The situation concerning the protection and enforcement of well-known marks in Thailand can be rather good despite there being no mandatory provisions that clearly spell out the constitution of a well-known mark. The Courts and Examiners use the prevailing case law as precedents or the Ministerial Notifications as a guideline in deciding what amounts to a well-known mark.
Section 8(11) of the Thai Trade Marks Act merely provides that the Registrar shall reject a trade mark whether registered or not, which is identical or similar to a well-known mark as prescribed by Ministerial Notification as the public might be confused as to the proprietorship of the goods.
The Act does not define well-known marks but merely makes reference to Ministerial Notifications as a guideline in deciding what amounts to well known marks.
Nonetheless this has not deterred the Courts in deciding favorably for the owners of well-known marks. In fact the current case law seems to suggest that the Thai Judiciary is quite willing to recognize well-known marks.
The following cases are illustrative of the Courts reliance on the principles available within the realm of Trade Marks Law in deciding favorably for well-known mark owners.
Kipling Belgium N.V v Sermchai W., or also known as The Kipling Case was one such case in which the Courts decided in favor of Kipling AG who owns the famed brand KIPLING & THE MONKEY DEVICE.
Kipling AG (a Swiss Company) specialized in accessories especially bags, luggage and clothing in Europe and worldwide. Kipling AG was the owner of the popular KIPLING brand with the MONKEY DEVICE. Kipling AG had not registered its mark in Thailand but had been exporting its bags and accessories into Thailand since 1997 and distributed the same through its local distributor in Thailand.
During this transaction Kipling AG came to know that a Thai citizen had registered an identical mark to its KIPLING & THE MONKEY DEVICE mark in the early 90’s for identical goods being bags and accessories within Class 25.
Though Kipling AG owned no registrations in Thailand it had registered its mark in many other countries. In fact Kipling AG’s first registration was in Belgium in 1987 in a number of classes including Classes 18 and 25.
Upon discovering the registration by the Thai citizen, Kipling AG filed a criminal complaint against the Thai citizen and all the goods bearing the infringing mark were finally seized in October 2000.
The Court decided based on the statutory provisions of passing off that the KIPLING & THE MONKEY DEVICE was a well-known mark and that the Defendant (the Thailand citizen) had used the brand in bad faith, with an intention to mislead the public into believing that the goods belonged to Kipling AG.
The Court further affirmed that the degree of confusion is high in this case, as Kipling AG has also been distributing its goods under the brand KIPLING & THE MONKEY DEVICE in Thailand since 1997.
The judiciary took a similar stand in the case of Universal City Studio v Universal Pictures (Thailand) Co Ltd.
Universal City Studio (a Californian Company) had no trademark registration in Thailand for the mark UNIVERSAL PICTURES. Nevertheless, it possessed worldwide registration and recognition for the trade mark UNIVERSAL PICTURES. In Thailand Universal City Studio owned the registered mark UNIVERSAL as a trademark in a number of classes since 1947. Universal City Studio is reputed locally in Thailand in the entertainment services and provides goods and services relating to film and television materials.
When Universal Pictures (Thailand) Co Ltd filed an application to register the mark UPT UNIVERSAL PICTURES (THAILAND) CO LTD for super video CDs. Universal City Studio filed an opposition against the registration of the said mark on grounds that it was confusingly similar to its UNIVERSAL PICTURES trademark and would amount to infringement of its rights in the UNIVERSAL PICTURES mark.
The Court held that Universal Pictures (Thailand) had used the mark in bad faith and with the intention of confusing the public into thinking that the mark belonged to Universal City Studio.
The Court’s decision was based on the fact that Universal City Studio Inc owned worldwide registration and reputation in the mark UNIVERSAL and UNIVERSAL PICTURES. The subject mark had been used by Universal City Studio extensively and even before Universal Thailand existed in Thailand.
Finally, in Valentino Globe BV v JMS Corporation court ruled that the VALENTINO COUTURE mark is a well known-mark also based on its worldwide recognition and registration.
JMS Corporation filed two applications to register the word and design mark VALENTINO COUPEAU for bags and clothing’s in Classes 18 and 25 respectively. Valentino Globe BV filed an opposition against the registration of the said marks based on the grounds that it is identical to its registered mark VALENTINO COUTURE.
The Supreme Court decided that JMS Corporation’s mark is a reproduction of Valentino’s mark and was intended to ride on its reputation. Upon analyzing the characteristics and lay out of the two marks the Court made the following findings:
both marks are on three lines;
the device element is on the first line in both marks;
the word VALENTINO is on the second line in both marks; and
the words on the last line of each mark are of similar appearance and sound
The Court concluded that the registration of VALENTINO COUPEAU would cause confusion amongst the public and accordingly denied the said registration.
Upon examining the three cases above, it appears that the Thai Judiciary can be said to be willing to recognize well-known marks whether or not the marks are registered in Thailand so long as the owner of the well-known mark can establish its world-wide reputation and recognition in the mark and that the infringer has been using the infringing mark in bad faith with an intention to benefit from its goodwill.
These decisions are also advantageous to foreign well-known mark or brand owners who intend to invest in Thailand, as they can be rest assured that their enforcement rights in the well-known mark would be firmly protected by the Thai Courts.