TMP Tips – Trademark filing in Thailand: black & white vs. color-specific applications

A trademark application in Thailand may be filed with a specimen in either black and white or in specific colors. Pursuant to Section 45 of the Thai Trademark Act, a trademark registered without limitation of color shall be deemed to be registered for all colors. Accordingly, if a trademark is filed in color, the protection will be limited strictly to those exact colors as filed. Therefore, the trademark must be used in the same colors as registered. Based on this principle, filing a trademark in black and white is generally considered to afford broader protection than filing in color.

Registration of a trademark specimen in color
 
Under local practice, the application form does not provide an option for the applicant to claim the colors appearing in the trademark. Consequently, in practice, the submission of a color specimen is generally interpreted as an implicit claim to the use of those colors in the mark.
 
Trademark with a distinct combination of colors
 
There is a distinction between a “colored trademark” and a “trademark consisting of a combination of colors represented in a special manner”.
 
A colored trademark refers to a mark filed with specific colors appearing in its elements, such as letters, numerals, devices, photographs, shapes, configurations, or other features. The colors may be used without a fixed or structured arrangement. Under Thai practice, the filing of a trademark in color may indicate that the applicant intends to claim color as part of the mark, although the law does not expressly require a separate declaration of such intention in the application form. Example of such registered trademarks in Thailand would be:

In contrast, a trademark consisting of a combination of colors represented in a special manner must feature two or more colors arranged in a distinctive and specific pattern or configuration. The applicant is required to specify the colors and describe their arrangement or position in the application. The color combination must appear independently as the essential and distinctive part of the trademark, not forming any part of letters, numbers, figures, or other elements. This type of mark is registrable under Thai law, as recognized under Section 7 paragraph 2(5) of the Thai Trademark Act and regulations issued thereunder, provided that the specific color arrangement is capable of distinguishing the goods or services associated with the applicant’s trademark from those of others. Example of such registered trademarks in Thailand would be:

Enforcement
 
In Thailand, there is no general requirement to submit proof of use of a trademark during the registration process. However, the trademark owner may be required to provide such evidence under certain circumstances, for example, to demonstrate acquired distinctiveness through use, to assert superior rights against third parties, or when defending against a non-use cancellation petition.
 
While there are no court judgments or official criteria explicitly stating that a trademark must be used in the exact color(s) as filed, or that use of the mark in different colors does not constitute use of the registered trademark, the Notification of the Ministry of Commerce No. 2 (3), B.E. 2555 (2012), provides that evidence submitted to prove distinctiveness through use must correspond to the trademark as filed in the application. This regulation has also been followed and reinforced by multiple rulings from the Trademark Board. Accordingly, it may be inferred that the trademark must be used in the same form as applied for, including the same color scheme.
 
Summary

In summary, filing a trademark in black and white is generally recommended unless color is an essential element of the mark, as it offers broader protection by covering all color variations. This allows the mark to be used in any color without affecting its validity. In contrast, filing in color may limit protection to the specific colors submitted, which could restrict use and reduce enforcement flexibility.

References:
[1] Trademark Act B.E. 2534 (1991)
[2] Notification of the Ministry of Commerce regarding the Criteria for Proving Distinctive Characteristics under Section 7, Paragraph 3 of the Trademark Act B.E. 2534 (1991), dated 11 October 2012.
[3] Regulations of the Department of Intellectual Property on the Criteria and Procedures for the Registration of the Trademark with a combination of colors in a special manner, dated 13 May 2002.
[4] Manual for the Consideration of Trademark Registration, B.E. 2565 (2022).