the trademark is non-inherently distinctive.91

When the trademark owner claims acquired distinctiveness as

alternative, the Examining Attorney must determine the trademark based on two

perspectives: (1) the argument on trademark refusal; and (2) considering whether the

trademark has acquired distinctiveness. 92

The acquired distinctiveness of a trademark

may be recognized by checking whether the trademark has ever been registered, either

identical or similar appearance, and obtained the registration upon acquired

distinctiveness or not, if so the prior registration may help to resolve the question of

whether such trademark has acquired distinctiveness or not. The prior registration can

88 Cold War Museum, Inc. v. Cold War Air Museum Inc.,[2009] Fed. Cir., 586 F.3d 1352, 92 USPQ2d

1626, 1629 89 USPTO Trademark Manual of Examining Procedure (TMEP)

<https://tmep.uspto.gov/RDMS/TMEP/print?version=current&href=TMEP31200d1e103...> accessed 3

May 2017 90 In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011) 91 USPTO Trademark Manual of Examining Procedure (TMEP) (n89) 92 Ibid

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31

be used when the case is brought to the Trademark Board or the Court for the

determination.93

If the issue of acquired distinctiveness is brought to the Trademark

Board, the Trademark Board will consider based on the same ground as the

Examining Attorney. And if the Trademark Board finds that the trademark is

descriptive, and it has acquired distinctiveness, then the descriptiveness of trademark

will be raised, even it had not been raised by the trademark owner.94

In case that the Examining Attorney accepts the evidence of use for

secondary meaning, the trademark owner has two options either to proceed with the

registration based on acquired distinctiveness or to appeal to the Trademark Board

claiming that the trademark is inherently distinctive. The Examining Attorney will

inform the trademark owner by telephone or email and record the trademark owner’s

decision. If the trademark owner decides to appeal or the Examining Attorney cannot

contact the trademark owner, the Examining Attorney has to issue the action in

writing stating that the trademark owner has to appeal the registration based on the

underlying grounds, and the evidence for proving secondary meaning is acceptable,

and it will not be an issue on the appeal.95

In case that the application is subject to the refusal based on the lack of

distinctiveness, the trademark owner can choose whether to register trademark under

the Principal Register or the Supplemental Register, as an alternative.

The trademark owner can submit the amendment of the Supplemental

Register and, at the same time, argue the application of Principal Register. When the

trademark owner decides to amend the application to Supplemental Register, the

Trademark Board will suspend the appeal and remand the case to the Examining

Attorney to review the registrability of trademark on the Supplemental Register. If the

93 Ibid 94 Thomas Nelson, (n90) 95 USPTO Trademark Manual of Examining Procedure (TMEP) (n89)

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32

Examining Attorney considers that such trademark is registrable based on

Supplemental Register, the Examining Attorney will notify the trademark owner by

sending a letter informing that the application is accepted and request the trademark

owner to withdraw the appeal. On the contrary, if the Examining Attorney considers

that such trademark cannot be registered based on the Supplemental Register, the

Examining Attorney will issue a non-final action to the trademark owner instructing

him to submit more evidence or amend the application in order to overcome such

refusal. In the event that the trademark owner fails to do so, the Examining Attorney

will issue a final action and return the case to the Trademark Board for determining

on the registrability based on the Principal Register or the Supplemental Register.96

At

this point, the trademark owner will still be entitled to choose whether to amend the

application from the Principal Register to the Supplemental Register, or vice versa.97

In case that the trademark owner wishes to register trademark on

ground of secondary meaning, but the trademark is determined by the Examining

Attorney to be inherently distinctive, the Examining Attorney will inform the

trademark owner whether to withdraw the claim of 15 U.S.C. § 1052(f) or not.98

If the

trademark owner wishes to withdraw such claim, it can be proceeded by examiner’s

amendment.99

In the situation that the Examining Attorney cannot reach the trademark

owner, or does not receive any response from the trademark owner, the Examining

Attorney must remark in a Note to the File and publish such trademark without

deleting the claim of 15 U.S.C. § 1052(f).

Normally, if a trademark consists of more than one part, it will be

examined as a whole. Likewise, the trademark that contains both inherently

distinctive part and non-inherently distinctive part in the same trademark, the

trademark owner may request the registration claiming 15 U.S.C. § 1052(f) for the

entire mark. In such case, the Examining Attorney will give the alternatives to the

96 USPTO Trademark Manual of Examining Procedure (TMEP) (n89) 97 In re Educational Communication, Inc., 231 USPQ 787, 787 (TTAB) 98 USPTO Trademark Manual of Examining Procedure (TMEP) (n89) 99 Ibid

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33

trademark owner to choose whether to claim 15 U.S.C. § 1052(f) only for the non-

inherently distinctive part or still claim 15 U.S.C. § 1052(f) for the entire mark.

In the situation that the trademark owner desires to claim acquired

distinctiveness for a part of the trademark, the trademark owner is required to submit

the evidence of use of trademark for the portion that is non-inherently distinctive.100

If an application contains the non-inherently distinctive part, but such

part is not fundamental enough to require proof of secondary meaning, the Examining

Attorney may consider treating such non-inherently distinctive part as a surplus of the

trademark. The Examining Attorney may contact the trademark owner and inform that

the non-inherently distinctive part will be treated as a surplus, or in case that the

Examining Attorney opines that it is not necessary to contact the trademark owner, the

Examining Attorney will record this issue in a Note to the File describing that the

examination is completed, and the application is approved for publication. In such

case, the surplus portion will be in the record, but the claim of secondary meaning

will not appear in the Official Gazette and the certificate of registration.101

3.1.3 Proof of Use for Acquired Distinctiveness

The evidence for proving acquired distinctiveness either for the entire or

partial mark basically requires three types of evidence: (1) prior registration; (2) five-

year use; or (3) other actual evidence.102

These types of evidence are not compulsory,

in other words, the trademark owner is not required to prove all types of evidence if it

is impossible to do so. The amount of evidence depends on the descriptive matter of

trademark in order to acquire secondary meaning.

3.1.3.1 Prior Registration

100 Ibid 101 Ibid 102 Ibid

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34

In some cases, the trademark owner can submit the evidence on prior

registration of the Principal Register of the same trademark or similar trademark with

the adequately similar goods or services which may be accepted as prima facie

evidence.103

The Examining Attorney can determine by his or her own discretion

whether to accept the active prior registration of the same or similar trademark to be

an adequate evidence for establishing the acquired distinctiveness of the pending

trademark or not. If the pending trademark is very descriptive or misdescriptive of the

goods or services of trademark, the Examining Attorney may request the trademark

owner to submit more evidence. Nevertheless, the active prior evidence is acceptable

to be prima facie evidence only when the portion of the registered trademark, for

which proved acquired distinctiveness has to be proven, is not disclaimed.104

Another issue that needs to be examined is the interpretation of the

term “same mark”. The prior registered trademark is acceptable when it is “legal

equivalent” of such trademark, i.e. if the prior registered trademark can create the

identical, and continuing commercial impact on the level that the consumers can

understand that the prior registered trademark and the pending trademark is the same

mark.105

For example, the trademark “THE HOLLYWOOD REPORTER” is not

deemed a legal equivalent to the trademark “THE BOLLYWOOD REPORTER”106

or

the word “GOLDEN RING” is not deemed legally equivalent to the trademark device

of golden ring.107

The Examining Attorney has to consider whether the goods or

services under the application are adequately similar to the active prior registration of

trademark or not. If the similarity or relevance is acceptable, the Examining Attorney

may accept the claim of secondary meaning with requesting further evidence. On the

103 Ibid 104 Ibid 105 Ibid 16. 106 In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547-48 (TTAB 2010) 107 Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ 988, 989 n.6 (TTAB 1986)

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35

other hand, if the trademark in the application is not deemed similar or related to the

prior registration, the Examining Attorney will request to submit further evidence

depending on the descriptiveness of trademark.108

Furthermore, the prior registration must be in full force and effective

and must be valid on the Principal Register. The Examining Attorney is obligated to

check and confirm this issue with the records under the database of USPTO.109

3.1.3.2 Five-year of use of trademark

According to 15 U.S.C. § 1052(f), it is stated clearly that a mark that is

used in commerce for five years before the date of the claim of secondary meaning is

made, may be acceptable as prima facie evidence in the course of proof of acquired

distinctiveness.

The five-year period is one of the criteria for the presumption of use

which means that if a mark has been used in commerce for at least five years or

longer prior to the claim of secondary meaning, such use does not guarantee that such

mark will be registrable under 15 U.S.C. § 1052(f). The Examining Attorney may

request further evidence to prove use. The registrability of trademark based on proof

of 5-year use depends on the nature of the trademark, such as, the descriptiveness in

accordance with the goods or services or trademark classifications.110

The amount of evidence deemed to be appropriate for proving use

based on five-year period depends on the descriptiveness of trademark, in other

words, if a trademark is highly descriptive, then a greater amount of evidence of proof

is required in order to achieve the secondary meaning.111

If the refusal of registration is based on the descriptiveness or

deceptive misdescriptiveness or geographical descriptiveness, only proving five-year

108 USPTO Trademark Manual of Examining Procedure (TMEP) (n89) 17. 109 Ibid 17. 110 Ibid 18. 111 Yamaha Int’l Corp., 894 F. 2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990)

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36

use of trademark may not sufficient enough to establish acquired distinctiveness. For

example, for a trademark that is likely to be generic, the trademark owner has to argue

that such trademark is not generic together with the proof of acquired distinctiveness

on such highly descriptive trademark in order to sufficiently prove acquired

distinctiveness.112

In case descriptiveness of trademark results from the nature of the

trademark, such as non-distinctive design, overall color, or sounds of goods or service

that comes from the nature of such goods or service, only evidence of five-year use is

also insufficient to obtain acquired distinctiveness.113

Moreover, five-year use is required to be “substantially use”, i.e. the

trademark does not need to be used only by the trademark owner, and it includes the

use by any person that does not invalidate the claim of the trademark owner.114

Besides, the use of trademark has to be continuously, without any nonuse or

temporary stoppage with the goods or services in the course of trade.115

In addition, the trademark owner must not only show that the evidence

of use is enough for establishing the secondary meaning, but must also prove that

evidence shows that the trademark is used as a mark.116

Nevertheless, the five-year evidence is only presumption of the term of

use, so the Examining Attorney, the Trademark Board or the Court may, at its

discretion, accept when trademark is used for less than five-years, if other evidence of

proof is sufficient enough to constitute acquired distinctiveness.117

3.1.3.3 Actual Evidence

In order to obtain acquired distinctiveness, the trademark owner may

submit any evidence that could prove use of the trademark. Such evidence could be an

affidavit, declarations, letter from longstanding consumers, turn over figure or nature

112 In re Noon Hour Food Prods., Inc., 88 USPQ2d 1172 (TTAB 2008) 113 Ibid 19. 114 L.D. Kichler Co. v. Davoil, Inc. 192 F.3d 1349, 1352, 52 USPQ2d 1307, 1309 (Fed. Cit. 1999) 115 USPTO Trademark Manual of Examining Procedure (TMEP) (n89) 20 116 Ibid 117 J. Thomas McCarthy. ‘McCarthy on Trademarks and Unfair Competition 4th ’. West Group. 2012

McCarthy § 15:62

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37

and extent of advertising, direct evidence that expressly elaborate the dominance of

trademark owner’s trademark from the others such as surveys118

or any other evidence

that shows the term of use, way of use, the ability of distinguishing goods or services

from those of others.119

When evidence of use constitutes the trademark in the application, and

other marks that are not subject matter in the application, the evidence must show that

the trademark is distinctive in itself, not from other details such as word marks or

devices that are used in connection the trademark.120

For example, if the trademark

owner desires to register a bottle of water as a trademark, the evidence of use has to

show that the consumers can distinguish a bottle of water from the others by the

recognition of such bottle, not because of the name affixed to the bottle.121

The evidence of use may be circumstantial evidence which can imply

that a trademark is used in commerce and is imprinted to consumers’ perception. The

examples of acceptable evidence for proving acquired distinctiveness are as follows:

1) Long Term of use

Normally, five-years of continuous use of a trademark with the goods

or services in the course of trade is acceptable as a prima facie evidence to prove use.

