Justice Manmohan Singh of the Delhi High Court has remarked in a judgment, “The world is a global village.” This sentiment captures the essence of our interconnected era, where globalization and interconnected markets continually redefine our world. Today, the judgments handed down in courtrooms across the globe can have far-reaching consequences and the ripples of these legal decisions extend far beyond their local jurisdictions, influencing economies and industries worldwide.

Welcome to “A View from Afar,” a series dedicated to examining international judgments and their far-reaching impacts. Through this series, we aim to bridge the gap between diverse legal systems and their global repercussions, offering you a panoramic view of the intricate interplay between law and commerce.

We will delve into landmark rulings from various corners of the world, unpacking the legal reasoning behind such decisions and scrutinizing their practical implications. Each article will provide a thorough analysis, shedding light on how these judgments affect not only the parties directly involved but also affect the regulatory frameworks, corporate strategies, and market dynamics on a global scale.

Whether it is a judgment delivered in any country across the world, we will share our views on its profound impact in other jurisdictions navigating through the labyrinth of international jurisprudence.

Registration of trademarks comprising of letter combinations, particularly two-letter marks, has long been a point of contention under Thai trademark law. Generally, such marks face a strict scrutiny due to concerns over inherent distinctiveness, especially when lacking stylization or pronounceability.

Join us in this further instalment of “A View from Afar” as weanalyze thecase of Beijing Jing Dong 360 Du E-Commerce who challenged these restrictions by pursuing registration for their marks “JD.COM” and “JD.CO.TH” in Thailand. This article delves into the intricacies of the case, and understanding how Thailand’s IP & IT Court and the Court of Appeal for Specialised Cases interpreted and upheld the distinctiveness of the JD.COM marks, paving the way for greater flexibility in Thailand’s trademark practice.

Under the Trademark Act B.E. 2534 (1991) governing trademark protection in Thailand, trademarks are required to exhibit a degree of “inventiveness” or distinctiveness to qualify for registration, as stated in Section 7. The Department of Intellectual Property (DIP), which oversees trademark registration, typically interprets distinctiveness for letter and numeral marks narrowly. According to DIP practice, letters or numerals must include significant stylization to be considered inherently distinctive, often requiring elaborate features like overlapping or interlocking elements or traditional Thai motifs to qualify. This approach has been particularly stringent with two-letter marks, which the DIP often rejects for lacking “invented” characteristics unless substantial artistic elements are present. Some examples of acceptable letter and numeral marks according to the DIP are as follows:

*We do not claim any copyright in the above images. The same have been reproduced for academic and representational purposes only.

 

Despite these strict guidelines, Courts in Thailand have historically recognized that letter combinations of three or more characters can demonstrate inherent distinctiveness, even without stylization. These marks, due to their unusual arrangements, are viewed as identifiable and capable of distinguishing goods and services, thereby meeting the distinctiveness criteria under Section 7. However, achieving registration for two-letter marks has remained challenging, and the JD case represents a pivotal moment for applicants of these marks.

Beijing Jing Dong 360 Du E-Commerce, a prominent Chinese e-commerce company, sought registration of its “JD.COM” and “JD.CO.TH” marks under Class 35, covering advertising and business management services. Despite JD’s prominence in global markets, the DIP rejected both applications on the grounds that the two letters “JD” lacked inherent distinctiveness and that “.COM” and “.CO.TH” were common descriptive terms. In response, JD.COM filed an appeal, and contended that “JD” was an arbitrary letter combination derived from its corporate name, not descriptive of the services offered.

*We do not claim any copyright in the above images. The same have been reproduced for academic and representational purposes only.

 

The Board of Trademarks upheld the DIP’s initial refusal, maintaining that the mark’s components failed to demonstrate inherent distinctiveness. This led JD.COM to file a civil suit, challenging the interpretation and application of distinctiveness criteria by the DIP and Board.

The Intellectual Property and International Trade Court (IP & IT Court) overruled the DIP’s decision, marking a notable shift in judicial interpretation. The IP & IT Court concluded that the letters “JD,” although derived from the applicant’s corporate name, were combined in an unconventional manner, fulfilling the distinctiveness requirement under Section 7 of the Trademark Act. The Court observed that “JD” was an invented arrangement with no specific meaning and that there was no evidence suggesting common use of the “JD” configuration in Thailand.

The IP & IT Court also recognized that generic terms like “.com” did not prevent a mark from being distinctive as long as the term was combined with other elements, which, in this case, constituted an original arrangement and emphasized that the requirement for “invented letters” did not necessitate extraordinary visual enhancements, thereby providing a more flexible interpretation of distinctiveness.

