Asia IP

I’m sur u cn read this messge. Rather than being a misspelling, it is immediately recognizable as the shorthand style of the instant-messaging generation. How are these missing vowels related to trademark law?

Product manufacturers and service providers consistently seek to create cool images to identify both themselves and the attributes of their goods and services. To this end, the trend of vowel-reduced trademarks continues to be on the rise among businesses hoping to create fanciful, modern, and fun brands that appeal to a mass audience. Yet, not all marks with vowel ellipsis have been successfully registered in Thailand. Obstacles in registering a mark with omitted vowels may arise because these marks may be deemed contrary to Section 7 paragraph 2 (3) of the Trademark Act, which states that a mark will be considered distinctive if it possesses or consists of “a combination of colors represented in a special manner, stylized letters, numerals or invented word.”

One telecommunications company in particular has been a pioneer in the cell phone industry for trademarks that exclude certain vowels. It began to employ this type of mark to match with specific concepts of its individual mobile phone models: RAZR (short for Razor) is thin like a blade; ROKR (short for Rocker) is designed to cater to music lovers; and PEBL (short for Pebble) is a round, smooth metal phone. Each of these marks has been successfully registered in Classes 9 and 38 for “cellular telephones, headsets, computer game software for mobile handsets, etc” and “wireless telephone services and electronic transmission of data and documents via computer terminals, etc.” A possible reason behind these successful registrations is that the remaining vowels still enable the final consonant of each mark to be vocalised. The Registrar may have interpreted that the absence of certain vowels did not affect the distinct features of the word marks because there is only one way to pronounce them and they are still presented within the familiar structure of a word.

Conversely, the same company has faced significant difficulties in gaining protection for the marks SLVR (short for Silver), KRZR (short for Crazer), SLDR (short for Slider), and SCPL (short for Scalpel) in Classes 9 and 38. Each of them was denied by the Registrar as being composed of nonstylised letters. Although most of these marks were allowed to lapse at the Registrar’s examination stage, appeals were filed for the marks SLVR and KRZR in Class 38 with the Board of Trademarks. The appeals sought to refute the examiner’s objections by focusing on the availability of the products bearing the marks in Thailand for an extended period of time and the origins of the marks in the words silver and crazer.

In its respective rulings, the Board upheld the Registrar’s rejection by reasoning that the marks were composed of plain block letters and were not graphically represented in stylised manners, which made them contrary to Section 7 paragraph 2 (3). The Board further found that the evidence submitted, including supporting documents from Web sites, promotional materials, and brochures, was insufficient to demonstrate the extensive use of the marks in Thailand. Clearly, the Board did not give credence to the applicant’s argument that the marks had backgrounds as defined words. These vowel-dropping marks were treated in the same manner as other marks consisting of letters that cannot be read as a word. For instance, a disclaimer was required for the letters “FX” included in the mark spaFX.

The above examples indicate the crucial findings that removing all of the vowels in a mark seems to have a very negative effect on its registrability. When an applicant seeks registration of an entirely vowel-free mark, the Registrar and the Board are likely to perceive it as a lettering mark, not a word mark, due to the lack of a clear pronunciation for the mark. Marks with at least one vowel remaining, on the other hand, are likely to remain pronounceable, and thus the chances of success in registering such marks increases substantially.

Other examples substantiate these observations. The mark ALTRX was successfully registered in Class 10 with the disclaimer for “X” as the applicant was able prove that it is read as a disyllabic word (altr-x) based on the actual use. Similarly, the mark BIMATRX was smoothly registered in Class 28, despite the absence of the “I.”

From this, the conclusion can be drawn that trademarks are likely to be registrable if some, but not all, vowels are removed. The exclusion of all vowels negatively affects the registrability of a mark because the Registrar and the Board perceive the mark to be an unpronounceable collection of nonstylised letters, rather than a coined word. In sum, dropping one vowel can make all the difference. By remaining mindful of the distinction between vowel-reduced and vowel-free marks, brand owners will be able to ensure that they can enjoy full protection of their marks under the trademark law. Try registrng a trademrk missng a vowl and u may b succssfl.

Tilleke & Gibbins International Ltd

26/F Supalai Grand Tower,

1011 Rama 3 Road, Chongnonsi, Yannawa, Bangkok 10120, Thailand

T: +66 2 653 5555

F: +66 2 653 5678

E: bangkok@tillekeandgibbins.com

W: www.tillekeandgibbins.com

About the Author

Ruchiya Chuenchomrat graduated with a Bachelor’s degree (with first class honours) from the Faculty of Humanities, Kasetsart University, and a Master’s degree in general management (with distinction) from the College of Management, Mahidol University. In December 2000, she joined Tilleke & Gibbins International as a trademark executive in the firm’s intellectual property department. At present, she handles local trademark registrations for numerous clients from various countries including the United States, countries in Europe and Japan, among others. Her main clients are leading manufacturing companies in the food and beverages, telecommunications, and pharmaceutical industries.