Proving Acquired Distinctiveness in Thailand: What the DIP Demands

When a trade mark application is refused on distinctiveness grounds under Section 7 of the Thai Trademark Act, the applicant has one remaining pathway: proving that the mark has acquired distinctiveness through use. The last paragraph of Section 7 provides that a mark lacking inherent distinctiveness may be deemed distinctive if it has been used on goods that have been widely sold or advertised in accordance with rules prescribed by the Minister. This is Thailand’s equivalent of “secondary meaning” — but the evidentiary standard is demanding, and the DIP and Board of Trademarks apply it strictly.

The Legal Standard

The final paragraph of Section 7 states that a mark having no inherent distinctiveness under the categories listed in Section 7(2)(1) through (11) may be deemed distinctive if used on goods that have been “widely sold or advertised in accordance with the rules prescribed in a notification by the Minister and if it is proved that the rules have been duly met.” The applicable Ministerial rules require the applicant to demonstrate that, through extensive and continuous use, Thai consumers have come to associate the mark with a single commercial source.

The standard is assessed from the perspective of the Thai consumer. International fame alone is insufficient; the applicant must demonstrate that the mark has acquired source-identifying function specifically in the Thai market.

The Evidence Package: What the DIP Looks For

The DIP and Board of Trademarks evaluate acquired distinctiveness based on a comprehensive assessment of the mark’s commercial presence in Thailand. The key categories of evidence are:

• Duration and continuity of use in Thailand: Evidence showing how long the mark has been used continuously in the Thai market. The DIP looks for sustained, uninterrupted use over a substantial period — typically multiple years. Short-term or intermittent use is unlikely to suffice.
• Sales volume and revenue in Thailand: Concrete figures demonstrating the commercial scale of activities conducted under the mark in Thailand. This includes domestic sales data, import records, and revenue attributable to goods or services bearing the mark in the Thai market. The figures should be supported by invoices, customs documentation, or audited financial statements.
• Advertising expenditure in Thailand: One of the most heavily weighted factors. The DIP expects evidence of significant advertising investment directed at the Thai market, including expenditure figures and samples of actual advertising campaigns. This covers print advertising in Thai publications, television and radio placements, digital and social media campaigns targeting Thai audiences, outdoor advertising in Thailand, and participation in Thai trade exhibitions. The key requirement is that the advertising reached Thai consumers specifically.
• Distribution and market penetration: Evidence showing the extent of the mark’s distribution network in Thailand — the number and geographic spread of retail outlets, online sales channels serving Thai customers, and relationships with Thai distributors or agents.
• Consumer recognition evidence: Where available, consumer surveys or market research conducted in Thailand demonstrating that Thai consumers associate the mark with a specific commercial source. While not strictly required, consumer surveys significantly strengthen an acquired distinctiveness claim.
• Media coverage and third-party references: Articles, reviews, and mentions of the mark in Thai-language media or media accessible to the Thai market.
• Awards and industry recognition: Any awards, certifications, or industry recognition received in Thailand or recognised by the Thai market.

The Thailand-Specific Requirement

A recurring theme in DIP and Board of Trademarks decisions is the insistence on Thailand-specific evidence. International sales figures, global advertising campaigns, and consumer surveys conducted outside Thailand carry little weight. The DIP assesses whether Thai consumers — not consumers generally — have come to recognise the mark as a source identifier. This means:

• Global revenue figures without a Thai breakdown are insufficient.
• International advertising campaigns must be shown to have reached Thai audiences.
• Foreign registrations and awards provide supporting context but do not substitute for local evidence.
• Online presence must be demonstrated as reaching Thai consumers specifically (e.g., through Thai-language content, Thai e-commerce platforms, or advertising targeted at Thailand).

The Procedural Path

When a mark is refused for lack of distinctiveness under Section 7, the applicant has 90 days from the notification to appeal to the Board of Trademarks. The appeal is the point at which acquired distinctiveness evidence is formally submitted and argued. If the Board upholds the refusal, the applicant can further appeal to the CIPIT Court within 90 days, and ultimately to the Court of Appeal for Specialised Cases.

The courts have historically been more receptive to acquired distinctiveness arguments than the DIP Registrar or the Board of Trademarks. Multiple Supreme Court and IP Court decisions have overturned Board refusals after finding that the submitted evidence demonstrated acquired distinctiveness, even in cases where the Registrar and Board took a conservative view. This means that applicants should not consider a Board refusal as the end of the road — the court appeals process is a genuine opportunity to secure registration.

The Font Consistency Problem

A practical challenge unique to Thailand is the requirement that evidence of use must show the mark in the same form as filed. Since all Thai trade mark applications are filed as image files with a specific font, evidence showing the mark in a different font or visual presentation may be questioned. Board of Trademarks decisions have in some cases rejected evidence of use where the mark appeared in a different font than the one used in the application. While this issue remains unsettled, applicants should ensure that their evidence of use matches the filed specimen as closely as possible.

Strategic Recommendations

• Build Thailand-specific evidence before filing: If you anticipate a distinctiveness refusal, begin collecting Thai-market evidence — sales data, advertising records, distribution agreements — before or during the application process.
• Quantify local advertising spend: The DIP places particular emphasis on advertising investment in Thailand. Track and document all marketing expenditure directed at Thai consumers.
• Maintain consistent mark usage: Use the mark in Thailand in the same form as the filed specimen to ensure the evidence of use aligns with the application.
• Be prepared to appeal: The Board of Trademarks is often conservative on acquired distinctiveness. The CIPIT Court has been more receptive, and applicants should factor the appeals process into their timeline and budget.
• Commission local market research: A consumer recognition survey conducted among Thai consumers provides some of the strongest evidence of acquired distinctiveness.

Common Mistakes

• Submitting only international evidence: Global sales and advertising data without a Thai-specific breakdown are largely irrelevant.
• Underestimating the evidentiary burden: The DIP and Board expect a comprehensive evidence package. A few invoices or advertisements are unlikely to be sufficient.
• Giving up after a Board refusal: The courts are generally more receptive than the Board. Applicants with strong evidence should consider the court appeal pathway.
• Inconsistent mark usage: Using the mark in a materially different form from the filed specimen can undermine the evidence package.

Key Takeaway

Proving acquired distinctiveness in Thailand requires a comprehensive, Thailand-specific evidence package demonstrating that the mark has become a recognised source identifier among Thai consumers. The DIP and Board of Trademarks look closely at local sales volume, advertising expenditure directed at the Thai market, duration and continuity of use, and — where available — consumer recognition evidence. International fame provides background context but does not substitute for Thai-market evidence. Applicants refused at the Board stage should not give up, as the Thai courts have been more receptive to well-supported acquired distinctiveness claims.