In the recent Thai case of Visit Taksapiboon v Modern Technique Lock Co., Ltd (Case No. 57/2007), the Central Intellectual Property and International Trade Court (CIPITC) considered a claim of patent infringement and a counter-claim against the Plaintiff for invalidation of the patent as well as a challenge against the Plaintiff’s rights to use an associated trade name.

The Plaintiff in this case is the owner of Patent No. 10218 (hereinafter referred to as the ‘218 patent) filed in Thailand on 15th June 2001 under the application No. 0103000295. The ‘218 patent is entitled “Automotive brake/clutch lock” and the same discloses an automobile anti-theft device, in particular a lock clutch and brake device. On 1st June 2001, the Plaintiff assigned to the Defendant the rights to produce and distribute the automobile anti-theft device as claimed in the ‘218 patent using trade name “LOCKTECH” for a period of two years, up to 1st June 2003.

Initially the Defendant distributed the Plaintiff’s automobile anti-theft device using the trade name “LOCKTECH”. However, thereafter the Defendant returned products belonging to the Plaintiff and proceeded to produce its own lock clutch and brake devices and distribute them using the same trade name i.e. “LOCKTECH”.

The Plaintiff claimed that the lock clutch and brake devices produced and distributed by the Defendant using the trade name “LOCKTECH” was an adaptation of the Plaintiff’s lock clutch and brake device as claimed in the ‘218 patent and therefore the Defendant’s “LOCKTECH” device had in fact infringed the ‘218 patent. Additionally the Plaintiff claimed for damages against the Defendant.

In their counterclaim, the Defendant argued that the Plaintiff’s ‘218 patent was unlawfully granted and proceeded to seek the invalidation of the same. The basis of the invalidation was that the ‘218 patent lacked novelty and inventive step. Furthermore, the Defendant also contended that their product being the lock clutch and brake devices that were produced and distributed under the trade name “LOCKTECH” were different from the Plaintiff’s lock clutch and brake device.

In addition, the Defendant further asserted that the trade name “LOCKTECH” was used and advertised by them and had since become a well-known mark and that they had the goodwill in the same. Additionally, the Defendant asserted that the Plaintiff’s did not have any registered rights over the trade name “LOCKTECH”. The Defendant also requested for damages to be paid by the Plaintiff for obstruction in trade in bad faith.

The Court dismissed the Plaintiff’s claim and the Defendant’s counterclaim, and both parties were ordered to pay the court fees for the counter claim.

Infringement of Plaintiff’s patent

As regards to the Plaintiff’s claim that the Defendant’s “LOCKTECH” device infringed the ‘218 patent, the Court held that the Defendant’s “LOCKTECH” device was different from that of the Plaintiff’s lock clutch and brake device as claimed in the ‘218 patent. The differences were found in the elements as well as the operation mechanism of both the devices. The Defendant’s “LOCKTECH” device comprised of elements of a double tube system having a single locking mechanism whereas the Plaintiff’s ‘218 patent discloses elements of a single tube system having dual locking mechanism.

Invalidation of Plaintiff’s patent

The court ruled that the Plaintiff’s ‘218 patent was valid although the Defendant argued that the same lacked novelty and inventiveness with respect to prior arts European Patent No. 0603960 and United States Patent Nos. 1494219, 2330536, 2336829 and 4615192. The Plaintiff’s lock clutch and brake device as claimed in the ‘218 patent was a locking device made of stainless steel and is designed to be installed onto a steering column of a vehicle. The inventiveness of this invention lied in the fast that the locking device may be adapted for use with different vehicles, without requiring any alteration to the vehicle such as welding or drilling. The locking device provides a dual locking mechanism, a first locking mechanism movable to engage a locking bracket with the brake and clutch pedals and a second locking mechanism to further secure the first locking mechanism. The locking device comprises a pedal bracket, a T-handle for the first locking mechanism, a security ring for the second locking mechanism and an unlocking key member. Displacing the T-handle automatically engages the locking device and the locking device is released using the unlocking key member. The unlocking mechanism is well hidden rendering it less probable to forced unlocking. These features were the grounds used by the court to rule that the prior art presented by the Defendant did not anticipate the subject matter claimed in the ‘218 patent. Hence, the court ruled that the ‘218 patent was valid under section 5 and section 54 of the Thai Patents Act B.E. 2522(1979).

Trade name

With regards to the trade name “LOCKTECH”, the court ruled that the Plaintiff did not have any registered rights over the same. Although the Plaintiff testified that the ownership of the mark belonged to them, there was no other evidence provided to the court to substantiate this claim. The Defendant however, succeeded in providing witness testimony and other related evidence that showed that the trade name “LOCKTECH” had been used to advertise and distribute lock clutch and brake devices as claimed in the ‘218 patent and its own lock clutch and brake devices produced and distributed by the Defendant. Considering the evidence made available, the Court decided that the Defendant was entitled to continue the use of the trade name “LOCKTECH”.

It is therefore imperative for potential patent owners having an intention to license out their patent rights to third party, to obtain relevant registered rights over the trade names or trademarks in Thailand before the licensing takes place. This would ensure protection of the trade names or trademarks should the licensee then decide to produce their own competing product that may be found not infringe the patent. Patent protection and registration in itself may not be sufficient if the licensee builds the brand recognition and ends up having the goodwill in the trade name and trademark.