Courts Rule on Descriptive and Suggestive Trademarks
01 November 2012
The Central Intellectual Property and International Trade Court in Thailand recently decided in favour of an Indian corporation, Colorplus Fashions, on the registrability of their trademark Colorplus.
According to lawyers at KASS in Kuala Lumpur, writing on the firm’s website, the applicant had previously applied for the registration of the Colorplus mark in Class 25 in Thailand, claiming apparel products. “The word Colorplus in itself may not have a dictionary definition, but it is clear that it is a combination of the words ‘Color’ and ‘Plus,’ which could be translated as ‘adding colour’ or ‘increasing colour,’ the KASS lawyers wrote.
The Thai Registrar of Trademarks refused registration of the mark on the basis that the mark was descriptive of the goods it represents, i.e. apparel. “The Registrar viewed that the word Colorplus referred directly to colourful or high-quality colours, and as such, was not in line with Section 7(2) of the Thai Trademark Act BE. 2534, which states that a distinctive trademark consists of ‘a word or words having no direct reference to the character or quality of the goods and is not a geographical name prescribed by the Minister in the Ministerial Notifications,’” they said.
“The Applicant then attempted to appeal this matter at the Thai Board of Trademarks, but the appeal was not allowed by the Boards for the same reasons as those laid down by the Registrar of Trademarks,” the lawyers wrote. The Applicant subsequently went on to file a civil suit before the courts in a further attempt to get their Colorplus mark registered.
“In considering whether the Colorplus mark was registrable, the Courts opined that a word or clause contains a direct reference to the character or quality of the goods it represents if, when used in connection with a product, it enables consumers to know the character and quality of the particular product,” they wrote. “The Courts viewed that the trademark did not reveal the type, objective or quality of the applicant’s products to consumers; rather, it merely served to attract the interest of consumers. The Courts therefore came to the conclusion that the Colorplus mark was distinctive and registrable in nature.”
The KASS lawyers noted that the Colorplus mark is, “without a doubt,” a suggestive trademark.
“There is often a fine line between trademarks which are directly descriptive and merely suggestive, and it is sometimes a difficult task indeed to differentiate one from the other,” they wrote. “Case law has established that whilst directly descriptive marks are unregistrable, suggestive marks, which hint at the nature and quality of the trademark but does not directly describe its characteristics, may be registered. This case has provided a streamlined definition on what constitutes a direct reference to the character or quality of goods represented by a particular trademark, and in doing so, has helped stabilize, to an extent, this grey area of the law. It also provides a clear picture on what constitutes a descriptive, unregistrable mark, and a suggestive, registrable one.”