Likewise, longer period can also effectively prove distinctiveness of trademark

through use. But the long term of use will be persuasive when it is substantially and

continuously used.122

2) Advertising Expenditures

The amount of expenditures for advertising or promoting goods or

services can refer to the quantity of use with the goods or services. However, the price

118 Ibid § 15:70 119 USPTO Trademark Manual of Examining Procedure (TMEP) (n89) 21-22 120 Ibid 121 In re Mogen David Wine Corp., 372 F. 2d 539, 542, 152 USPQ 593, 595-96 (C.C.P.A. 1967) 122 USPTO Trademark Manual of Examining Procedure (TMEP) (n89) 22.

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38

of expenditures does not involve with the proof of the existence of trademark. The

determination of this type of evidence whether it is persuasive or not depends on the

consumers’ perception of the trademark. The Examining Attorney must determine

whether the evidence could educate people about source of goods or services through

the use of the trademark or not. The Examining Attorney must consider based on the

term of use, the consequences from such use, and what the use means to the

consumers.123

In some cases, the trademark owner may be concerned that the

information on the advertising or promotion expenditures are confidential and cannot

disclose for proving use of trademark. Another alternative for the trademark owner is

to demonstrate the media used for advertisings or promoting goods or services

together with its frequency when publishing the media.124

3) Affidavits or Declarations Indicating the Source of a Mark

The purpose of proving affidavits or declarations is to point out the

admission of source of the goods or services that refers to the creation of acquired

distinctiveness of such trademark.

4) Survey, Marketing Research and the Study of Consumer’s

Perception

The trademark owner can submit survey, marketing research and the

study of consumer’s perception to prove the existence of use of trademark. This

evidence is not fundamentally required, but it is useful for proving use of

trademark.125

The survey evidence needs to show the consumers’ ability to recognize

the trademark with the source of goods or services.

3.1.4 The Examination Guidelines for Proof of Acquired Distinctiveness

123 Ibid 23. 124 Ibid 125 I.P. Lund Trading ApS v. Kohler Co., 163F. 3d 27, 42, 49 USPQ2d 1225, 1235 (1st Cir. 1998)

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39

The guidelines for proof of acquired distinctiveness are specified in § 2.14 of

T.M.R.P which indicate the proof of use for acquired distinctiveness including with

TMEP 1212 Acquired Distinctiveness or Secondary Meaning that provides more

details about the proof of acquired distinctiveness such as the requirements for proof

of acquired distinctiveness, the registration procedures for non-inherently distinctive

trademark, the actual evidence that is sufficient for the proof of acquired

distinctiveness and examples of the cases that cover the interpretation of laws and

requirements and examples of evidence. Moreover, the trademark owner may

consider the precedent cases for preparing the proof of acquired distinctiveness

because the legal principle, in the U.S. system, come from the judgements held by the

Court.

3.2 Japan


Japan Trademark law was first established in 1884 in the form of trademark

regulations and has continuously developed since its inception until it was enacted as

Trademark Act in 1959.126

Afterwards, trademark law has been amended many times

in order to be up to date and correspond with the evolution of trade, commerce and

industry, i.e. the registrability of service mark since 1992, the availability of three-

dimensional trademark in 1996 and the latest trademark law amended in 2014 that

expands the scope of registrable trademark for non-conventional trademark

(hereinafter collectively referred to as “Japanese Trademark Act”).127

With respect to

the trademark acquisition, there is no compulsory requirement for the trademark

owner to register their trademark. Nonetheless, the registration provides the exclusive

rights for proving the ownership of trademark above the others. In such case, the

rights of trademarks take place upon “first-to-file” system.128

As a result of being a

member of WTO, Japan is required to implement trademark law complying with

126 Dr. Shoen Ono (n4) 127

Kazuko Matsuo, ‘3-6 Doing Business in Japan Section 6.03’ 1

<http://www.lexisnexis.com>accessed 16 April 2017

128 Flow in obtaining Trademark Registration,

<http://www.jpaa.or.jp/english/trademark/trademark_registration.html> accessed 3 January 2017

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international conventions or agreements concerning trademark, i.e. Paris Convention

and TRIPs Agreement as a minimum standard. Hence, the general requirements for

registrable trademark are similar to the other member countries such as the concept of

distinctiveness, non-similarity of others’ trademark and not prohibited by laws.

Moreover, Japanese Trademark Act also grants the right for the trademark owner to

prove use of trademark in order to prove acquired distinctiveness for non-inherently

distinctive trademark as prescribed in Article 3(2) of Japanese Trademark Act.129

This

section will focus on the trademark registration procedure, the requirement for proof

of use, the acceptable and persuasive evidence for proof and examination guideline

under Japanese Trademark Act.


According to the requirements for trademark registration described in Article

3(1) of Japanese Trademark Act, it is stated that any trademark used in connection

with goods or services in connection with the trademark owner’s business may be

registrable, unless such trademark falls into the prohibition.130

Trademarks consisting of the following characteristics are considered

prohibited: (i) trademarks that contain the marks that are used in a common manner or

the common name of the goods or services;131

(ii) trademarks that are common to the

particular goods or services;132

(iii) trademarks that contain marks specifying in a

common manner, in the case of goods, the place of origin, place of sale, quality, raw

materials, efficacy, intended purpose, quantity, shape (including shape of packages),

price, the method or time of production or use, or, in the case of services, the location

of provision, quality, articles to be used in such provision, efficacy, intended purpose,

129 Japanese Trademark Act, Article 3(2) specified that “Notwithstanding the preceding paragraph, a

trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as

a result of the use of the trademark, consumers are able to recognize the goods or services as those

pertaining to a business of a particular person.” 130 Article 3(1) of Japanese Trademark Act specifying that “Any trademark to be used in connection

with goods or services pertaining to the business of an applicant may be registered, unless the

trademark …” 131 Japanese Trademark Act, Article 3(1)(i) 132 Japanese Trademark Act, Article 3(1)(ii)

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quantity, modes, price or method or time of provision;133

(iv) trademarks that contain

the marks in a common manner, a common surname or name of a juridical

person;134

(v) trademarks that contain a very simple and common mark;135

or (vi)

trademarks that cannot be distinguished or recognized by the consumers in connection

with a business of the registered owners.136

However, Japanese Trademark Act

provides exceptions for the trademarks that are categorized under Article 3(1)(iii)-(v)

allowing them to be registrable, subject to proving acquired distinctiveness through

use.137

In some cases, if the trademark is written in foreign language, the Examiner

will translate such foreign word into Japanese for determining the distinctiveness

from the meaning of trademark.



After the application is filed, within several months, the first trademark

examination will be conducted on the formality requirements such as the

incompletion or incorrectness of required documents. If the Examiner finds that the

application needs to be revised on the formality, the Examiner will issue the first

Office Action requesting the amendment of application.138

Then, if the formality of

application is correct, the subject matter of trademark registrability will be considered,

i.e. the distinctiveness, the similarity with others’ trademark and other requirements

provided by law. According to Article 15 of Japanese Trademark Act, the Examiner is

entitled to refuse the registration if the trademark is not in compliance with the subject

matter prescribed by law.139

During the time of substantive examination, if the Examiner finds a

ground to refuse the application, the Examiner has to issue a preliminary notice of

133 Japanese Trademark Act, Article 3(1)(iii) 134 Japanese Trademark Act, Article 3(1)(iv) 135 Japanese Trademark Act, Article 3(1)(v) 136 Japanese Trademark Act, Article 3(1)(vi) 137 Japanese Trademark Act, Article 3(2) 138 Kazuko Matsuo (n107) 19. 139 Ibid

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refusal, i.e. the Office Action to the trademark owner, indicating the reason for refusal

and providing reasonable period for the trademark owner to respond to such refusal

by filing the argument in writing.140

The period of issuing the first Office Action takes

approximately six or seven months.141

The responding period depends on the place of

trademark owner. For the Japanese trademark owner, the response letter must be filed

within forty days from the date that preliminary notice is delivered without the

extension period. For the foreign trademark owner, the response letter must be filed

within three months, and the trademark owner is allowed to request for the extension

period for another one month.142



Upon the examination by the Examiner, if the application is still

refused to be registered, the trademark owner can file an appeal against the decision

of the Examiner to the Trademark Board, i.e. the Trial Board of the Japanese

Trademark Office. In the event that the decision from the Trademark Board does not

satisfy the trademark owner, the trademark owner can further file a court action

requesting for the revocation of the Examiner’s decision with the Intellectual Property

High Court.143

In case of appeal, the trademark owner may or may not explain the

ground of refusal. The JPO will inform the trademark owner the appeal number within

one month from the date of filing the appeal. After that the JPO will send the official

notice to the trademark owner asking for filing substantial reasons for the appeal and

requesting to submit the evidence to support the argument. In this regard, the

trademark owner has to respond the official notice within thirty days without further

140 Ibid 141 Patent Corp. Shin-Osaka int’l patent attorney office, ‘Questions and Answers regarding Japanese

Trademark Practice Table of Contents’ <http://matsuda-patent.com/trademark-question.pdf> accessed

16 April 2017 142 Kazuko Matsuo (n107) 20. 143 Ibid 21

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extension.144

The examination by the Trademark Board is based on the reason and

evidence granted by the trademark owner. When the examination is completed, the

official decision by the Trademark Board will be issued.

In order to comply with the Madrid Protocol, the trademark is required

to be published for allowing the third party to oppose the registrability of trademark.

If the application is completed and there is no further obstacle for registration, the

certification of registration will be given to the trademark owner.


In case the trademark consists of non-inherently distinctive characters or falls

under items (iii) to (v) of Article 3(1) of Japanese Trademark Act, the trademark

owner can still be able to register such trademark if such trademark can prove that the

consumers can recognize the goods or services used in connection with the trademark

that lead to the source of business of a particular person.

According to Article 3(2) of Japanese Trademark Act, there are two

requirements for proving acquired distinctiveness: (1) use of trademark and (2) the

ability of the consumers to recognize the trademark with the goods or services as

belonging to particular person. The requirements for proving acquired distinctiveness

are clarified in the Japanese Examination Guidelines.

1) Use of Trademark

Use of trademark can be considered in two points of view: trademark aspect

and goods or services aspect.

For the trademark aspect, the trademark used in the evidence must be identical

to the trademark in the application; otherwise it is not recognized as use.145

In some

144 Kazuko Matsuo (n107) 21. 145 Japan Patent Office, ‘Examination Guidelines for Trademark’ 51

<http://www.jpo.go.jp/tetuzuki_e/t_tokyo_e/tt1302-002.htm> accessed 9 December 2016

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cases, even though the trademark in the evidence of use is not identical, it may be

deemed as use of the trademark if the differences do not affect the identity of the

trademark, by determining the degree of differences in appearance and the actual

states of transaction of the designated goods or designated services.146

The examples

of trademark that are recognized as identical are: (1) the difference in the trademark

appears only while describing in vertical writing and horizontal writing; (2) the

trademark in the evidence and in the application appear in the plain character and the

fonts that both trademarks use are very similar; (3) the appearance of three-

dimensional shapes of trademark in the application and the evidence has only minor

differences.147

For the goods and services aspect, the designated goods or services in an

application and in the evidence must be identical in order to be recognized as use of

trademark. However, the difference of use in the application and in the evidence may

be deemed acceptable if such difference does not affect the identity of the designated

goods or services in the application together with the consideration of evidence of

goods or services in the course of trade.148

2) The Ability of the Consumers to Recognize the Trademark with

the Goods or Services with a Particular Person.

