You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

April 11, 2013

Ferrari’s Prancing Horse Device Registered Under Concurrent Use

Subscribe to Updates
World Trademark Review

This article first appeared on WTR Daily, part of World Trademark Review, in February 2013. For further information, please go to www.worldtrademarkreview.com.

Registration of a trademark worldwide is often fraught with difficulty, especially when the mark is confusingly similar, or identical, to an earlier local registration. However, Section 27 of the Thai Trademark Act provides for “concurrent use” registrations if the Registrar deems that the trademarks have been used honestly and concurrently by their owners, or if there are other special circumstances.

Section 27(1) provides as follows:

“When there is an application for registration of a trademark that is identical, or similar, to a trademark already registered by a different owner in accordance with Section 13, or when there are applications for registration of trademarks that are identical or similar to each other under Section 20 in respect of goods of the same or different classes but, in the Registrar’s opinion, of the same character, and the Registrar deems that the trademarks have been honestly and concurrently used by their proprietors, or there are other special circumstances which are deemed proper by the Registrar to allow registration, the Registrar may permit the registration of the same trademark, or of almost identical marks, by more than one proprietor, subject to conditions and limitations as to the method and place of use or other conditions and limitations as the Registrar may deem proper to impose. The Registrar shall, without delay, notify in writing the applicants or the trademark proprietors of his decision and reasons therefor.”

A recent case between Ferrari SpA (plaintiff) and the Department of Intellectual Property (defendant) is a good example of “concurrent use” registration in Thailand (Supreme Court, Case 5156/2556). The dispute arose when the plaintiff applied for the registration of its well-known Prancing Horse device mark for goods in Class 25 of the Nice Classification (Application 489282).

The Registrar rejected the application on the grounds that it was confusingly similar to the mark MOCCASIN (and Prancing Horse device) which was registered in 1987 for goods in Class 25 by a Thai individual named Itti Kijpanich.

The plaintiff filed an appeal with the Board of Trademarks, which upheld the Registrar’s decision, holding that the marks were confusingly similar both in appearance and pronunciation.

The plaintiff filed a complaint with the Central Intellectual Property and International Trade (IP&IT) Court, claiming that the marks were different. The plaintiff also added that its mark has been widely used for a long period of time and is well known, and that it had applied for registration of the mark in good faith. During the hearing, the plaintiff submitted additional evidence proving that its mark was invented and was first used with its goods in 1929. The plaintiff also submitted documents showing use and registration of its Prancing Horse device mark in several countries.

The IP&IT Court believed that the plaintiff had filed for registration of its mark in good faith and accepted the registration of its mark. However, the court ordered that the plaintiff add the word “Ferrari” in Roman characters or other distinguishing elements to the mark, in order to differentiate it from the mark owned by Kijpanich.

The plaintiff disagreed with the decision of the IP&IT Court and appealed to the Supreme Court, arguing that the mark should be accepted for registration without any conditions. After reviewing the case and the plaintiff’s appeal, the Supreme Court first found that, although the plaintiff’s Prancing Horse device is similar to the trademark MOCCASIN (and Prancing Horse device), which had been registered in the same class since 1987, the plaintiff had provided the court with sufficient evidence and documents to prove that it was the inventor and owner of the Prancing Horse device. The Supreme Court concluded that the marks had been used honestly and concurrently by both parties under Section 27 of the Trademark Act. Hence, the plaintiff’s application was a registrable trademark.

The Supreme Court also considered the plaintiff’s appeal against the IP&IT Court’s order to add the word “Ferrari” in Roman characters or other distinguishing elements in order to differentiate the two marks. As the Supreme Court had determined that the plaintiff was the owner of the Prancing Horse device, it found that it was not necessary to add any limitations on the use and registration of its mark. The Supreme Court thus overturned the order of the IP&IT Court in this respect.

Based on the Supreme Court judgment, Ferrari’s application for goods in Class 25 was accepted for registration without any conditions. The decision is another example of how the Thai courts determine the degree of honest and concurrent use of similar marks, as well as the special circumstances under which registration might be allowed under Section 27 of the act.

