Short Answer
Not necessarily.
A composite trademark is assessed as a whole. Changing the mascot, badge, colours or graphic treatment may reduce similarity, but it does not automatically solve a conflict if the dominant wording, pronunciation, concept or overall commercial impression remains close to an earlier mark.
Sharing a descriptive or non-distinctive word also does not automatically make two composite marks confusingly similar.
For a Thai filing, separate three questions:
distinctiveness → similarity to earlier rights → overall impression of the complete mark
A disclaimer under section 17 of the Trademark Act limits the applicant’s exclusive claim over a non-distinctive or commonly used element. It does not mean that the disclaimed element disappears when the overall mark is compared with an earlier mark.
Why This Matters
Brand teams often respond to a clearance problem by changing the artwork:
“The words are similar, but our logo looks different now.”
That may help, but it is not the legal test. A word may remain what customers remember and pronounce, while a descriptive word may carry less distinguishing weight.
Redesign decisions should respond to the reason for the conflict, not merely make the picture look different.
Typical Scenario
A restaurant business wants to register a word-and-device mark.
An earlier application or registration contains similar wording and a broadly similar visual theme. The new applicant changes the character, badge and layout but keeps the main word.
Management asks:
“Is the new logo different enough now?”
The answer requires a fresh comparison of the complete marks and the relevant goods or services.
Practical Analysis
01Start with registrability, not artwork alone.
Section 6 of the Trademark Act requires a registrable mark to be distinctive, not prohibited and not identical or confusingly similar to an earlier registered mark.
Section 7 addresses distinctiveness. Descriptive wording may carry less distinguishing weight.
02Compare the marks as a whole.
Section 13 prevents registration where an applied-for mark is identical to an earlier registered mark, or sufficiently similar to create public confusion or mistake for relevant goods.
DIP examination guidance considers overall appearance, important features, pronunciation, goods and the relevant public. Changing one graphic element may therefore be insufficient.
03Do not treat a disclaimer as deletion.
Section 17 allows the Registrar to require a disclaimer of exclusive rights in elements that are commonly used in trade or lack distinctiveness.
But the Thai Supreme Court has confirmed that a disclaimed element may still form part of the overall comparison.
In Supreme Court Judgment No. 8156/2560, the Court emphasised the overall impression of the marks and rejected the idea that a disclaimed part should simply be ignored when assessing similarity.
04Identify the dominant commercial impression.
Ask what customers are likely to remember or say.
A stylised device may be visually prominent while a short invented word dominates pronunciation. There is no reliable “logo changed = conflict solved” rule.
05Compare the goods and services as well as the marks.
Similarity is not assessed in a vacuum.
The same word combination may create different risk depending on the goods or services, sales channels and relevant public. Class numbers are useful administration tools, but the substantive comparison is not simply “same class or different class.”
06Re-run the search after redesign.
A redesigned mark is a new clearance object.
Search the final word element, pronunciation variants and relevant visual elements. Do not assume the first search remains sufficient after the creative team changes the mark.
What We Usually Look At
We review the proposed word and device separately and together, earlier pending and registered marks, pronunciation, meaning, dominant elements, disclaimers, goods and services, customer group, sales channels, actual proposed use and alternative logo directions.
Common Traps
Typical mistakes are assuming a disclaimer removes a word from similarity analysis, changing colours without reassessing the dominant word, comparing only exact spelling, relying only on class numbers and filing a redesigned mark without conducting a fresh search.
Practical Next Step
Prepare a one-page comparison:
new mark → earlier mark → shared wording → pronunciation → visual elements → distinctive elements → goods/services → likely confusion → redesign options
Then decide whether the better response is to change the word, change the device, narrow the goods/services, obtain further evidence, or choose a different mark.
Legal Sources
- Trademark Act B.E. 2534 (1991), as amended, sections 6, 7, 13 and 17.
- Department of Intellectual Property, Trademark Examination Manual, including the guidance on comparing marks as a whole.
- Supreme Court Judgment No. 8156/2560, on overall trademark similarity and the treatment of disclaimed elements in that comparison.
- Department of Intellectual Property public trademark search database and current application records.
General legal information only. Please seek advice on your specific facts. Laws and regulatory practice may change.