The recognition by the consumer is determined by the perception of the

consumers with regard to the source of goods or services throughout the country. The

key for measuring consumers’ recognition is based on the level of consumers’

awareness which could be determined by: (1) the composition and appearance of

trademark in the application; (2) the terms of use, quantity of use, period of use and

location of use of trademark; (3) the advertising method, duration, areas and

proportion, (4) a person using the trademark either in an application or in evidence,

(5) the characteristics of goods or services that are used in the course of trade; and (6)

146 Ibid 147 Ibid 148 Ibid

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the results from the questionnaire indicating the consumers’ awareness of

trademark.149

3) Acceptable Evidence for Proof of Acquired Distinctiveness

The trademark owner may submit the following evidence in order to prove use

of trademark: (1) photographs or movies showing the use of trademark in the course

of trade; (2) business documents such as purchase order, sale receipt, invoices,

shipment documents, etc.; (3) all kinds of advertisements published by the applicant;

(4) articles in general newspapers showing the trademarks in applications by either

applicant or other parties; (4) the reports from survey of consumers’ perception on the

trademark owner’s trademark.150

4) Other Criteria

In the event that the trademark in the application is used or associated with

another trademark, the judgement of acquired distinctiveness of trademark in the

application will be solely based on the determination of trademark, that is non-

inherent distinctiveness. 151

Moreover, the Japanese Examination Guidelines also provide the guidelines

for proving use of trademark depending on each type of trademarks.

4.1) Acquired distinctiveness for collective trademark

Referring to the nature of a collective trademark, the use of the trademark is

made by not only the trademark owner, but it also includes other persons who are

authorized to use such trademark. Therefore, the proof of use for this mark must

149 Ibid 53. 150 Ibid 151 Ibid

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contain the characteristics of use same as trademark or services mark including the

proof of authority of a person who uses such collective trademark.152

4.2) Trademark used for retail services

In terms of business, trademarks are not only used solely with the goods or

services, but also used with other things relevant to the business, i.e. packaging, lists

of prices, business documents and advertisements. In such case, the trademarks

applied to such other retail services may also be considered as evidence of use if they

can indicate the source of goods or business of retail services of such goods. 153

4.3) Proof of use for the non-conventional trademark

Referred to the above overview of Japanese trademark law, the scope of

registrable trademark has been expanded the to include a non-conventional trademark.

It is based on the concept that the recognition of use for a non-conventional trademark

occurs to the portion of a mark that can be independently recognized as a mark only

for the part that can distinguish the goods or services of a proprietor from the others.

Hence, the Japanese Examination Guidelines also provide the guidelines for proving

acquired distinctiveness through use for non-conventional trademark, such as motion

mark, hologram mark, color mark, sound mark and position mark by indicating the

acceptable recognition of use and evidence of use for each type of non-conventional

trademark which are:

(i) Proof of Use for Motion Mark

The motion mark, i.e. the animated film may compose of many details

in one film, but only the part that the consumers can recognize and distinguish from

the others can be constituted as a trademark. Even though the trademark as applied is

not totally identical to the trademark that is used, the trademark must be

152 Ibid 153 Ibid 54.

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distinguishable such that the consumers are aware that the trademark in the

application and in the one in the evidence comes from the same source.154

The

example below shows the motion mark that is not identical and not acceptable as

evidence of proof of acquired distinctiveness.

Figure 3.1 Example of Motion Mark as Applied155

Figure 3.2 Example of Motion Mark as Used156

(ii) Proof of Use for Hologram Mark

The hologram mark, such as the portion of hologram of credit card,

must give the strong perception to a consumers in order to identify the source of

goods or services. 157

(iii) Proof of Use for Color Mark

154 Ibid 54. 155 Ibid 156 Ibid 157 Ibid 55.

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The use of color mark specified in an application and in the evidence

should be identical in order to grant strong impression to consumers throughout the

recognition of such color mark by the ability to distinguish goods or services from the

others.158

(iv) Proof of Use for Sound Mark

The sound mark in an application and in evidence must be identical in

order to be acceptable as the proof of use. Nonetheless, the sound mark in an

application and in evidence can be slightly different, if the consumers can still

recognize that they are the same sound mark.159

The determinations of sound mark are based on two aspects:

(1) Sound elements

Not only melodies must be taken into consideration, but the differences

in rhythm, tempos or harmony must be also considered. An example of a different

sound mark is the sound mark played by violin in an application, and viola in an

evidence of use.160

(2) Linguistic elements

Linguistic elements, i.e. lyrics, in both application and evidence must

be identical. An example of acceptable sound mark concerning linguistic elements in

an application is the sound logo, but the evidence of actual use is the entire

advertisement that uses the sound logo at the end of advertisement, if the sound logo

can represent as a trademark, that is the ability to be distinguishable from others’

goods or services, such sound logo can be used to prove acquired distinctiveness.161

158 Ibid 159 Ibid 56. 160 Ibid 161 Ibid 57.

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(v) Proof of Use for Position Mark

The position mark in an application and the position mark as used, if

different from each other, can be considered for proving acquired distinctiveness, but

only for the portion that constitutes as a trademark, which means it must be

distinguishable from goods or services of the others.162

Furthermore, Japanese Trademark Act does not expressly prescribe the

period of use for the proof of acquired distinctiveness. Regarding the decision and

practice, it seems that the sufficient evidence for proving the period of use is by

demonstrating that a trademark has been used extensively for a long period of time.163

4.4) Proof by applying Survey Evidence

According the IP high Court Judgement No. 2012 (Gyo-ke) 10002, the

trademark owner filed an application for the trademark “ ” for the

“apparel product.” The Registrar and the Board of Trademark consider that this

trademark cannot be registered due to it is common surname in Japan and it is the city

name in Japan. The trademark owner filed this case to the Intellectual Property High

Court together with the submission of evidence of use and survey evidence. As a

result of brand image survey, the trademark owner can prove that the public can

recognize that this trademark is neither a surname nor the city name. Hence, this

trademark is distinctive from the proof of acquired distinctiveness.164


In order to clarify the provisions under the Japanese trademark law, the

162 Ibid 163 Aki Ryuka, ‘Difference of Trademark Practices in Japan’ (2011)

<http://www.ryuka.com/en/publications/pdf/Differences_of_Trademark_Practices_in_Japan.pdf>

accessed 16 April 2017 164 the IP high Court Judgement No. 2012 (Gyo-ke) 10002

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Japanese Patent Office has enacted the examination guidelines, namely, the

Examination Guidelines for Trademark (the “Japanese Examination Guidelines”)

for the trademark owner, the Examiner or anybody who is interested to study the

procedure and the criteria in order to overcome the proof of acquired

distinctiveness. The proof of acquired distinctiveness is specified in Japanese

Examination Guidelines in Chapter II Article 3(2) (distinctiveness acquired through

use) which includes the interpretation of “use” and “goods or services” as the

requirements for proof of acquired distinctiveness, the evidence acceptable to prove

use and the requirements for proof of acquired distinctiveness for collective

trademark, non-conventional trademarks such as motion mark, hologram mark,

color mark, sound mark and position mark and the examination method for the

trademark consisting of parts that are non-inherently distinctive. The Japanese

Examination Guidelines explain each requirement by giving examples as

clarifications or pictures so that the user can understand the concept easily.

3.3 The Republic of Singapore


In the beginning, the legislation of Singapore trademark law was influenced by

the United Kingdom Trademark Act 1994 and the Australian Trademark Act 1995.

After the international rules and regulations regarding trademarks were established,

like the other member countries of WTO, Singapore trademark law was amended to

be in accordance with such international rules and regulations, i.e. Paris Convention,

TRIPs Agreement and Madrid Protocol.165

The latest version of Singapore trademark

law is Singapore Trademark Act 1998 (revised edition 2005) (hereinafter referred to

as “Singapore Trademark Act”).

To obtain the trademark protection, it is not compulsory for the trademark

owner to register the trademark because the trademark owner can protect the

trademark under the tort law of passing-off.166

However, the trademark owner who

165 Sukumar Karuppiah and Ravindran Associates, ‘Intellectual Property Regime of Singapore’, 8:27 166 Ibid

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does not register the trademark cannot claim damages for trademark infringement.167

Therefore, the best way for trademark protection is the registration of trademark. It is

to be noted that trademark acquisition under Singapore trademark law is subject to

first-to-file system, which provides the right to the owner to prevent others from using

its trademark with its relative goods or services throughout Singapore. 168

The definition of trademark is described under Section 2 of Singapore

Trademark Act which could be “any sign capable of being represented graphically

and which is capable of distinguishing goods or services dealt with or provided in the

course of trade by a person from goods or services so dealt with or provided by any

other person”169

The definition of trademark under Section 2 of Singapore Trademark

Act is broad because it is open to any mark that is capable to perform as a trademark.

The capability of being a trademark incurs by the ability of distinguishing goods or

services in the course of trade from the other person. In order to be registrable as a

trademark, the trademark must not be subject to the ground of refusal for trademark

registration under Section 7 of Singapore Trademark Act. However, there is an

exception for non –inherently distinctive trademark,170

trademark that consists of

signs or indications that leads to “the kind, quality, quantity, intended purpose, value,

geographical origin, the time of production of goods or of rendering of services, or

other characteristics of goods or services”171

or trademark that is composed of signs or

indications that are customarily used in the current language or in good faith and

created practices for commercials172

to be registrable if such trademarks have

distinctive character in fact upon their use.173

This section will study about the

registration procedure of trademark for inherently and non-inherently distinctive

trademarks, proof of acquired distinctiveness and examination guideline under

Singapore Trademark Act, relevant rules and regulations and landmark cases.

167 Ibid 168

Intellectual Property Office of Singapore, ‘Trademarks info pack’ (2016) 1

<https://www.ipos.gov.sg/Portals/0/about%20IP/trademark/TMInfopack07012016.pdf> accessed 9

December 2016 169 Singapore Trademark Act, Section 2 170 Singapore Trademark Act, Section 7(1)(b) 171 Singapore Trademark Act, Section 7(1)(c) 172 Singapore Trademark Act, Section 7(1) (d) 173 Singapore Trademark Act, Section 7(2)

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After the application is filed either via e-filing or manual filing, the

date of filing is the date that the application meets minimum filing requirements. The

minimum filing requirements consist of: (1) a statement clarifying the trademark

owner’s intention to register trademark; (2) name and address of trademark owner; (3)

samples of graphical trademark, for three-dimensional trademark, it is required to

present line drawings that show all dimensions of the trademark; (4) lists of goods and

services; (5) declaration of use or intention-to-use of trademark; (6) registration fee.

The examination process will start after these requirements are completed.

In case the minimum filing requirements are not completed, the IPOS

will issue Notice of Deficiency for requesting the trademark owner to amend the

application within the certain period specified by the IPOS in order to continue the

trademark application, and the period notified by the IPOS is not extendable. If the

amendment of application is acceptable, the filling date will be at the earliest date that

the requirements are completed, and the application will be sent to the examination

process. On the other hand, if the trademark owner does not revise the application as

requested by the IPOS, the application will be deemed abandoned.

During the examination process, the first Office Action will be issued

within approximately four months from the filing date. If the trademark is registrable,

the IPOS will publish trademark in the Trade Marks Journal for opposition for two

months. During this period, an interested person who desires to oppose the

registration of trademark may proceed with the opposition proceedings at the IPOS.

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If no opposition is filed during the publication, or if the decision of the

opposition is in favor of the trademark owner, the IPOS will grant the Certification of

Registration to the trademark owner which it is the completion of registration process.



After the trademark is refused by the Registrar on the grounds of lack

of distinctive character or the requirements for registration are not completed, the

Registrar will issue an examination report stating the reason of refusal or requesting

additional clarification. The trademark owner must respond to the examination report

within four months. However, the trademark owner can request for an extension of

responding period before the expiry of the first responding period.


One of the requirements for trademark registration under Section 7(1) of

Singapore Trademark Act is inherently distinctive character of trademark. However,

non-inherently distinctive character can also be deemed distinctive if such trademark

can acquire distinctive character as a result of use.

The trademark owner may follow the guidelines for the evidence of

distinctiveness acquired through use in order to overcome the refusal of registration

specified in Section 7(1)(b), (c) or (d) of Singapore Trademark Act.