Download Full Article
Related Professionals

Practices

Dispute Resolution and Litigation

Intellectual Property

Location

RELATED INSIGHTS​ 

August 6, 2026
Every month, VAT-registered businesses in Thailand calculate their output and input VAT and file a return to pay the net amount due or claim a refund. Yet a common and costly dispute arises when a business that has paid input VAT to its supplier—and done everything asked of it—later finds that input VAT rejected on the grounds that the tax invoice was issued by “a person not entitled to issue tax invoices.” In these cases, a buyer may have confirmed the supplier’s VAT registration on the Revenue Department’s website, paid through the banking system, received a complete tax invoice, and kept full payment and inventory records. Even so, if the Revenue Department later determines that the supplier did not genuinely make the sale or collected the VAT without remitting it, the department can disallow the input VAT and assess additional tax, surcharge, and penalty—often more than a year after the transaction. A new article from tax and dispute resolution specialists at Tilleke & Gibbins in Bangkok examines how the Revenue Department and the courts approach these disputes, including two recent Supreme Court (Tax Division) decisions confirming that the taxpayer bears the burden of proving a supplier genuinely sold and delivered the goods and received payment. It considers why the VAT registration system offers no legal safe harbor, why the evidentiary burden falls hardest on online and cross-border transactions where buyers and sellers never meet, and how the Revenue Department’s own digital infrastructure could detect non-remitting suppliers at the source rather than shifting the loss to good-faith buyers. The article also sets out practical guidance: how to build a comprehensive “know-your-supplier” file at the time of a transaction, the procedural steps and strict deadlines for challenging a VAT assessment, and why dispute readiness belongs alongside tax planning at the center
Read More
August 4, 2026
Intellectual property (IP) protection sometimes hinges on fame and recognition. However, this alone will not always be sufficient to overcome an IP dispute when it involves contractual obligations or registered rights. Below are five cases from around the world that tackle some of the basic issues in IP registration, ownership, commercialization, and enforcement. 1. USA: Taylor Swift Trademark Application Refused Taylor Swift recently filed a trademark application to register “The Life of a Showgirl,” which is the title of her 12th studio album. When examining a trademark application, the examiner considers various factors before deciding whether it should be registered. One of these factors is whether there is a likelihood of confusion (i.e., would a regular consumer mistake the origin of the trademark). In Taylor Swift’s case, the US Patent and Trademark Office (USPTO) decided that that there would be a risk of confusion. This decision was based on the existing registered trademark, “Confessions of a Showgirl,” owned by Maren Wade, which was registered in 2015. The USPTO refused Taylor Swift’s application based on the shared key distinctive element “of a showgirl,” the lack of sufficient distinguishing terms, the marks being used in overlapping markets (entertainment and performances), and because consumers may assume a common commercial source. Maren Wade then filed a lawsuit in California against Taylor Swift and her affiliated companies, arguing that Taylor Swfit’s branding is confusingly similar in structure, wording, and overall commercial impression to her registered mark. She is also drawing on the USPTO’s refusal of Taylor Swift’s application to support her argument of a likelihood of confusion. A judgment has not yet been reached in this case, but it serves as an important reminder of the importance of satisfying the essential elements required for IP registration. 2. Australia: Katy Perry v. Katie Perry In
Read More
July 27, 2026
Vietnam’s new E-Commerce Law, which took effect on 1 July 2026 along with its implementing Decree No. 248/2026/ND-CP (Decree 248), marks a significant development in the country’s approach to online intellectual property (IP) enforcement, reflecting a clear shift from a reactive model of intermediary liability to one that expects platforms to play a more active role in preventing infringement. From notice-and-takedown to platform responsibility The most significant change introduced by the E-Commerce Law is the transformation of the legal role of e-commerce platforms. The existing safe harbor provisions under the IP Law and the copyright notice-and-takedown regime established by Decree 17/2023/ND-CP (Decree 17) largely required intermediaries to act only after receiving notice of infringement. Once infringing content had been removed, the platform’s legal obligation was generally considered fulfilled. The new legislation adopts a fundamentally different approach. Article 17 of the E-Commerce Law requires intermediary platforms to screen information relating to goods and services before publication in order to prevent listings involving counterfeit or IP-infringing goods, and goods of unknown origin. Rather than relying exclusively on complaints from rights holders, platforms are now expected to implement preventive measures before infringing listings become publicly available. Decree 248 further requires platforms to update keyword filters based on recommendations issued by competent authorities. These filtering mechanisms are intended to prevent prohibited listings from appearing on the platform and represent a further move away from a purely complaint-driven enforcement model. The legislation also introduces Vietnam’s first statutory stay-down obligation. Under the E-Commerce Law and Decree 248, major digital platforms must maintain automated systems capable of reviewing, warning against, and removing unlawful listings while also implementing measures to prevent repeat violations, defined under Decree 248 as conduct that has previously been identified and handled by the platform, but continues to recur. This obligation addresses one
Read More
July 27, 2026
Tilleke & Gibbins’ intellectual property specialists have authored the Thailand chapter of Trade Secrets 2026 from Chambers and Partners. This global guide examines the legal frameworks governing trade secret protection, enforcement, and litigation across jurisdictions worldwide. The Thailand chapter provides a comprehensive overview of the country’s legal regime for protecting confidential business information, covering the legal framework, trade secret misappropriation, litigation procedures, remedies, and dispute resolution. Some topics covered include: Protectable trade secrets Reasonable measures to maintain secrecy Employee confidentiality Trade secret licensing Civil and criminal remedies Litigation procedures and injunctions Damages and other remedies Mediation and arbitration The guide also examines practical issues relating to safeguarding trade secrets, defending against allegations of misappropriation, and managing trade secret disputes in Thailand. Chambers and Partners’ Global Practice Guides provide in-house counsel with authoritative commentary on practical legal issues affecting business, enabling readers to compare legislation and procedures across multiple jurisdictions. The Thailand chapter of Trade Secrets 2026 is available as a PDF through the button below. The full guide can be accessed for free on the Chambers and Partners website.
Read More