As the Covid-19 situation in Vietnam has not improved since the beginning of August 2021, the Intellectual Property Office of Vietnam (IP Office) has issued Notice No. 8181/TB-SHTT dated September 9, 2021 (Notice 8181), providing a further two-month extension for IP deadlines. The contents of Notice 8181 are similar to those found in notices issued in March 2020 and August 2021. One notable difference is the addition of the term “such as” (“như” in Vietnamese) to the list of IP procedures eligible for the extension, implying that this is now an open list: All procedures related to the establishment of industrial property rights (such as priority claims, supplementation of documents, responses to the IP Office’s decisions/notifications, annuities, renewal of the validity of protection titles, payment of fees and charges, and filing of appeal petitions) falling due during the period from June 30, 2021, to the end of October 31, 2021, will automatically be extended to the end of November 30, 2021. For other cases, if an applicant is still affected by the Covid-19 epidemic with regard to the implementation of its rights and obligations in the procedures for establishing rights to industrial property objects at the IP Office, such applicant may request [the IP Office] to apply the clauses on objective obstacles and force majeure as set out in Points 9.4 and 9.5 of Circular No. 01/2007/TT-BKHCN, as amended and supplemented by Circular No. 16/2016/TT-BKHCN. It is our interpretation from Notice 8181 that procedures related to the establishment of industrial property rights that are not specifically listed in the notice, such as IP filings and substantive examination requests, will also benefit from the new extension. However, there has not been any official explanation from the IP Office.
Background In Thailand, bad-faith domain name registrations can present a unique challenge to brand owners. According to the current domain registration policy, Thai domain names can be based on the registered name of a company or organization, or on a registered trademark, depending on the domain name category. When Thailand’s domain name registrar, the Thai Network Information Centre Foundation (THNIC), considers applications for new domain names, it examines only whether the applicant meets these criteria – and not whether the application has been led in bad faith, such as when a registered company uses someone else’s registered trademark without authorization. Domain name registration in Thailand is a first-to-file system, so if all criteria are met, THNIC must allow registration. There are no opposition or cancellation proceedings, making it impossible for an interested person, as well as THNIC itself, to invalidate a Thai-registered domain name. Disputes between two legitimate owners Disputes sometimes arise between trademark owners and Thai-registered companies, such as third-party companies, local distributors, or even authorized trademark licensees who exploit the policy gap identified above. For instance, in a recent case a brand owner found that its Thailand distributor had been able to register a company name containing its registered trademark, and subsequently register such name as a domain name, without the trademark owner’s consent. Fortunately, the two parties had a strong existing business relationship as supplier and distributor; through amicable negotiation, the local distributor agreed to withdraw the disputed domain name. However, if both parties had insisted on their legitimate rights over the disputed name, the case would have had to proceed to court, as THNIC does not get involved in such disputes and offers no dispute resolution mechanisms. Navigating the options Trademark owners facing such a dispute have two options: initiating proceedings with the Intellectual Property and International Trade Court (IP & IT Court) or negotiating with the domain name holder. The pros and cons of each solution are identified below: Of course, the best course of action for brand owners is to take proactive steps that minimize the risk of falling victim to a bad-faith domain name registration in Thailand. One way to do this is by reviewing trademark portfolios, selecting highly important registered trademarks, and registering and maintaining those as domain names to prevent unauthorized parties from registering the names. Another way to guard against bad-faith actions is simply by staying vigilant. Many companies have their trademarks actively monitored to detect unauthorized activity. Expanding this to also cover domain names can alert the brand owner to potential problems before they become serious threats. Comment Regulatory laws and gaps can be very frustrating—and damaging—to businesses, but knowing the law and understanding its potential pitfalls can help companies deal strategically with the challenges.
For Myanmar, the extension of the TRIPS transition period for least developed countries has broad implications, as implementation of four substantive IP laws (enacted in 2019) is still pending and the country thus still remains out of compliance with most TRIPS requirements.
The title of a video game is likely one of the most valuable assets that a game developer holds. Registering a game title as a trademark secures exclusive rights over that title and prevents third parties from using it for games or related goods or services of their own. However, whether a game title is descriptive of the computer game is an issue that has come up repeatedly in Thailand with applications to register video game titles as trademarks. According to current practice, the trademark registrar and the Board of Trademarks at Thailand’s Department of Intellectual Property (DIP) do consider a game title to be descriptive of a computer game, regardless of whether the title is related to the actual features or characteristics of the game. In a recent case, a mobile game developer decided to mount a challenge to one such rejection of a video game title trademark application. The developer, which has brought many popular mobile games to the global market, had submitted a trademark application for the title of their mobile game “Clash Royale” in classes of computer game software (Class 9) and electronic games (Class 28). This application was rejected by the registrar and the Board of Trademarks for non-distinctiveness. The registrar and the board decided that the words “Clash Royale” can be interpreted to mean “battle of the kings.” In connection with goods in the applied-for classes, these words describe the nature of the goods as “games related to battles of the kings” and therefore are not registrable because they do not exhibit the distinctiveness required by Thailand’s Trademark Act. The game developer enlisted Tilleke & Gibbins to appeal the board’s decision to the Intellectual Property and International Trade Court (IP&IT Court), arguing that the mark “Clash Royale” is inherently distinctive and not directly descriptive of the underlying products. In considering the distinctiveness of the game title, the IP&IT Court in this case took a different view than the registrar and the Board of Trademarks. The court ruled that the mark is distinctive for registration, and held that “Clash Royale” is simply a suggestive mark rather than an actual descriptor of the game. Consumers would not immediately understand the association between the mark “Clash Royale” and the computer game without using further imagination. The IP&IT Court’s decision in this case laid down solid reasoning regarding the differences between suggestive and descriptive marks when used as game titles—even providing examples of titles that actually describe the appearance and features of a game (e.g., action game, role-playing game or RPG, adventure game, simulation game, etc.). The IP&IT Court’s decision is not yet finalized, as the DIP may still opt to file an appeal. However, this decision is a promising development, and depending on the final outcome of this case may even signal a possible change in the criteria for considering the registration of a game title as a trademark in Thailand. This article first appeared in Managing Intellectual Property.