3.3.3.1 Requirement of Declaration of Use

Before the Registrar examines the details of evidence, the Registrar

will check the declaration whether it is acceptable and sworn correctly or not. The

declaration must be made by the authorized person, i.e. if the trademark owner is a

natural person, the owner has to make the declaration, if the trademark owner is a

juristic person, the declaration must be made by the authorized person of that

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entity.174

According to the practice, the declaration made by any person who declares

himself/herself as an authorized person of the trademark owner is deemed

acceptable.175

Moreover, the declaration must be made in or comply with the format

as required by the IPOS, otherwise the declaration is not acceptable.176

3.3.3.2 Factors for Examination

1) Period of Use

The longer use of trademarks grants higher chances to obtain

trademark registration. Regarding the guideline, five years of use together with the

proof of extreme sale is generally required. Use shorter than five years may still be

acceptable if such trademarks are used extensively and continuously before the date of

application. However, less than 2-year period may not be sufficient enough to prove

use.177

For the proof of period of use, the evidence should indicate the date of

first use with the goods or services in Singapore. Moreover, the sufficiency use must

be continuous without any interference. In the event that the trademark is transferred,

the evidence must show the information of former owner and indicate the date of

acquisition.178

2) Extent of Use (Turnover)

Turnover figures are the sale volume of the goods or services under the

trademark. The larger turnover generates higher chances for the trademark to be

174 Intellectual Property Office of Singapore (IPOS). ‘Evidence of Distinctiveness Acquired Through

Use’ (Version 1) (2006) <http://www.ipos.gov.sg/Portal/0/.../6%20Evidence%20of%20Use_Nov2015%20v2pdf.> accessed 29

December 2016 175 Ibid 176 Ibid 177 Ibid, 5 178 Ibid, 5

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registered. Turnover figures should be demonstrated by classifying goods or services

in accordance with trademark classifications. The characteristic of goods or services is

also one of the concerns as to whether they are special or ordinary goods or services

because it will affect the turnover figures, in other words, if such goods or services are

special, the number of sale may be lower than the goods or services used in common.

It will be advantageous to the prove of use if the trademark owner presents the nature

and size of the market and the size of the market share so that it shows the rank of the

goods or services in the market, if the sales of goods or services become majority in

the market, the better chance of registration the trademark owner may have. In some

events, turnover figures may not be appropriate for certain business such as financial

services to prove the extent of use of trademark. Thus, other alternatives to prove use

of such businesses would be the number of account holders, investors, branches etc.179

3) Advertising expenditure

Advertising figures include any type of advertising or medium such as

out-of-home advertising, door-to-door advertising or online advertising etc. Such

advertising figures should be at least five or more years before the filing date.180

The

breakdown of advertisements in relation to the classification of goods or services is

also significant, and the amounts given must be in Singapore Dollars (SGD). The

samples of advertisements concerning the goods or services intended to be registered

should be included.181

In some cases, only evidence of advertising may be acceptable

without any proof of sale, for example the sale of aircraft usually starts with intensive

advertising before an actual sale.182

Also, the minor and none of advertising

expenditure may be acceptable, for example, in case of the sale of special product that

is sold in the limited market.183

4) Nature of exhibits

179 Ibid, 6 180 Ibid, 6 181 Ibid, 6 182 Ibid, 7 183 Ibid, 7

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The exhibits should describe the impact or reflection of the trademarks

used with the goods or services by specifying the date of use (an estimation is also

acceptable), and they must be used as and for the purpose of trademarks. The exhibits

should declare the date or period of use. The use of trademark shown in the exhibits

must be identical to the trademark in the application because if it is different, then it

may be questioned that whether the trademark in the application had acquired

distinctiveness on its own or not. The examples of use are: (1) when a mark is

composed of a non-fundamental part of trademark, such mark may be deemed

distinctive on its own. The samples of exhibit that are deemed sufficient are articles,

brochures, catalogues, balance sheet, statement of accounts, annual reports and so

forth.184

5) Goods or services claimed

The evidence of use must be in connection with the goods or services

required to obtain the registration, and should reflect the goods or services subject to

the specifications of goods or services sought to be registered. That is because if such

trademarks are extremely descriptive, the registrar will intensively consider evidence

with the items under the specifications.185

The factors of examination are resulted from the rules from the case Doctor’s

Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193 in

which the High Court has held the factors for determining whether a trademark had

acquired distinctiveness through use:

(a) the market share held by the registered mark

(b) the nature of its use (whether or not it was intensive, widespread and

long-standing);

(c) the amount invested in promoting the mark;

184 Ibid, 7 185 Ibid, 9-10

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(d) the proportion of the relevant class of individuals who identified goods sold under the mark as emanating from a particular source; and

(e) any statements from trade associations and chambers.”

The decision from the High Court is a precedent case for the factors of

examination. Later on, the rules have developed and included other factors such as the

length of use to determine the distinctiveness of trademark.186

3.3.3.3 Acquired Distinctiveness for Non-Conventional Trademark

1) Color Marks

The evidence of color or combination of color will be constituted as

trademark when it represents distinctive character apart from the goods or services.

The persuasive evidence is not only presenting the catalogs, packaging, leaflet or

pictures of color mark used with the goods or services, but the trademark owner must

show the use of color mark alone together with the evidence of consumers’

impression with such color mark in connection with the goods or services of the

trademark owner. Even if the color mark has been used for long term, but it cannot

function as a trademark, such evidence is insufficient.187

2) Shape marks

Normally, for a shape mark it is difficult to prove the ability of the

mark to distinguish the goods or services because the shape of goods and containers is

shown in various designs. To prove the distinctive character, the shape mark must be

promoted alone other than the use of shape mark with goods. The evidence of shape

mark must point that the consumers are able to distinguish goods from using shape

186 Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193 187 Ibid,11

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mark in order to be persuasive enough to create distinctiveness through use of shape

mark.188

3.3.3.4 Trademark Used for Monopoly

When the goods or services are subject to market monopoly, it will be

difficult for the trademark owner to prove acquired distinctiveness because it is hard

to prove that the perception of consumers arises out of the trademark for those goods

or services because both the trademark and the goods or services indicate the origin of

goods or services.189

In Philips v Remington (case C-229/99), the proof of use by

indicating that the goods are sold by only one supplier is not enough to constitute

acquired distinctiveness.190

3.3.3.5 The Evaluation of Other Evidence

1) Survey Evidence

Survey evidence is very useful and popular for the proof of acquired

distinctiveness because it shows the consumers’ perception with regard to the

trademark toward the goods or services. In this regard, the Registrar will apply the

following factors for the determination of survey evidence:

The survey should demonstrate the criteria of interviewee selection

process, such as the interviewees should be able to represent that they are from

various business sectors. In case that the interviewees are the consumers, the survey

must show that those consumers are actual and potential customers for those

particular goods or services. In addition, the interviewees should be from the relevant

public so that they could represent as average consumers of those particular goods.191

188 Ibid, 11 189 Ibid, 13 190 Ibid, 13 191 Ibid, 17

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The survey should disclose the number of interviewees who do the

questionnaires. In Imperial Group Plc v Phillip Moris Ltd. [1984] R.P.C. 293, the

number of interviewees must be specified in the survey evidence in order to be

weighted for determination of acquired distinctiveness.192

Moreover, the trademark

owner is required to conclude the number of responses and confirm that it

corresponds with the number of interviewees.193

The questions used in the survey should be in an open-ended manner,

which do not lead or persuade the interviewees to the advantage of the trademark

owner.194

In addition, the survey evidence should disclose the actual answers from the

interviewees, in other words, in actual answers, either in favor of or against the

trademark owner are acceptable as evidence.195

The survey should include the copy of trademark which is the same as

the trademark filed in an application.

The trademark owner should state the location and date on which the

survey is conducted in the evidence. The period of survey should be appropriate, i.e. it

should neither be too short period nor too long before the submission of evidence in

order to be more persuasive.196

In order to satisfy the proof of distinctiveness, the acceptable amount

of consumers’ perception is not clearly mentioned elsewhere, it depends on the

discretion of the Registrar. A high percentage of consumers’ recognition may not

enough to guarantee that the mark has acquired distinctiveness through use. On the

other hand, the number of consumers who are satisfied with the goods or services may

be more persuasive.197

192 Ibid, 14 193 Ibid, 15 194 Ibid, 15 195 Ibid, 15 196 Ibid, 17 197 Ibid, 16

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If the survey result shows that the consumers understand the goods or

services of the trademark owner and the other traders come from the same source,

even though high percentage of consumers’ perception or satisfaction is gained, such

survey is still insufficient to prove acquired distinctiveness. 198

2) Trade Evidence

The trade evidence is another tool for overcoming the requirements of

acquired distinctiveness. The trade evidence should contain details as following: the

method of declarant selection; the status of declarants in the trade; the relationship

between the declarant and the application, if any; the duration that the declarant

knows the trademark; and the declarant understands that the trademark leads to the

origin of goods or services.199

The Registrar will consider the following factors with the trade

evidence in order to determine the acquired distinctiveness of trademark:

The declaration of trade evidence including any statement for survey

conduction must be sworn by the authorized person.200

The determination of trade evidence by the Registrar is usually based

on the majority perception of the consumers. The opinion of trade expert in

accordance with goods or services does not give much weight for the Registrar to

decide whether the trademark has acquired distinctiveness through use or not because

trade experts cannot represent the public perception of trademark with the goods or

services of the trademark owner.201

The evidence should not come from entities that are governed by the

trademark owner or it is likely possible that the trademark owner can pressure such

198 Ibid, 16 199 Ibid, 18 200 Ibid, 18 201 Ibid, 18

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entities in order to obtain the result that is advantageous to the trademark owner. Such

evidence does not give much weight to prove acquired distinctiveness.202


According to the practices for proving of acquired distinctiveness, the IPOS

published the guidelines for the examination methods or proving acquired

distinctiveness.203

The examination guidelines provide the evaluation of evidence of

use submitted by the trademark owner concerning the period of use, extent of use,

advertising expenditure, nature of exhibits and goods/services claimed. Besides, the

examination guidelines also provide the evaluation of survey evidence and trade

evidence so that the trademark owner can prepare the evidence of proof of use

effectively. Based on this guideline, the trademark owner and the Examiner will have

the common understanding about which evidence should be considered, and also the

trademark owner could predict the chance of registration based on the evidence.

202 Ibid, 19 203

Ibid

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CHAPTER 4

PROOF OF USE OF TRADEMARK UNDER SECTION 7 OF THAI

TRADEMARK ACT AND RELEVANT REGULATIONS

CONCERNING ACQUIRED DISTINCTIVENESS

4.1 Overview and Background

Since Thailand is an agricultural country, the concept of trademark was not

significant in Thai society because Thai culture was not familiar with manufacturing

industry.204

The concept of trademark became necessary after Thailand opened the

economy and the international trade started in Thailand.205 In the beginning, the Royal

Thai Government established a Trademark Registration Office which was the part of

Ministry of Agriculture and issued the first trademark law named the Law on

Trademarks and Trade Names of B.E. 2474 (A.D. 1914).206

The detail of this draft

was related to trademark registration but unfortunately the number of trademark

owner was very rare. One of main purposes that Thailand enacted this draft was

because of the pressure from foreign governments as they wished to protect the rights

of foreign traders. Therefore, the foreign governments encouraged the Thai

government to enact laws or regulations for protecting trademarks of their traders

from the counterfeit goods sold or produced within Thai territory, also to facilitate the

commercial administration.207

In 1931, during the reign of King Rama VII, the first trademark law, namely

the Trademark Act B.E. 2474 was proclaimed. The provisions under this law were

adopted and influenced by the British Trade Mark A.D. 1903. Afterwards, the first

draft was considered out of date and it was amended to the Trademark Act B.E. 2534,

and this had been effective for nine years. After becoming a member of WTO, the

trademark law was reconsidered to be amended again in order to be compliantee with

the provisions of international standard on trademark issue, i.e. Paris Agreement and

204 Thatchai Suppapholsiri, ‘Intellectual Property System of Thailand’ 59 205 Ibid 206 Ibid 207 Ibid

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TRIPs Agreement. Therefore, the revised draft was established in B.E. 2543 as the

Trademark Act (No.2) B.E. 2543 which became effective on 30 June B.E. 2543.208

After sixteen years of using the Trademark Act (No.2) B.E. 2543, the

trademark legislation was amended again in B.E. 2559, to expand the scope of

protection for non-conventional trademarks and revise the provisions regarding

trademark registration since Thailand has joined Madrid Protocol.209

Regarding the trademark protection in Thailand, registration is not strictly

necessary for obtaining protection, but an unregistered trademark has limited scope of

protection, i.e. only the protection from passing-off. Therefore, it is recommended for

the trademark owner to register trademark in order to receive the exclusive right for

using such trademark, and prevent other people from using or seeking benefit from his

trademark owing to Thai trademark system adopting the registration basis for

trademark protection.

