Series of 5 Short Recent Cases in Thailand

Coca-Cola v The Intellectual Property Department

The Supreme Court issued a historic decision when it found in favour of the trademark registration of Coca-Cola’s 2-dimentional bottle picture in black and white for use with non-alcoholic beverages.

The mark was considered inherently distinctive enough to acquire registration under Section 7 of Thai Trademark Act. Proof of use was not necessary to establish distinctiveness.

IGSI Group v Almin Enterprise

A rare case where the plaintiff owned a registered Thai patent for a poultry feeder and the defendant were planning to display an infringing product at the Bangkok Poultry Show.

Prior to filing a civil suit against the defendant, a request for preliminary injunction was submitted to the Thai Intellectual Property and International Trade (IP & IT) Court. The Court granted the plaintiff a preventive injunction and Anton Piller order.

The infringing poultry feeding pans were seized at the show and the plaintiff went on to file a civil suit. The Court ruled in favour of the plaintiff on the grounds that the defendant’s products infringed the plaintiff’s Thai patent. It ordered the defendant to cease manufacturing and importing any infringing products. It also ordered them to pay damages, court and legal fees to the plaintiff.

The Scotch Whisky Association Case

The Scotch Whiskey Association was successful in its bid to sue a Thai individual who tried to register the mark “McCarter” and certain symbols of obvious Scottish origins in relation to whiskey imported from China. The Thai Intellectual Property and International Trade (IP & IT) Court has clearly found the use of the prefix ‘Mc’ and symbols such as tartan design would mislead the public into believing that a Chinese-made whisky came from Scotland.

Madame Figaro has her day in Thailand

Societe du Figaro (SDF), proprietors of the French fashion magazine “Madame Figaro” won a suit against the Department of Intellectual Property against the refusal to register their trade mark in Thailand.

The application was originally accepted for registration at the Thai Trademark Registry with a disclaimer limitation imposed on the word “MADAME” on the grounds that the word lacked distinctiveness, being a common word.

Unsatisfied, SDF filed an appeal to the Trademark Board, submitting evidence of SDF’s worldwide registrations and use of the mark. The Trademark Board took a narrow view and decided that the mark was not sufficiently distinctive and the evidence submitted was insufficient to show acquired distinctiveness. The mark was therefore disallowed registration.

At the Supreme Court, it was decided that even though the word “MADAME” is a common word, it was neither descriptive of the goods nor common to the trade for such goods. Therefore, there was no necessity to consider the issue of use or reputation of the mark. The Thai Trademark office was consequently ordered to proceed with the registration of the mark.

Licensing under Thai Trademark Law

The Thai Trademark Act 1991 mandate that license agreements have to be registered with the Department of Intellectual Property. Failure to do so would result in the invalidity of the licensing agreement.

In a recent appeal decision [No. 5219/2550 (2007)] involving the license agreement of a spa business, the Supreme Court adopted a different approach. The Plaintiff filed a complaint and subsequently a suit, against the Defendant for trademark infringement although the Plaintiff was well aware that the Defendant was a licensee of the first owner of the marks and the arrangement continued after the second owner took over, the Plaintiff being the third owner. The Plaintiff relied on the argument that the license agreement was invalid due to failure to register the license as provided in the Trademark Act. The case was dismissed by the Intellectual Property and International Trade Court and the Plaintiff appealed.

On appeal, the Supreme Court held that there was no infringement and dismissed the Plaintiff’s case. The Supreme Court deliberated extensively on whether infringement had occurred. The Supreme Court held that although the agreement was void due to the failure of recordal of the license, given the pre existing license arrangements, the Defendant had no reason to believe that he was not permitted to continue the use of the marks, taking into consideration the intention of the parties to the agreement.

The Supreme Court did not explicitly rule that intention of the parties would overrule the registration requirement, but in light of this decision, arguments on non-validity due to non-registration of license may be challenged.

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