The DIP countered by filing an appeal in the Court of Appeal for Specialised Cases against this decision, and reiterated its argument that “JD” lacked distinctiveness and that its examination by dissection (evaluating “JD” separately from “.com” or “.co.th”) was valid. However, the Court of Appeal upheld the IP & IT Court’s decision, and provided a comprehensive understanding of “invented letters.”In its decision, the Court of Appeal clarified that distinctiveness in two-letter marks need not be limited to marks with stylized design elements. Instead, it supported the view that combining letters in a unique or uncommon way suffices to create an “invented” configuration, even if each letter is ordinary. The Court emphasized that “invented letters” need only provide the public with a means to distinguish the associated services, not necessarily meet a high threshold of artistry. In August 2024, the Hon’ble Supreme Court of Thailand denied the DIP’s motion for a final appeal, finalizing the Court of Appeal’s decision.

The JD.COM case marks a pivotal evolution in Thai trademark law, offering new hope to applicants of two-letter marks and those utilizing ordinary letters in creative ways. By affirming that two-letter marks can be inherently distinctive without stylization, Thai Courts have provided a more nuanced interpretation of distinctiveness. The case sends a clear message to both applicants and the DIP that inherent distinctiveness can derive from the uniqueness of letter arrangements, rather than being limited to ornate stylizations.

The JD.COM decision is likely to encourage a shift in DIP examination practices. Although the 2022 Examination Guidelines acknowledge that combinations of three or more letters can be distinctive without stylization, the JD.COM case expands this understanding to include two-letter marks. This change may ease the path for companies seeking to register simpler, yet unique, letter marks, as long as they can demonstrate a distinctive arrangement that separates the mark from common words or designs.

Strictly, the JD.COM case does not serve as a precedent for the registration of two-letter marks. In this case, the mark applied for was a five-letter word, “JD.COM,” and therefore, should be examined in its entirety, and not as a standalone two-letter word, although “JD” was a prominent aspect of the same.

Position in India

According to the Indian Trade Marks Act, 1999, a trademark is defined as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others” (Section 2(zb)). A mark includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof” (Section 2(m)).

Therefore, two-letter combinations are thus theoretically eligible for trademark registration however, a proposed mark must meet certain conditions to qualify.The most important one is that the mark must be distinctive and not descriptive or generic. This means that the mark must be able to identify the source or origin of the goods or services and not merely indicate their nature, quality, quantity or other characteristics. Hence, Two-letter combination must possess an inherent distinctiveness that clearly identifies the goods or services of the owner from anotherentity. Generic or common two-letter combinations such as “OK”, “CC”, “TV”, “AI”are less likely to be considered distinctive. If a two-letter trademark lacks inherent distinctiveness, the applicant may establish distinctiveness by demonstrating extensive and continuous use, which leads to the mark acquiring a secondary meaning in the marketplace.

Two-letter marks cannot be descriptive of the goods or services. For instance, if the letters bear a direct relation to the product’s characteristics or qualities, the mark may not be registrable. The letters should not imply a feature or quality of the product.Two-letter trademarks are often challenging to register because of their limited character count, making them more likely to resemble existing registered trademarks. The Indian Trade Mark Registry closely examines such marks to ensure they do not cause confusion or deception with respect to existing marks, even if minor differences exist.

Two-letter terms commonly used in business or trade are difficult to register. The Trademark Registry often views letters that are standard abbreviations or commonly used in industry as lacking distinctiveness.

Overcoming Objections Based on Section 9 and Section 11 of the Trade Marks Act, 1999

The Trade Marks Act, 1999 provides for absolute grounds for refusal of registration of trademarks in Section 9. Some of these grounds are relevant for single letter or numeral marks. For example, Section 9(1)(a) states that “the trade mark is devoid of any distinctive character” and Section 9(1)(b) states that “the trade mark consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service”. These provisions imply that single letter or numeral marks that are commonly used in trade to denote certain features or aspects of the goods or services are likely to be rejected as trademarks.

However, Section 9(1) also provides an exception for marks that have acquired distinctiveness through use. It states that “a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it”. This means that if inherent distinctiveness is weak, evidence of extensive use, customer recognition, advertising expenditures, market surveys, and sales figures may help establish that the mark has gained recognition as a unique identifier for the applicant’s goods or services.

There are also relative grounds for refusal of registration of trademarks underSection 11. These grounds are based on the existence of prior rights or conflicting marks. For example, Section 11(1) states that “a trade mark shall not be registered if because of its identity with an earlier trade mark and similarity of goods or services covered by the trade mark or because of its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark there exists a likelihood of confusion on the part of the public”. This means that if a single letter or numeral mark is identical or similar to an existing registered trademark for similar goods or services, then it may be refused registration to avoid confusion among consumers.