The registrability of trademark is specified in Section 6 of Thai Trademark

Act, “a trademark or service mark means a mark used or proposed to be used on or in

connection with goods or services to distinguish the goods or services with which the

trademark or service mark of the owner of such trademark or service mark is used

from goods or services under another person’s trademark or service mark.”210

At this

point, trademark or service mark must be distinctive in order to be recognized and

distinguished from the goods or services of the others. Hence, the distinctiveness

performs as one of the criteria for the trademark registration.211

Although some marks lack distinctiveness, they are registrable if the

consumers are able to distinguish the trademark owner’s goods or services from the

others’ goods or services. In other words, trademarks which are not inherently

208 Ibid 209 Ibid 210 Thai Trademark Act, Section 4 211 Thai Trademark Act, Section 4

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distinctive can be deemed distinctive through the proof of use.212

In such case, the

trademark owner has to overcome the criteria for the proof of use in order to acquire

distinctiveness through use and be registrable.

For the readers’ better understanding, this chapter will consider the general

concept of use concerning acquired distinctiveness, the registration procedure, the

proof of use for acquired distinctiveness, and the guidelines for the proof of acquired

distinctiveness.

4.2 Trademark Registration Procedure

The first step of trademark registration is to file an application together with

the required documents. The principle regarding the registration is specified in Thai

Trademark Act, but the registration procedure is specified in the Ministerial

Regulation because the procedure could be changed periodically upon the

appropriateness and effectiveness of trademark registration.213

Nowadays, a trademark application can be filed either at the authorized offices

or via online (e-filing) which is the new registration procedure that has been applied

since 2015. The purpose of e-filing registration procedure is to facilitate the trademark

owner to proceed with the trademark registration with ease.

The person who conducts the examination of trademark registrability is the

Registrar. The Registrar has the authority to proceed an application within the scope

as follows: (1) the fact-finding authority; (2) the authority to order the registration of

associated marks; (3) the authority to order the correction of the application; (4) the

authority to reject the application for registration; (5) the authority to order the

disclaimer.214

212 Thai Trademark Act, Section 7 paragraph 3 213 Ibid, 71. 214 Ibid, 72.

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Generally, after the application is filed and the official fee for filing the

application is paid, the Registrar will conduct the preliminary examination for the

correctness and completion of required documents within the day that the application

is filed (in case of filing the application at the authorized offices). If the application or

its required documents needs to be revised, the Registrar will return the application

and inform the trademark owner to amend such application or its required documents

within that day. In this case, the filing date will be established when the trademark

owner files the complete application. In case of significant urgency to file the

application even though the required documents are not completed, such as the

deadline of priority claim, the trademark owner can submit the Request for the

Postponement of Submission of Required Documents on the filing date indicating that

the trademark owner agrees to submit such documents later. However, it is required in

the request that the trademark owner must submit the documents within the period as

specified under the law and regulations; otherwise the application will be abandoned.

If the preliminary examination is completed to the satisfaction of the Registrar,

the application will be substantially examined by the Registrar. At this point, the

trademark registration can be considered into two ways: for inherently distinctive

trademark and for non-inherently distinctive trademark.

4.2.1 Trademark Registration for Inherently Distinctive Trademark

If an application is qualified under the preliminary examination, the

application will be examined for the substantive details to be in accordance with

Section 6 of Thai Trademark Act. The Registrar will conduct the fact finding on the

similarity of trademark with the prior registered trademark, if any determine the

distinctive character of trademark and ensure that such trademark is not subject to the

prohibitions prescribed in Section 8 of Thai Trademark Act. The process of

substantive examination usually takes approximately six months.215

If the trademark

passes all requirements, then the Registrar will publish the trademark for the

opposition. During the publication, any person can oppose the registration of the

215 Thailand Trademark Office, ‘Manual for Trademark Registration Procedure’

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trademark within sixty days from the date of publication. If there is no opposition, the

Registrar will issue a notification to the trademark owner to pay the registration fee

within a reasonable period, usually within thirty days from the date of expiry of the

opposition period.216

The trademark owner is required to pay the official fee for

registration within sixty days from the date of receiving the notification; otherwise,

the application will be deemed abandoned according to Section 40 paragraph two of

Thai Trademark Act.217

After the payment is completed, the Registrar will issue the

Certification of Registration to the trademark owner from the date of completion of

payment.218

In case that the application proceeds smoothly and there are no

objections, the prosecution period is approximately eighteen to twenty months.219

4.2.2 Trademark Registration for Non-Inherently Distinctive

Trademark

There are two alternatives for the trademark owner to register non-inherently

distinctive trademark: firstly, to submit the evidence of use at the same time of filing

the application claiming that the mark has acquired distinctiveness through use;

secondly, to appeal to the Trademark Board against the Office Action issued by the

Registrar on ground of lack of distinctiveness.

In case that the trademark owner considers that the trademark lacks distinctive

character, but still desires to use that trademark and obtain the protection, the

trademark owner may submit the evidence of use attached to the trademark

application or in case that the trademark owner cannot submit such evidence on the

filing date or desires to submit further evidence, the trademark owner can request for

the postponement of submission of the evidence, in which the trademark owner is

obligated to submit the evidence within sixty days from the requested date; otherwise

the Registrar will examine the application based on the existing documents or

216 Ibid 217 Thai Trademark Act, Section 40 paragraph 2 218 Thailand Trademark Office (n215) 219 Ibid

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evidence.220

The evidence required for the proof of acquired distinctiveness is

described in the Ministerial Regulations and other relevant Regulations which the

trademark owner should comply with in order to overcome the refusal of registration

based on lack of distinctiveness pursuant to Section 7 of Thai Trademark Act. Even

though the trademark owner submits the evidence of use, it cannot guaranteethat the

trademark will be considered distinctive and registrable because the registrability will

be subject to the discretion of the Registrar.

The trademark owner may decide not to submit the evidence of use along with

filing the application if the trademark owner considers that the trademark is inherently

distinctive. Upon the substantive examination, if the Registrar considers that the

trademark does not comply with the requirements under Section 6 of Thai Trademark

Act, i.e. it is similar to the registered trademark, lacks distinctiveness or is prohibited

by laws, the Registrar will reject the application and notify the trademark owner about

the reason of the refusal. Then, the trademark owner can appeal the decision of the

Registrar to the Trademark Board within sixty days and submit the evidence for

proving acquired distinctiveness of trademark. Once an appeal is filed and the

evidence is submitted, it may take approximately eighteen to twenty-four months for

the Trademark Board to issue its official decision. If the decision does not satisfy the

trademark owner, the trademark owner can claim the registrability of trademark by

filing a suit to the IP Court.

To determine whether such mark is inherently distinctive or non-inherently

distinctive, the Registrar will consider a trademark by the interpreting the meaning of

the mark with the dictionary. For example, in the Supreme Court Judgement No.

7073/2552, the Court examined the mark “WRESTLEMANIA” that such mark is a

combination of words “WRESTLE” meaning to force by or as if by wrestling and

“MANIA” meaning excessive, excitement or enthusiasm, which are collectively

referred to “people who are crazy about wrestling.” The meaning of such mark is

220 Ministerial Regulations Re: The Requirements for proving the distinctiveness regarding Section 7

last paragraph of Trademark of Trademark Act B.E. 2534 (1991) (as amended by the Trademark Act

(No.2) B.E. 2543)(2012)), Clause 4

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directly referred to the services of the trademark owner. Therefore, such mark lacks

distinctiveness.221

In case of a design mark, the Court will determine the distinctiveness of

trademark by comparing its appearance with the design used in common, and

considering whether the consumers can distinguish the mark of trademark owner from

geometrical shape used in common or not. In Supreme Court Judgement No.

5466/2552 for trademark “ ” and the Supreme Court Judgement No. 2044/2552

for trademark “ ”, the Court held that these marks are not distinctive

because the designs of these marks are only slightly different from common

geometrical shape, and not enough for the public to differentiate these marks from the

geometrical shapes used in general.222

For a composite trademark, according to the practice, the Registrar and the

Trademark Board usually determine distinctiveness of the trademark by dissecting

each part of trademark and considering whether such part is distinctive or not. But in

terms of the determination by the Court’s standards, the trademark will be examined

by considering overall appearance of the trademark pursuant to anti-dissection rule.

For example, in the IP Court Judgement No. 69/2557 for service mark “

”, the Registrar and the Trademark Board divided this mark into the device “ ”

and the word “TRIPADVISOR.” The Registrar and the Trademark Board determined

that the word “TRIPADVISOR” is a generic word used in travelling business. With

regard to the decision of the IP Court, this service mark was considered to be only a

suggestive mark because the consumers need to use their individual imaginations

(Imaginative Thinking) in order to understand the services offered by the trademark

owner. Moreover, this service mark should be examined by applying anti-dissection

rule, i.e. to consider the mark as a whole instead of examining each part of it because

221 The Supreme Court Judgement No. 7073/2552 222 The Supreme Court Judgement No. 5466/2552 and the Supreme Court Judgement No. 2044/2552

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the consumers will recognize this service mark from the overall mark. As a result, the

Court decided that the mark “ ” is distinctive.223

The evidence submitted to the Trademark Board is not enough to determine

that such trademark is distributed, published or advertised during the moderate term in

which the consumers can distinguish the goods or services of the trademark owner

form those the others.

4.3 Proof of Use for Acquired Distinctiveness

Generally, use of trademark is not a requirement for trademark registration of

inherently distinctive trademarks. However, use is required as evidence for proving

acquired distinctiveness in order to obtain the trademark registration on this ground.

Previously, in Thai Trademark Act B.E.2534 (1991) (as amended by

Trademark No.2 B.E. 2543 (2000)), a trademark that did not have characteristics as

provided under Section 7(1) and (2), in other words “having or consisting of (1) a

personal name, a surname not being such according to its ordinary signification, a

name of juristic person or tradename represented in a special manner; or (2) a word or

words having no direct reference to the character or quality of the goods and not being

geographical name prescribed by the Minister in Ministerial Notification”, was

deemed distinctive if it has been used as a trademark with goods which have been

widely sold or advertised according to the rules prescribed by the Minister by

notification and if it is proved that the rules have been duly met.” 224

Nowadays, the proof of acquired distinctiveness is specified in Section 7

paragraph three of Thai Trademark Act stating that “trademarks having no

characteristics under (1) to (11), if used on goods which have been widely sold or

advertised in accordance with the rules prescribed by the Minister by notification and

223 Tthe IP Court Judgement No. 69/2557 224 Thai Trademark Act, Section 7

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if it is proved that the rules have been duly met, shall be deemed distinctive”.225

This

section expands the acceptable characteristics of trademarks from the previous draft to

include all types of trademark under Section 7 paragraph two to be registrable if the

trademark owner can prove its distinctiveness by the proof of use.

According to Section 7 paragraph three of Thai Trademark Act described that

the trademark owner is required to prove these three requirements in order to

successfully prove acquired distinctiveness: (1) the trademarks has been used with

goods or services; (2) the trademark has been widely sold or advertised; (3) such sale

or advertising meets the rule prescribed by the Minister.

Since the Trademark B.E. 2534 was enacted, the Ministerial Regulations was

implemented in order to clarifying the proof of acquired distinctiveness under Section

7 paragraph three of Trademark Act B.E.2534. The first Ministerial Regulations

concerning the proof of acquired distinctiveness under Section 7 paragraph three was

enacted in B.E.2535. This version only provided the broad concept of use which were

acceptable for the proof of acquired distinctiveness, i.e. the use of trademark for

distribution, publication or advertising which had caused people in that country to

distinguish goods or services from the others. Moreover, this draft demonstrated

examples of acceptable evidence for using for the proof of use, and granted the

extension period for submission of evidence was only 30 days after filing an

application.

