One of the most common questions in trade mark protection is: When are two trade marks considered “too similar” to coexist? The answer carries real weight for businesses planning to enter or expand in the Thai market, as the Trade Mark Office’s decisions on similarity can directly impact market access and brand strategy.

Recently, the Trade Mark Office published Trade Mark Board decisions from 2021 to 2023 on its website, illustrating how “similarity” is interpreted in practice. It shows that the assessment is not always straightforward—even small differences in appearance, sound, or meaning can influence the outcome. In this article, we highlight two interesting points drawn from those recent decisions, providing useful insights for brand owners to better understand how similarity is being applied and what it means for their trade mark strategy in Thailand.

1. The importance of the Dominant Word in a Mark

Several Trade Mark Board decisions show that the Trade Mark Office often does not allow marks containing essentially similar words to coexist in the same or related class, even where their visual appearance is different.

Examples of the decisions are set out below:

Key takeaways:

• Same Words, No Coexistence: If two marks use the same or very similar main word, the Trade Mark Office usually will not allow both to be registered—even if the overall design or style looks different..
• Dominant Word is Crucial: The dominant word is the primary factor in assessing similarity. If a component is disclaimed (meaning the applicant acknowledges that the word is generic or descriptive and does not claim exclusive rights to it), the Trade Mark Office places less weight on it and instead focuses on the remaining distinctive element, with particular emphasis on phonetic similarity.
• Adding Devices May Not Suffice: Adding a distinctive device may not be enough to secure registration if the word elements are similar to an existing mark. To improve chances of successful registration, applicants should consider including “distinctive words” to better differentiate their mark.

2. Impact of Transliteration on Phonetic Similarity

Under the Thai trade mark System, applicants are required to provide a transliteration when filing a foreign-language mark. The Trade Mark Board decisions show that the transliteration provided in the application can directly influence the similarity assessment:

• Same Transliteration, Similar Marks: Even if two marks look visually different, if the applicant’s transliteration is identical (or highly similar) to an existing mark, the Board generally finds the marks similar.

For example, in one case, the prior mark’s transliteration was indicated as “SUN.” In the applied-for mark, the word “ELECTRIC” was disclaimed, leaving “SUN” as the dominant element. As a result, the Board concluded that the marks were similar.

• No Transliteration, Different Pronunciations: Where visually similar marks are filed without a transliteration, the Board has reasoned that the public may pronounce them differently, and thus the marks are not considered similar. This principle can apply when a mark is perceived as a device mark rather than a word mark.

For example, in this case, two marks resembling a stylized letter “K” were held not-similar. The applied mark specified the transliteration as “K”, while the prior mark did not indicate any pronunciation. The Board therefore concluded that the marks were phonetically dissimilar, as the public could pronounce the prior mark in various ways, resulting in different pronunciations.

Key takeaways:

• The transliteration filed with the application can tip the balance between similarity and non-similarity. Careful consideration of transliteration is essential for successful registration in Thailand.
• This is especially relevant for foreign brand owners, as many may overlook the role of transliteration. It shows that similarity is not only about consumer perception, but also how the applicant frames the mark in their filing.

Conclusion

Recent Trade Mark Board decisions highlight that assessing similarity in Thailand goes beyond a simple side-by-side comparison. The dominant element of a mark and the transliteration provided at filing can play a decisive role in determining whether two marks are considered similar.

For brand owners, this highlights the need for strategic filing. Conducting a trade mark search and consulting a trade mark attorney before filing is recommended to ensure a smooth registration process.

Author: Nattaya Mahakunakorn, Lookpad Gedkhuntod

TAGS

• trade mark
• brand strategy
• thailand
• legal insights
• Intellectual Property