Thailand has always been a difficult jurisdiction for trademark protection. A key reason has been the unique practice of determining conflicting marks not only on the basis of phonetic and visual similarities, but on account of their transliteration in the Thai language as well. For example, KIRIN and KIRAINE. Moreover, even though the Nice Classification of Products and Services is followed officially, in practice, descriptions accepted in other jurisdictions have been known to face possible rejection or directions to amend in Thailand. All this has lent a great deal of uncertainty to conducting business, at times adversely impacting launch of new products and initiation of new ventures.
In its efforts to keep pace with the latest developments in IP rights protection, the Thai Government has initiated concrete steps to do away with uncertainty in the entire trademark registration process and instil confidence amongst the international business community at large.
Going by some of the recent court judgments, the efforts seem to be progressing in the right direction. While examining conflicting trademarks, the courts have started assessing the extent to which similarity to prior marks would cause confusion amongst the target audience. And in determining the quantum of possible confusion, the entire marketing mix (including product specifications, pricing, distribution channels and composition of the targeted consumer base) is being looked into.
A case in point is the Dika (Supreme) Court Decision No. 3686/2551 (2008), where the Court reversed the Trademark Board’s decision of rejecting a junior mark on alleged grounds of misleading the public. The Applicant’s mark (hereafter called KIRIN) had been rejected on the ground that it was confusing or deceptively similar to a prior mark (hereafter called KIRAINE) since the transliteration of KIRAINE in Thai (read as KI-RAINE) is similar to KIRIN. Rejecting this argument, the Dika court held that there would be no confusion amongst the consumers as KIRAINE was registered in Thai while KIRIN was intended to be registered and used in English. Furthermore, the Dika Court reviewed the specifications in detail and noted that even though both marks were in the same class (for medicines), they were not deceptively similar as KIRAINE was registered for traditional medicine, while KIRIN had been applied for prescribed medicine. Confusion was not possible since the channels of trade were different. Traditional medicine can be purchased from a convenience store, but prescribed medicine can only be purchased from a registered pharmacist or doctor. It can, therefore, be reasonably assumed that there is no chance of any confusion.
In another case, the Dika Court did not find TEQUIN and TRIQUIN (both in class 5 for anti-bacteria drugs) to be confusingly similar. The Court observed that while TEQUIN is intended for human use, TRIQUIN is registered for veterinary use, thereby resulting in different channels of distribution. In addition, since both medicines were prescribed drugs, the target audience comprised medical practitioners and that ruled out possibility of confusion. On similar grounds, the Dika Court ruled that ZYSTAR, an anti-balding drug for humans, was not confusingly similar to ZYZAR, registered as an antibiotic drug for animals.
A spate of such decisions has reaffirmed the marked shift in the Thai trademark examination practice and the pivotal role being played by the Dika Court. Appearance or transliteration of the marks is no longer the sole criteria for ascertaining confusion. Multiple business factors, widely used in other international jurisdictions, are being increasingly put to test to assess the level and extent of confusion, thereby reducing the degree of uncertainty in getting a trademark registered. Notwithstanding, where there is a danger of a mark riding on the goodwill of another mark, even in another class or for different goods, the same is not being allowed in Thailand. This is very much in line with the international trademark examination process.