The second Ministerial Regulations was amended in B.E.2542. The difference

of this draft apart from the first version was the factor with regard to place of use, i.e.

the acceptable use of trademark must be conducted within the territory of Thailand.

Three years later, the third version of Ministerial Regulation was enacted for

revising and adding more details with the regard to the factors for the proof of

acquired distinctiveness such as term of use, place of use and characteristic of

trademark which is required to be identical with the trademark used in an application.

225 Thai Trademark Act, Section 7 paragraph 3

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In this draft, if the Registrar considers that the trademark is lack of distinctiveness, the

Registrar is authorized to request the trademark owner to submit the evidence for the

proof of acquired distinctiveness within 60 days from the date receipt of Official

Action.

The latest version of Ministerial Regulations is implemented in B.E.2555. This

version is effective as of today even though Section 7 paragraph three of Thai

Trademark Act was amended. Unlike to the previous version, the current Ministerial

Regulation does not state the duty of the Registrar to request the trademark owner to

submit the evidence for the proof of acquired distinctiveness. Therefore, it depends on

the trademark owner whether to prove acquired distinctiveness at the same time of

filing an application or not. Nevertheless, the other provisions pursuant to the

Ministerial Regulations are the same and the trademark owner is required to comply

with such provisions related to the proof of acquired distinctiveness.

4.3.1 Criteria of Use

4.3.1.1 Term of use

Clause 2(1) of Ministerial Regulations, states that “the goods or services

that have been continuously used with the trademark, either by distribution,

publication or advertising for a moderate term, such trademark causes the public in

general or in the relevant area to acknowledge and recognize that such goods or

services are distinguishable from the others.”226

According to Clause 2(1) of Ministerial Regulations, the trademark must

be used for a moderate term in order to be acceptable for having acquired

distinctiveness through use. The term “moderate” is flexible and it seems to be

advantageous to the trademark owner to prove use in order to obtain acquired

distinctiveness after he considers that the trademark is capable of distinguishing goods

or services from those of the others.



(No.2) B.E. 2543)(2012)), Clause 2(1)

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To interpret what can be considered as moderate term, the trademark

owner may consider the term of use by examining the Trademark Board’s decisions

and Court judgements. Ten-year term of use of trademark is deemed as moderate,227

but two years of use is not enough to constitute acquired distinctiveness.228

Therefore,

to satisfy the criteria of term of use, the trademark owner is required to submit a

strong evidence of use together with the proof that the trademark is used continuously

without any interference. Another concern about the term of use is for the case that

the trademark is very descriptive; in such case longer term of use may be required.

Term of use is one of the significant measures to determine whether a

trademark has acquired distinctiveness through use or not. Because the length of use

can be applied as a presumption for the proof of use by meaning that if such

trademark has been used for long time, then the chance that the trademark will be

connected with the consumers’ perception will be also higher. Anyhow, long term of

use cannot always guarantee the establishment of distinctiveness since the trademark

owner also need to use extreme advertising and marketing to promote his products or

services with trademark so that the consumers can easily recognize such trademark

with the source of products or services.

4.3.1.2 Use with goods or services

Regarding Clause 2(2) of Ministerial Regulations, it is stated that “the

distribution, publication or advertising of any goods or services under a trademark

shall be deemed acceptable only with such goods or services.”229

This clause specifies that the proof of use of trademark with the goods or

services is deemed acceptable only with the goods or services that are covered under

the registration. This clause could be interpreted strictly that if the specification of the

goods or services in evidence and in application is not identical, then such goods that

227 Supreme Court Judgement No. 19480/2556 228 Supreme Court Judgement No. 5403/2551 229 Ministerial Regulations Re: The Requirements for proving the distinctiveness regarding Section 7


(No.2) B.E. 2543)(2012)), Clause 2

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are different and not covered in the application cannot be used as evidence for proof

of acquired distinctiveness.

4.3.1.3 Use of trademark

Referring to Clause 2(3) of Ministerial Regulations, it specifies that

“trademark that is proven for acquired distinctiveness according to this Ministerial

Regulations must be identical to the trademark filed in an application for the

registration.”230

This clause describes that the trademark appearing in an application and in

the evidence shall be identical; otherwise it cannot be deemed that the mark as used is

the same as the mark registered. The examples of determination of use of trademark

are prescribed in the judgements as follows:

In IP Court Judgement No. 9/2560, the Court held that “…the trademark

appearing in the evidence is different from the trademark specified in the application

for the registration which is unacceptable as evidence in this case…”231

or

In Supreme Court Judgement No. 5402/2551, the Court held that “…the

mark that has been published in the media is different from the service mark “SOUTH

AFRICAN AIRWAYS.” So, it is not clear whether to assume and accept that the

service mark of the trademark owner is the service mark that has advertised or

published that the people widely know …”232

4.3.1.4 Use within Thailand

Regarding Clause 2(1) and (2) of Ministerial Regulations, it is described

that the use of trademark shall be conducted within the territory of Thailand. The

reason that the acceptable evidence for proof of acquired distinctiveness concerns


last paragraph of Trademark Act B.E. 2534 (1991) (as amended by the Trademark Act (No.2) B.E.

2543)(2012)), Clause 2 231 The IP Court Judgement No. 9/2560 232 The Supreme Court Judgement No. 5402/2551

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only the evidence of use which occurs in Thailand is because the trademark protection

is based on territorial basis which means that the protection of trademark is dependent

on the place where the trademark is registered. Therefore, even though the trademark

might be famous in the foreign countries, such evidence of use cannot guarantee that

the trademark has acquired distinctiveness in Thailand and therefore does not have a

binding value.

Among the factors for proving acquired distinctiveness, the Court usually

determines the acquired distinctiveness upon territory of use and the length of use

under Clause 2(1) of Ministerial Regulations as first instance to prove use. If these

factors are met, then the Court will consider evidence of use which is the substantive

matter for deciding whether such trademark acquires distinctiveness through use or

not. The strength of evidence should be able to demonstrate consumers’ perceptions

with the goods or services and the ability of distinguishing goods or services from the

others.

Another point should be concerned is should the same factors as specified in

Ministerial Regulations are sufficient to apply to non-conventional trademarks. The

Author is of the opinion that based on the requirements as of today; some of them are

effectively applied with non-conventional trademarks such as sound mark because the

difference of sound mark can affect to the identity of trademark. However, the factors

with regards to the length of use and specification of goods or services should be

revised same as suggested to the conventional trademark.

4.3.2 Evidence for proof of acquired distinctiveness

Regarding Clause 3 of Ministerial Regulations, this provision provides the

lists of example of evidence that could be deemed acceptable for proving acquired

distinctiveness which include: the copies of receipt of payment of goods or services,

the copies of receipt of payment of advertising expenditures of goods or services, the

copies of purchase orders of goods or services, the copy of permit for factory

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operation, the copies of advertisements, samples of goods, or any other evidence or

witnesses (if any).233

Survey evidence is one of the important evidence that the trademark owner

may choose to prove use because it is the collection of information by consumers

which is analyzed by applying statistic method, so the result will be shown in figures.

The benefit of using survey evidence is that it is easy to understand about the number

of consumers who can recognize the trademark and distinguish the goods from the

others’ in the market. The survey evidence is not frequently applied for the proof of

use for acquired distinctiveness, but it is usually applied for the proof of use for non-

use cancellation or proof of use for trademark infringement. Nonetheless, the Author

opines that survey evidence is admissible to prove acquired distinctiveness because it

can represent the ability of a trademark by way of showing that the consumers are

able to distinguish the trademark or not.

To my knowledge, there is no survey evidence has been submitted to the Court

for the proof of acquired distinctiveness under Section 7 paragraph three of Thai

Trademark Act. However, upon the interview with an attorney who is an expert in the

field of intellectual property law, it is found that survey evidence has been submitted

to the Registrar for proving acquired distinctiveness. In this case, the Registrar

accepted the evidence and determined that such trademark is distinctive on the ground

of acquired distinctiveness.234

4.4 The Examination Guidelines for Proof of Acquired Distinctiveness

The guideline to prove use for acquired distinctiveness has been provided in

Ministerial Regulations and Regulations. The provisions under Ministerial

Regulations describe the characteristics of use which could be construed as use for



2543)(2012)), Clause 3 234 Interview with Mr.Kritchawat Chainapasak, Partner, Satyapon & Partners Ltd., (Bangkok, August 1,

2017)

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acquired distinctiveness,235

also the examples of evidence that the trademark owner

could file with the Trademark Board on appeal or with the Registrar at the time of

filing the application.236

And the evidence according to Regulations to prove acquired

distinctiveness must elaborate that the goods or services are widely sold or distributed

in the significant amount or such trademarks are advertised so that public in general or

in the relevant area recognize the trademarks or the goods or services under the

trademarks are widely known and accepted among consumers.237

4.5 Problems on Proof of Use Concerning Acquired Distinctiveness

4.5.1 Problems on the Registration Procedure

The main problems of the registration procedure, especially in case of the non-

inherently distinctive trademark, is time-consuming in which may arise from the

process examination. If the Registrar considers that the trademark is lack of

distinctiveness, the Registrar may request the trademark owner to submit evidence for

the proof of acquired distinctive or reject the registration of such trademark. This

process takes time because the trademark owner needs to prepare the sufficient and

persuasive evidence, and after receipt of evidence, the Registrar has to reconsider the

registrability of such trademark whether the evidence can overcome the proof of

acquired distinctiveness or not, or in case of rejection, the trademark owner has to

wait for the Trademark Board decides whether the trademark should be registerable

based on acquired distinctiveness or not. Consequently, the long term of examination

may obstruct the chance of the trademark owner to utilize or seek some benefits from

using such trademark.

4.5.2 Problems on Criteria for Proof of Acquired Dististinctiveness



2543)(2012)), Clause 2 236 Ministerial Regulations Re: The Requirements for proving the distinctiveness regarding Section 7


2543)(2012)), Clause 3 237 Ministerial Regulations Re: The Requirements for proving the distinctiveness regarding Section 7


2543)(2012)), Clause 11

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77

4.5.2.1 Term of use

Regarding the proof of acquired distinctiveness, basically, the longer

the use of trademark, the higher chance that the mark will be registrable based on

acquired distinctiveness. According to the Clause 2(1) of Ministerial Regulations,

there is no specific period of use for proving acquired distinctiveness, but only states

that the trademark is required to be used within moderate term. Nevertheless, the

decisions either from the Trademark Board or the Court seem to imply that the

acceptable term of use may be a lengthy period of time i.e. ten years238

in order to

satisfy the requirement of the proof of acquired distinctiveness through use. Thus,

there is no clearly prescribed length of use that is deemed moderate for proving

acquired distinctiveness. Consequently, it is difficult for the trademark owner to start

the registration procedure of non-inherently distinctive trademark to prepare for the

requirement of term of use because the trademark owner may not know whether the

term of use is sufficient enough to allow the registration of trademark or not.

4.5.2.2 Use with the good or services

Acquired distinctiveness of a trademark in respect of the goods or

services filed can only be proven for the goods or services that are actually. Therefore,

even similar goods or services that do not affect to identity of the goods or services in

an application are not acceptable. This could causes the problem to the trademark

owner because the trademark owner may desire to start this business with limited

goods, and then expand his business later, in such case if the goods that are used with

the trademark, and the goods that he plans to sell are different, the trademark owner

should be able to obtain the protection upon the registration for such goods also.

4.5.2.3 Use of trademark

The evidence of use must contain exactly the same characteristics and

appearance with the trademarks as intended to be registered. In practice, the

trademark owner may promote its trademark in a form partially different from the

238 The Supreme Court Judgement No. 3685/2551

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trademark as registered. Even though, the partial trademark cannot be submitted as

evidence of proof, but it still can lead and imprint to the consumers’ perception. Thus,

the rejection of evidence of similar trademarks may cause misconception as to the true

duty of trademark, in other words, if the similar trademarks can still refer to the

essential substance of the trademark then evidence of use such similar trademarks

should not be denied.

