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Understanding Trademark Disclaimers in Thailand: What You Should Know
- Salil Siriwat
- Oct 15
- 3 min read
When filing a trademark application in Thailand, one of the key criteria for registration is that the mark must be distinctive. If a trademark lacks distinctiveness, the Registrar is required by law to refuse its registration. However, in practice, not all trademarks are entirely distinctive.
Some trademarks may include elements that are common in trade or inherently non-distinctive. In such cases, Thai trademark law offers a mechanism known as a “disclaimer,” a useful tool that can help applicants secure registration despite these non-distinctive components.
What Is a Trademark Disclaimer?
Under Section 17 of the Thai Trademark Act B.E. 2534 (1991), if a trademark as a whole meets the registration criteria under Section 6 (it is distinctive, not prohibited by law, and not identical or confusingly similar to an existing mark), but contains elements that lack distinctiveness, the Registrar may allow registration on the condition that the applicant submits a disclaimer.
A disclaimer is a formal statement declaring that the applicant does not claim exclusive rights to specific parts of the mark that are either commonly used in trade or inherently non-distinctive. Once the disclaimer is accepted, the Registrar will proceed with examining the mark for registration.
Types of Elements That May Require a Disclaimer
1. Commonly Used Elements in Trade
These are symbols, words, or images frequently used in connection with certain goods or classes of goods and therefore considered non-distinctive. Examples include:
A gear symbol for machinery
Images of flowers, stars, crowns, women or children for cosmetics or personal care products
Generic words such as “Bag” for bags and luggage
In fact, the Registrar may issue official notifications listing specific elements considered common for certain categories of goods or services.
2. Inherently Non-Distinctive Elements
These include, for example:
Geographical names
Descriptive terms that refer directly to the nature, quality, or intended purpose of the goods
Images of the goods themselves
Under Section 7 of the Trademark Act, such components are presumed to lack inherent distinctiveness and are therefore not protectable on their own.
Legal Effect of a Disclaimer
If a trademark is registered with a disclaimer, the mark as a whole receives full legal protection. However, the disclaimed elements are not protected as exclusive rights. This means that the disclaimed parts will still appear in the trademark, but others may use the same elements in their own marks, provided their marks are not identical or confusingly similar to your registered trademark. As a result, your ability to enforce trademark rights over the disclaimed portion is limited.
While a disclaimer can be useful from a legal standpoint because it allows registration of marks that contain borderline or non-distinctive elements, it may carry strategic drawbacks. Accepting a disclaimer can be perceived as an acknowledgment that the disclaimed portion lacks distinctiveness, which may not be ideal for brand positioning or long-term trademark protection.
Can the Applicant Challenge a Disclaimer Requirement?
Yes, the Registrar’s order requiring a disclaimer is not final. If an applicant disagrees with the disclaimer requirement, they may appeal the order to the Board of Trademarks within 60 days from the date of receiving the decision.
If they are not satisfied with the Board’s decision, they may further appeal by filing a lawsuit with the Central Intellectual Property and International Trade Court.
What to Do When Faced with a Trademark Disclaimer?
There is no universal answer to whether a disclaimer should be accepted or challenged. The appropriate course of action depends on the specific characteristics of the mark, its commercial significance, and the long-term strategic goals of the applicant.
It is advisable to consult a qualified Thai trademark attorney who can assess the legal and practical implications of the disclaimer and provide guidance on whether to proceed with registration or pursue an appeal. Experienced legal counsel can help ensure that your decision aligns with both legal requirements and business objectives. Making an informed decision at this stage can significantly impact the strength and scope of your trademark protection in Thailand.
Written by
Manaswee Wongsuryrat
Partner
Tapanon Parnkaew
Associate
