The Supreme Court of Thailand has dealt with the issue of novelty of a design patent in the case of Little Bell Co., Ltd v Pongsawad Tiananon (Case No. 2824/2007). In this case, the Plaintiff, a corporation known as Little Bell Co. Ltd took legal action and contested the validity of the Second Defendant’s product designs for various styles of silverware or gold ware such as trays, footed trays etc used in religious ceremonies.

The Plaintiff claimed that the Defendant’s product design under the Patent No. 15953 to 15960 were not patentable on the basis that the designs concerned lacked novelty as they resembled products that had been widely distributed and used in the market. In addition, the Plaintiff also contended that the Defendant had imitated the artistic and national culture of Thailand in their patents, which would mean that the patents were illegally granted to the Defendant.

The Defendant’s stand however was that they were the designers of the respective product designs under the patents in issue and that it was the Plaintiff that had infringed the patent by imitating the product design. Furthermore the Defendant had procedural objections to the Plaintiff’s revocation suit, as they contended that since the Plaintiff had not opposed the patent during its prosecution they should not be considered an interested party and so the revocation case should be dismissed. Furthermore the Defendant also contended that the Plaintiff had no locus standi as it had failed to give notice to the competent officer of opposition within the prescribed time.

The matter went before the Central Intellectual Property and International Trade Court (CIPITC) that ruled that the Defendant’s products lacked novelty and the patents in issue were to be revoked. CIPITC also ordered that the Defendant not to use products derived from the said patents and should the Defendant not comply with the order the judgment will be enforced against the Defendant. As to the issue of costs the Court ordered that each bear their own court fee.

The matter was appealed to the Supreme Court who proceeded to uphold the judgment of the CIPITC in respect of the revocation of the patent on the ground that their claims construction was correct. However the CIPTC’s order restraining the Defendant’s use of products derived from the patents was dismissed. With respect to costs the Supreme Court ordered the Defendant to pay the Plaintiff’s court fee.

The grounds of the Supreme Court’s decision was that an interested person could either oppose a patent based on Section 28 and 31[1] of the Patents Act B.E. 2522 (1969), or make an application to court to cancel a patent pursuant to Section 54 [2] of the said Patents Act. In this case as the Plaintiff was subjected to a raid and arrested as a result of a search warrant that was requested by the Defendant, which therefore made the Plaintiff an interested person who could therefore bring this cancellation action.

On the issue of whether there was infringement, the Supreme Court held that there was no dispute that the Plaintiff did imitate the Defendant’s products and the Supreme Court also considered the looked at the evidence as a whole and found that the Plaintiff’s products were similar to the Defendant’s.

On the issue of novelty, the Court considered the Plaintiff’s evidence wherein commercial/tax invoices were presented showing the manufacture of such products by the Plaintiff since 1989. Furthermore an employee of the Plaintiff testified that he had seen the products in the market for the past 20 years and that since 1999 he had worked for the Plaintiff, and confirmed that they were in fact manufacturing the said products. The Plaintiff had further support from a mould maker’s evidence, as he testified to the fact that the Plaintiff had hired him to build a mould of the said products in 1997. This is important bearing in mind that the Defendant’s patent applications were only made in 2002.

Furthermore, the Defendant named his products using ancient Thai names such as Ratanakosin Tray, Ratanakosin Footed Tray, Lao Footed Tray or Water Bowl with Footed Tray, which were similar to the names of the Plaintiff’s products.

As to the Defendant’s testimony, no documentary evidence was presented to support the same and the Supreme Court also did not accept the Patent Office Director’s testimony finding it suspicious. This was as the evidence presented by the Director was that the basis of the grant of the Plaintiff’s patent was on the basis that no such designs were previously granted in Thailand, USA, Japan or WIPO. The Supreme Court found that as the patents concerned were for designs relating to wares used for religious ceremonies for presentation of food or other offerings for monks which was part of the Buddhist culture in South East Asia, the applications in countries where people are not Buddhists will not be so relevant. Therefore the weight of the Plaintiff’s evidence was much stronger and the Supreme Court found that the Plaintiff’s evidence outweighs the Defendant’s in this case.

The Thai court had correctly in this case looked at the evidence and found there was a lack of novelty and invalidated the design patents. It was also a correct decision to overturn the CIPITC’s order prohibiting the Defendant from using the products as the Plaintiff has no patent and so no intellectual property right was being infringed. Finally this case also signals the importance of having documentary evidence to support the oral testimony in such litigation.

[1] Section 31 Where an application for a patent has been published under section 28, any person who thinks that he, not the applicant, is entitled to a patent, or that the applicant does not comply with the provisions sections 5, 9, 10, 11 or 14 may give notice to the competent officer of opposition to such application within ninety days following the publication under section 28.

[2] Sections 54 paragraph two: The invalidation of a patent may be challenged by any person. A petition to cancel an invalid patent may be submitted to the court by any interested person or the public prosecutor.