According to the judgements, the proof of use of identical trademark

has been applied for acquiring distinctiveness under Section 7 of Trademark Act

B.E.2534. For examples, as previously mentioned in the Supreme Court Judgement

No. 5466/2552 for trademark “ ” and the Supreme Court Judgement

No.2044/2552 for trademark “ ”, the Court held that these design marks are

not distinctive in accordance with Section 7 of Trademark Act B.E.2534. Considering

the evidence of use for proving acquired distinctiveness, most of evidence submitted

to the Court consists of marks that are not identical to the designated trademarks in

applications. In such case, the Court held that the designated trademarks are usually

applied as parts of the words “MILO” and “MAGGI.” Also, they are not distinctive

enough to be recognized by the consumers if they were filed alone without word

elements.239

Even though these cases may not pose problem for proving acquired

distinctiveness the judgments were issued during the validity of Trademark Act

B.E.2534 in which the design mark was not entitled to protection based on acquired

distinctiveness. But the concept of the acceptance of evidence only for identical

trademarks is the same. In this regard, the Author views that the Court should

consider other factors besides the appearance of trademark. These marks have been

used for long time so that the consumers are able to distinguish the products from the

other products in the market. On the other aspect, if these marks were used by other

trademark owners, since they cannot be registered, there may be some consumers who

would be confused whether the goods come from the same origin or not. Hence, in

239 The Supreme Court Judgement No. 5466/2552 and the Supreme Court Judgement No. 2044/2552

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these cases, the evidence of similar trademark should be acceptable to prove acquired

distinctiveness of the designated trademark.


In Thailand, the examination guidelines for the proof of acquired

distinctiveness are specified in Ministerial Regulations that contain the substantive

requirements for the proof of acquired distinctiveness which are: the length of use, the

territory of use, the characteristics of goods and services, the characteristics of use and

the acceptable evidence of use of trademark. The advantage of the examination

guidelines is to prescribe the details for the proof of acquired distinctiveness but when

compared to the examination guidelines of the other countries; it seems that the

Ministerial Regulations are not sufficient enough to facilitate the proof of acquired

distinctiveness. That is because there are no interpretations and examples for the proof

of acquired distinctiveness.

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CHAPTER 5

CONCLUSIONS AND RECOMMENDATIONS

5.1 Conclusions

The aim of trademark law is to balance between the benefits of an individual

and the public interest for utilizing the trademark. In order to protect the benefits from

both sides, it is required for the trademark owner to register the trademark. Even

though the requirements of trademark registration of each country may be different in

some certain points such as the use and intent-to-use requirement, but the substantial

requirements are the same, i.e. the distinctiveness, non-similarity and not prohibited

by laws. But in some cases, the requirements of trademark registration do not

accommodate the trademark that lacks inherent distinctiveness, but still can perform

as a trademark. Therefore, the requirements of trademark need to be extended and

cover the trademark that is non-inherently distinctive.

Moreover, the improvements in the trademark registration system for non-

inherently distinctive trademarks could possibly promote the establishment of

business in Thailand as a result of the sufficiency of protection for their business

through the trademark in Thailand.

Distinctiveness in terms of trademark law is important because it refers to the

differentiation function of trademark that is the capability of distinguishing goods or

services from the others. Since a non-inherently distinctive trademark is deemed not

distinctive by itself; therefore, the trademark law requires proof of use in order to

verify that such trademark is distinctive.

In such case, the requirements and the examination guidelines for proof of

acquired distinctiveness play an essential role by giving the instructions for the

trademark owner, the Registrar, the Trademark Board and the Court to follow with

regard to the proof of acquired distinctiveness.

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81

Nonetheless, upon the study of the Thai Trademark Act and its relevant

regulations regarding the proof of use, i.e. the Ministerial Regulations, the Author

finds that there are some problems about the proof of use concerning acquired

distinctiveness specified in Section 7 paragraph three of Thai Trademark Act and the

regulations under the Ministerial Regulations which are:

Firstly, the registration procedure does not facilitate smooth registration of a

non-inherently distinctive trademark in terms of time-consuming during the

submission and examination of evidence for the proof of acquired distinctiveness. The

time frame for registration is extended due to the re-examination of acquired

distinctiveness. In such case, registration of trademark may be extended and causes

the obstacles to seek for the protection of trademarks and utilize trademark for

operating his business. Moreover, the late of registration could causes risks of

infringement to the trademark owner.

Secondly, there is no specific period of use for the proof of acquired

distinctiveness. According to Clause 2(1) of the Ministerial Regulations, the moderate

term of use is acceptable to prove acquired distinctiveness. Therefore, the trademark

owner and the relevant Registrars who examine the registrability of a trademark will

face the obstacle in the determination of the wording “moderate”. That is because if

the term of use has to be determined, then the chance of success will depend on the

individual’s discretion. Furthermore, the Court’s judgements regarding the length of

use are also not clear and reliable because various the Court judgements mostly

considered which period is enough or not enough for the proof of use rather than

clearly indicating the appropriate length of use that is deemed to be moderate instead.

Thirdly, the requirements regarding the specifications of goods or services

causes problem for the proof of acquired distinctiveness. Clause 2(2) of Ministerial

Regulations states that the distinctiveness in relation to a trademark can only be

considered for the goods or services for which such mark is used; therefore, it can be

implied that if the specifications of goods or services in an application are different

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from the designated goods or services in evidence, such evidence of use is not

sufficient for the proof of acquired distinctiveness.

Fourthly, the requirements regarding the characteristics of trademark causes

problem for proof of acquired distinctiveness. According to Clause 2(3) of Ministerial

Regulations, the trademark specified in an application must be identical to the

trademark appearing in the evidence; otherwise, the evidence of use of the mark as

filed. The problem arises when the trademark in an application and in the evidence are

different, even though the consumers acknowledge that they are the same trademark,

the evidence of use still cannot be accepted to prove the acquired distinctiveness.

Fifthly, the current examination guidelines, i.e. the Ministerial Regulations, do

not accommodate the proof of acquired distinctiveness. Referring to the requirements

under the Ministerial Regulations, on certain points, they need clearer interpretation

and more clarification. There seems to be a misconception from the purpose of

examination guidelines which should aim to convey clear instructions and set out the

common understanding among the users for the proof of acquired distinctiveness,

rather than specifying the broad concepts or ideas for proof or examination of

acquired distinctiveness.

Lastly, it is not convenient enough for the public to study and research the

reason of registrability of trademark in trademark database provided by DIP. As

previously mentioned, suggestive mark and descriptive mark, in some cases, are

difficult to differentiate. Hence, for these types of marks, people may desire to know

how such trademarks can be registered.

In this regard, upon studying the legal principles of use and the grounds for the

registration of non-inherently distinctive trademarks under foreign laws such as the

U.S., Japan and the Republic of Singapore, the Author would kindly propose the

following recommendations by adopting the advantages of the proof of use for

acquired distinctiveness from each country that benefits Thailand and mitigate the

problems of use concerning the proof of acquired distinctiveness:

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5.2 Recommendations

5.2.1 To Adopt the Use Requirement for Trademark Registration

Regarding the trademark registration process in Thailand, use or

intention-to-use of trademark before filing the application is not required as a

requirement for the registrability of trademark. However, upon studying the

requirements for trademark registration of foreign countries, the Author finds that the

use requirement benefits to the trademark owner for the proof of acquired

distinctiveness. Even though the purpose of the submission of declaration of use for

trademark registration and the proof of acquired distinctiveness are different, but the

evidence of use for registration may be useful for the Registrar to consider the

distinctiveness based on such evidence, provided that the Registrar can request for

further submission of evidence to prove acquired distinctiveness and re-examines the

trademark based on such evidence.

Hence, the Author would kindly recommend to apply use and intent-to

use application as one of the requirements for the registration because use or intent-to-

use requirement can guarantee that the trademark is put into use before registration. In

this point, use requirement reflects the main purpose of trademark which is to be used

with the goods or services and the consumers are able to recognize goods or services

from the use of trademark.

5.2.2 To Specify the Term of Use and Accept as Prima Facie Evidence

According to the requirement of proof of acquired distinctiveness specified in

Clause 2(1) of the Ministerial Regulations, which state that “the goods or services

used with the marks are sold or advertised continuously within moderate term of use

…” the terms “moderate term of use” seem to be flexible for the trademark owner to

prove use in order to acquire distinctiveness through use of such trademark. It is

necessary to spend a long time to create the ability in a trademark to distinguish the

goods or services from those of the others by putting the trademark into use via

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promotions, extreme sale and advertising, and by virtue of internet and social media,

so that the consumers can easily recognize and imprint the trademarks with the goods

or services. Nevertheless, according to the decisions of the Trademark Board and the

judgements of Supreme Court, the acceptable period for proving use is not clear due

to vague interpretation of “moderate term of use”, i.e. two years of continuous use of

trademark is not enough to establish an acquired distinctiveness240

or use of trademark

for about ten years could be deemed to be moderate term for establishing acquired

distinctiveness,241

in which case it is difficult for the trademark owner to have a clear

idea on the length of period of use necessary to successfully prove acquired

distinctiveness.

Therefore, referring to the foreign trademark laws, especially the U.S. and the

Republic of Singapore, the period of use according to the practice of Intellectual

Property Office of Singapore, which is specified in the Evidence of Distinctiveness

Acquired through Use, indicates that five-year of use is generally required for proof of

acquired distinctiveness.242

And for the U.S. trademark law. Section 2(f) of the

Lanham Act, 15 U.S.C. § 1052(f) and § 2.14 of T.M.R.P specifies that five-year use

of trademark can be accepted as the prima facie evidence for the proof of acquired

distinctiveness.243

Hence, the Author kindly proposes that it will be more favorable for applicant

to prove acquired distinctiveness if the term of use is set to a specific amount of time,

that is five-year of use of trademark and accept this period as a prima facie evidence

for proof of acquired distinctiveness. Therefore, in the evidence for proving period of

use, the trademark owner shall be required to demonstrate the date of first use. If

Thailand adopts the use requirement for trademark registration and the principle of

Supplemental Register, the filing date on the Supplemental Register can be considered

as evidence for the term of use.

240 Supreme Court Judgement No. 2403/2552 241 Supreme Court Judgement No. 19480/2556 242 Intellectual Property Office of Singapore (IPOS) (n168) 5 243 The Lanham Act, 15 U.S.C. § 1052(f) and § 2.14 of T.M.R.P, Section 2(f)

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The advantage of accepting term of use as a prima facie evidence is that both

the trademark owner and the Registrar can prove use and examine the proof of use on

the same standard, and the Registrar can focus on the determination of other

requirements. Moreover, the acceptance of a prima facie evidence is not the

compulsory requirement for the term of use, in other words, a prima facie evidence

performs as a standard of use that could be changed if the trademark owner can prove

that the trademark is already distinctive even it has been used for less than five years.

Therefore, the Author would kindly suggest amending Clause 2(1) of

Ministerial Regulations to “goods or services have been continuously used with the

trademark, either by distribution, publication or advertising at least five years prior to

the filing date, and such trademark could cause the public in general or in the relevant

area to acknowledge and recognize that such goods or services are distinguishable

from those of the others.”

5.2.3 To Expand the Acceptable Evidence for Proof of Acquired

Distinctiveness

5.2.3.1 To Accept the Evidence of Similar Goods or Services for

Proof of Acquired Distinctiveness

Regarding Clause 2(2) of Ministerial Regulations, it states that “…the

trademark is deemed distinctive when it is used with the designated goods or services

in particular.”244

This could be interpreted that the goods or services specified in an

application and the designated goods or services in the evidence submitted must be

identical in order to be acceptable for the proof of acquired distinctiveness. This

interpretation limits the acceptable evidence which could decrease the chance of

success of the registration.


last paragraph of Trademark Act B.E. (1991) (as amended by the Trademark Act (No.2) B.E.

2543)(2012), Clause 2(2)

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Under the Examination Guidelines of Japan, there is an exception for

the acceptable evidence of use for goods or services that are different from the

designated goods or services if such difference does not affect the identity of the

specification of goods or designated in an application.245

In such case the Author would kindly propose to amend Clause 2(2) of

Ministerial Regulations by accepting the evidence of use that contains the designated

goods or services which are not identical to the specification of goods or services in

the application. Nevertheless, the difference between the designated goods or services

in the evidence and the specification of goods or services in an application should not

be so substantial that it could affect the identity of the designated goods or services in

the sense that the consumers still understand that the goods or services in the evidence

and those designated in applications come from the same origin.

