THAILAND: TRADEMARK DISCLAIMER
THAILAND: TRADEMARK DISCLAIMER
A trademark disclaimer is a declaration stating that the applicant does not have exclusivity in using specific word of a trademark by itself.
Under section 17 of the Trade Mark Act 1999, it was stated that if the Registrar considered a trademark which as a whole is registrable under Section 6 but contains one or more parts which are common to the trade for some types or classes of goods, no applicant should have exclusive right thereto or which are not distinctive, the Registrar shall either order the applicant to disclaim exclusive use of the said part or parts within sixty (60) days from the date of receipt of the order or order the applicant to enter other disclaimers necessary to define the rights of the owner of such trademark within sixty (60) days from the date of receipt of the order.
This means as long as the Registrar deemed that it is necessary for applicant to disclaim exclusive rights within 60 days if the mark contains parts that are common to the trade.
The Para-G Case and “Essence of the Mark” Test
Several applications have been rejected because the disclaimed part is not the fundamental nature of the trademark. However, in the case of Para-G v. Para 555 and Para Plus it was held that the court will look at the appearance of the mark as a whole and pronunciation of the mark in considering whether the disclaimed elements were the essence of the mark.
How to Prevent Disclaimer Issues
In order to prevent likelihood of citation of the disclaimed part is not the essence of the mark, applicant should conduct a search beforehand to confirm there is no similarity between the prior marks.
Besides, applicant should also use distinctive words or mark in lowering the chances. If the trademark contains numeral or letter, it should be more stylized, such as colour combination, font & patterns.
As the law is still currently inconsistent, applicants should consider whether their mark conflict with prior mark if the said trademark consist of any non-stylized letters or descriptive parts beforehand. Though as stated in the above case that court would also take into consideration of the appearance and pronunciation, the chances of Registrar demanding a disclaimer is low, but never zero.
What Is a Trademark Disclaimer?
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A trademark disclaimer is a statement filed with your trademark application declaring that you do not claim exclusive rights to certain elements within your mark. For example, if you register “GOLDEN BAKERY” with a unique logo, you might disclaim exclusive use of the word “BAKERY” — meaning you still own the complete mark but acknowledge that other bakeries can use the word “bakery” in their names.
When Does the Thai DIP Require Disclaimers?
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Under Section 17 of the Trade Marks Act 1999, the Registrar will require disclaimers when your mark contains elements that are:
- Common to the trade (e.g., “COFFEE” for coffee shops)
- Not distinctive on their own (e.g., descriptive words like “Premium,” “Best,” “Quality”)
- Generic terms for the goods/services (e.g., “Restaurant,” “Tech,” “Services”)
You have 60 days from receiving the Registrar’s order to file the required disclaimer.
Does Disclaiming Weaken My Trademark Protection?
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Not necessarily. The Para-G case established that courts look at the mark as a whole — its appearance and pronunciation — rather than isolated elements. As long as your complete mark is distinctive when considered together, the disclaimer does not significantly weaken protection. You still prevent others from copying your overall mark; you just cannot claim monopoly over common words within it.
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