Therefore, to register a two-letter trademark in India, applicants must either demonstrate inherent distinctiveness or provide evidence that the mark has acquired a unique association with their goods or services and does not conflict with any prior rights. This can be challenging and costly, especially if there are objections from other parties. However, several two-letter trademarks have been successfully registered in India, particularly when the applicants have demonstrated that these marks are inherently distinctive or have acquired distinctiveness through extensive use. Here are a few notable examples:

  •  LG (LG Electronics) – Class 9 (Electronics and home appliances)
  • 3M (3M Company) – Class 1 (Industrial and healthcare products)
  • GE (General Electric) – Class 7 (Electrical and medical equipment)
  • AX (Armani Exchange)– Class 25 (Clothing, fashion accessories, and lifestyle products.)
  • MG (MG Motor)– Class 12 (Automobiles and automotive parts.)
  • CK (Calvin Klein)– Class 25 (Clothing, fragrances, and accessories.)

 

Comparative Analysis of International Standards

Registration of two-letter trademarks is challenging in most jurisdictions due to inherent distinctiveness requirements. However, the standards and approaches vary across countries:

The United States of America

  • Inherent Distinctiveness Standard: The U.S. Patent and Trademark Office (USPTO) applies a strict inherent distinctiveness requirement. Two-letter marks often fall into the “merely descriptive” or “generic” categories, especially if they represent abbreviations or commonly used industry terms.
  • Secondary Meaning Requirement: The Lanham Act permits two-letter marks if they have acquired secondary meaning. This typically requires extensive evidence showing that the public directly associates the mark with the applicant’s goods or services.
  • Special Challenges for Common Combinations: The USPTO tends to reject two-letter trademarks with common combinations unless the applicant can show substantial brand presence or unique usage, making distinctiveness more challenging for generic or common terms.

European Union (EU)

  • Distinctiveness Emphasis: The European Union Intellectual Property Office (EUIPO) requires two-letter trademarks to have distinctiveness, especially when combined with less common letter arrangements or symbols.
  • Strict Scrutiny of Common Terms: The EUIPO is more likely to reject combinations perceived as common abbreviations or descriptors. However, well-known brands, such as “3M” and “LG” have succeeded in registration due to the marks’ significant reputation and recognition.
  • Use Evidence Requirement: If inherent distinctiveness is in question, the applicant must provide evidence of use to show that consumers associate the two-letter mark with specific goods or services.

United Kingdom

  • Proof of Distinctiveness: The UK Intellectual Property Office (UKIPO) often scrutinizes two-letter marks, especially if they could be perceived as initials, industry terms, or descriptive abbreviations. Distinctiveness is essential, and applicants may rely on acquired distinctiveness if the mark has gained recognition in the market.
  • Leniency for Established Brands: Like in India, brands with longstanding reputations or unique associations with two-letter marks (e.g., “BP” for British Petroleum) can achieve registration more readily than newer or less-known applicants.

Japan

  • Requirement of Uniqueness and Distinctiveness: The Japan Patent Office (JPO) follows a strict standard for two-letter marks, particularly when they resemble abbreviations or are common in trade. The JPO typically demands that the mark be both unique and highly distinctive.
  • Heavy Reliance on Secondary Meaning: Similar to India, two-letter marks that lack inherent distinctiveness can still be registered if they have acquired significant recognition through extensive use and advertising.

China

  • Strict Examination Standards: The China National Intellectual Property Administration (CNIPA) has stringent standards for two-letter trademarks, often rejecting marks that are merely descriptive, lack inherent distinctiveness, or are perceived as generic.
  • Strong Evidence of Secondary Meaning: Acquiring secondary meaning is particularly challenging in China. Extensive evidence is required, and well-known international brands often have an advantage due to their existing recognition.

Comparative Insights

  • Consistency in Distinctiveness Requirements: Across jurisdictions, distinctiveness remains a core criterion, whether inherent or acquired. Most Trademark Offices& Registries prefer marks that clearly differentiate products without needing contextual association.
  • More Challenging for New or Small Businesses: Globally, two-letter marks are easier to register for established brands with a history of use and recognition. For smaller or new businesses, the burden of proving acquired distinctiveness is much higher.
  • Consumer Recognition and Evidence of Use: Countries like India, the U.S., and Japan allow for evidence-based arguments of acquired distinctiveness, but standards for such proof are strict, and requirements are high.