The examples for evidence of goods or services which should be

admissible are those that are in the same classification and have almost the same

function and appearance, for example, ball pen and fountain pen or hostel and hotel

that the price are not so different.

Therefore, the recommendation on the issue of limiting the scope of

evidence of similar goods or services is to amend Clause 2(2) of Ministerial

Regulations to read “the distribution, publication or advertising of any goods or

services shall be deemed primarily acceptable only with such goods or services,

however the use of trademark with different goods or services may be acceptable if

the difference does not change the identity or scope of designated goods or services”.

5.2.3.2 To Accept Evidence of Similar Trademarks for Proof of

Acquired Distinctiveness

According to Clause 2(3) of the Ministerial Regulations, it specifies

that “Trademark that is to be proved to have acquired distinctiveness through use

245 Japan Patent Office (n145)

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according to this Ministerial Regulations must be identical to the trademark filed in an

application for the registration.”246

This provision clearly states that the trademark

appearing in the evidence and in an application must be identical; otherwise, such

evidence is not acceptable for proving acquired distinctiveness.

Under the Examination Procedure of Japan, there is an exception to

accept the similar trademark for the proof of acquired distinctiveness if the difference

between the trademark as filed and the trademark in the evidence submitted is not

substantial.247

In this regard, the Author would kindly propose to amend Clause 2(3)

of Ministerial Regulations by accepting similar trademark for satisfaction of the proof

of acquired distinctiveness, provided that the difference between the trademark as

filed and the trademark on the evidence submitted is not substantial. In other words,

even if the trademark appearing in the evidence is not exactly as the trademark

specified in an application, and only slight different the trademarks can be deemed as

identical. The acceptable difference could be measured by the perception of the

consumers, that even if the trademarks are different, the consumers still consider that

they are the same mark with the same source of goods or services.

The examples of similar trademarks which should be admitted as

identical are:

(1) The differences between the trademark in evidence and in

designated trademark in applications that are vertical writing and

horizontal writing.

(2) The trademarks are written in two different fonts, but the fonts are

closely similar with each other, for example, “HONEY” (Font:

Calibri) and “HONEY” (Font: Arial).

246

Ministerial Regulations Re: The Requirements for proving the distinctiveness regarding Section 7


2543)(2012)), Clause 2 247 Japan Patent Office (n145) 51

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Hence, the Author would kindly recommend the revision of Clause

2(3) of Ministerial Regulations to “A trademark used in commerce that is similar but

not identical to trademark as filed with the Trademark Office shall be acceptable for

proving use of the trademark as filed, provided that the trademark as used is not

substantially different from the trademark as filed.”

5.2.4 Amend or Implement Clearer Examination Guidelines for Proof of

Acquired Distinctiveness

Upon the comparative study with the trademark laws and practices of

the foreign countries, the Author found that not only the appropriate trademark laws

could facilitate the proof of acquired distinctiveness, but also the sufficient

examination guidelines could support both the trademark owner and the Registrar to

have a common understanding about the proof of acquired distinctiveness.

The examination guidelines for proof of acquired distinctiveness of

Thailand are specified in the Ministerial Regulations, in which the requirements for

proof of acquired distinctiveness are not clear and in need of better interpretation and

further clarification.

Therefore, the Author would kindly propose to amend or implement

clearer examination guidelines for the proof of acquired distinctiveness according to

the details as follows:

5.2.4.1 To clarify the interpretation of distribution, publication or

advertising of the trademark

According to Clause 2 of Ministerial Regulations, it states that the

acquired distinctiveness shall be proven by the distribution, publication or

advertisement of the trademark, service mark, certification mark and collective mark

to be known in the public. The examination guidelines should provide the examples of

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the interpretation of distribution, publication or advertising, for example, the

distribution, publication or advertising includes the conduction of sale activities,

licensing, franchising or any activity that is deemed relevant to the distribution,

publication or advertising.

5.2.4.2 To clarify the acceptable period for proof of acquired

distinctiveness

Besides the Author’s recommendation on the period of use of the

trademark for the proof of acquired distinctiveness, i.e. use of the mark at least five

year prior to the filing of application shall be acceptable as a prima facie evidence, the

Author would kindly suggest to clarify in the examination guideline that the period of

use is only the presumption of use. Therefore, the period of use is still flexible for the

trademark owner who believes that he has strong evidence to prove that his trademark

acquired distinctiveness even it has been used less than five year.

5.2.4.3 To clarify the specifications of goods or services in the

evidence

Regarding the proposal of the Author to amend Clause 2(2) of the

Ministerial Regulations that the use of trademark with different goods or services may

be acceptable if the difference does not affect to the identity of the designated goods

or services, the Author would kindly further suggest to specify the examples of use of

trademark with different goods or services that are acceptable for the proof of

acquired distinctiveness. For example, the goods or services in the same classification

may not enough to be accepted; nonetheless, the goods or services in an application

and evidence that are very similar and the difference does not affect to the identity of

designated good or services in the actual state of commerce, such as the use of

trademark with fountain pen and the use of trademark with ballpoint pen should be

deemed acceptable.

5.2.4.4 To clarify the characteristic of non-identical trademark

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According to the proposal of the Author to revise Clause 2(3) of

Ministerial Regulations that the similarity of trademark in the evidence shall be

acceptable if it does not affect the identity of trademark in an application or the

trademark in the evidence submitted is not substantially different than the trademark

as filed, the Author would kindly suggest to provide the examples of the similar

trademark that is acceptable in accordance with this provision. For example, the word

mark that is characterized in bold should be deemed identical to the word mark that is

characterized in regular, provided that the font of these trademarks is the same.

5.2.4.5 To clarify about the person who use of trademark

Referring to the Ministerial Regulations, there is no clarification about

the acceptable person who can be deemed as authorized user of a trademark, or use of

trademark by any person can be submitted as an evidence of use. In such case, the

Author would kindly suggest to add the provision regarding interpretation of a person

who is authorized to use trademark and. For example, the trademark shall be used by

the trademark owner, directors, licensees, representatives or any person that is

authorized to use trademark.

Moreover, the Author would kindly propose to accept the use of

trademark only by the authorized person because if the trademark can be used by

anybody, then it may be considered that such trademark has lost its distinctiveness

value and become generic, thereby making it unregistrable.

5.2.5 To Indicate the Reason of Trademark Registrability in Trademark

Database

The Author finds it is difficult and not convenient to search for the

information of trademarks that are registrable through the proof of acquired

distinctiveness from trademark database. Thus, the Author would kindly recommend

to include remarks in the database about the trademarks that are registered by the

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proof of acquired distinctiveness in the same way as the trademark databases of

foreign countries such as the U.S. or the Republic of Singapore. The purpose of the

remark is for the case of searching and studying the registrability of such trademark,

in other words, if such trademark is registrable based on the proof of acquired

distinctiveness, then people could search for the method of proof or evidence used for

proof of acquired distinctiveness of such trademark.

An example of the trademark database in the USPTO website is shown

as follows:

Figure 5.1 The database in the USPTO website

As is shown in section “Register” in USPTO database, this trademark is

registered according to Section 2(f) of Lanham Act in part. Thus, an interested people

can understand that this trademark was registered by submitting the proof of the

trademark having acquired secondary meaning.

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Figure 5.2 The database in the IPOS website

The section “Mark Clause” in IPOS database, mentions “proceeding

because of acquired distinctiveness through use”. Thus, it is clear that this trademark

obtained registration by proving acquired distinctiveness through use.

In this regard, the Author would kindly suggest to add the detail of

registration in the database which is shown as follows:

Figure 5.3 The database in the DIP website and its amendment

การได้รับจดทะเบียน มาตรา 7 วรรคท้าย

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Regarding the study of this thesis, the Author does not expect an immediate

and complete change under Thai Trademark Act or Ministerial Regulations

concerning proof of use for acquired distinctiveness in accordance with the Author’s

suggestions. The Author only aims to indicate that the laws and regulations do not

accommodate the proof of use for acquired distinctiveness. As a result, it obstructs the

chance of trademark registability which could affect the economic growth since the

businessmen cannot seek protection for their trademarks in Thailand, although the

registration is possible but the registration procedure causes delay and expenses in

order to obtain the registration. In this regard, the Author expects that the proposed

recommendations could serve as guidelines for improving the proof of use for

acquired distinctiveness. Nevertheless, the guidelines may not resolve all problems of

proof of use for acquired distinctiveness; therefore, they should be adjusted to be

aligned with the actual practices.

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จกัรกฤษณ์ ควรพจน์. กฎหมายระหว่างประเทศว่าดว้ย ลิขสิทธ์ิ สิทธิบตัรและเคร่ืองหมายการคา้. พิมพค์ร้ังท่ี 6 พ.ศ. 2559. (Jakkrit Kuanpoth. International Law Concerning Copyright Patent and

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ธชัชยั ศุภผลศิริ. ระบบทรัพยสิ์นทางปัญญาของประเทศไทย. กรุงเทพมหานคร: จุฬาลงกรณ์มหาวิทยาลยั, 2544. (Thatchai Suppapholsiri, Intellectual Property Systems in

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ธชัชยั ศุภผลศิริ. ค าอธิบายกฎหมายเคร่ืองหมายการคา้ พร้อมดว้ยพระราชบญัญติัเคร่ืองหมายการคา้ พ.ศ. 2534. พิมพค์ร้ังท่ี 1. กรุงเทพมหานคร: ส านกัพิมพนิ์ติธรรม, 2536. (Thatchai

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Masaki Mikami, “New Trademark Examination Guidelines” Marks Newsletter Vol. 3,

May 2, 2016.

Mark P. Mackenna, “The Normative Foundations of Trademark Law, “82 Notre

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Thesis

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ipnewletter_may16.pdf?la...January 3, 2017

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ed., Yuhikaku

Publishing 1999)”

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International Trademark Association (INTA). “Singapore: Use It or Lose It-When

Online Use Is not Enough” April 15, 2015

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h.aspx. January 3, 2017

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08. December 9, 2016

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Other Materials

Thai Trademark Act B.E. 2534 (1991) as amended by the Trademark Act (No. 3)

B.E. 2559 (2016)

Ministerial Regulations Re: The Requirements for proving the distinctiveness

regarding Section 7 last paragraph of Trademark Act B.E. 2534 (1991) (as amended

by the Trademark Act (No.2) B.E. 2543)(2002))

The Regulations of the Trademark Board regarding the Procedure of Appeal or

Petition for Cancellation of Trademarks B.E. 2545 (2002)

Thai Civil and Procedure Act (as amended in B.E.2550 (2008),

Japan Trademark Act 1959

Singapore Trademark Act (Chapter 332, Revised Edition 2005)

Full Decision-Intellectual Property of Singapore: In the Matter of A Trade Mark

Registration in the name of Widdy Trading Pte Ltd and Application For Revocation

Thereof by Cheaney Shoes Limited


Registration by Aucera S.A. and Application for revocation therof by Bentley Motors

Limited [2016] SGIPOS 11

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Registration by Festina Lotus, S.A and Application For Revocation By Romanson

Co., Ltd.

US Trademark Act 1946

US TRADEMARK LAW: RULE OF PRACTICE & FEDERAL STATUTES

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BIOGRAPHY

Name Miss Nedprawee Rodson

Date of Birth July18, 1989

Educational Attainment

Publications

2008-2011: Bachelor of Laws,

Thammasat University

2015 : Master of Laws, University of Wisconsin

Proof of Use of Trademark Under Section 7 of

Trademark Act Concerning Acquired

Distinctiveness by Comparative Approaches

Between Thai and Foreign Trademark Laws

Work Position

Senior Staff of Legal Division

Mitsubishi Motors (Thailand) Co., Ltd.

Work Experiences 2013-2014: Trademark Attorney

Satyapon & Partners Ltd.

2011-2013: Legal Officer

Isuzu Motors Co., (Thailand) Ltd.