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June 22, 2015

Thai Supreme Court Considers Continued and Honest Concurrent Use of Trademarks

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World Trademark Review

When registering a trademark in Thailand, applicants often face obstacles both in proving trademark distinctiveness and in avoiding citations for similarity to preexisting marks. Although the Thai Trademark Act allows trademark owners to prove distinctiveness through continual and honest concurrent use, this approach rarely succeeds.

In February 2015, however, the Supreme Court announced a decision confirming that Jaspal Co., Ltd., a clothing company in Thailand, had successfully proved continual and honest use of its trademarks. In this article, we address the reasons behind the Supreme Court’s judgment.

Case Background

In 2005, Jaspal Co., Ltd. filed three trademark applications for marks containing the word “CHAPS” for clothing products in Class 25. The registrar and the Board of Trademarks concluded that the word “CHAPS” means “coats made of leather” and “leather pants for cowboys,” which directly describes the quality and/or appearance of clothing products in Class 25. Thus, the trademarks were deemed to lack distinctiveness. In addition, these trademarks were deemed by the registrar to be confusingly similar to a prior-registered trademark in Class 25.

Due to the lack of distinctiveness and the similarity to an earlier registration, the registrar and the Board rejected Jaspal’s trademark applications. Although the applicant had submitted evidence of use of these trademarks in Thailand, the evidence was insufficient to prove distinctiveness through use.

The Intellectual Property and International Trade Court’s Judgment

The case was brought to the Intellectual Property and International Trade Court (IP&IT Court) in 2009. Jaspal argued that these trademarks:

  • did not directly describe the qualities and appearances of clothing products in Class 25;
  • were not confusingly similar to the prior-registered trademark; and
  • had already acquired distinctiveness though use and have been honestly used.

The arguments were supported by evidence of use and the registrations of these trademarks in Thailand since 1983. The IP&IT Court rendered its judgment to withdraw the registrar’s and the Board of Trademarks’ decisions rejecting the trademark applications and instructed the registrar to proceed with registration of these trademarks.

The Supreme Court’s Judgment

The Department of Intellectual Property disagreed with the IP&IT Court’s judgment and filed an appeal with the Supreme Court in 2011. All arguments and supporting evidence were reviewed and the Supreme Court rendered its final judgment, deciding that:

  1. The word “CHAPS” directly describes the qualities and appearances of clothing products in Class 25, and therefore, lacks inherent distinctiveness.
  2. The evidence of use and the registration of these trademarks since 1983 are sufficient to prove that these trademarks have been continually used, distributed, and advertised in Thailand until they had acquired distinctiveness through use.
  3. These trademarks and the prior-registered trademark share the word “CHAPS,” and the surrounding elements are in similar positions. These trademarks are confusingly similar to the prior-registered trademark. 
  4. The evidence of use and registrations since 1983 prove that these trademarks have been continually and honestly used by the trademark owner both before and onward after 1995, which is the registration year of the cited trademark. Additionally, the trademark owner has spent a great amount of money distributing and advertising the products under these trademarks in Thailand for a long time. Therefore, although these trademarks are confusingly similar to the registered trademark, the trademark owner and the registrant have concurrently and honestly used their trademarks. This is a special circumstance under Section 27 of the Thai Trademark Act, and so the registrar should allow the registration of these trademarks. 

This Supreme Court judgment illustrates that evidence which shows continual and honest use of a trademark and a trademark’s registration, if any, in Thailand, such as the total product sales and advertising expenditures each year since the first use, lists of shops/distributors, advertisement channels, market research in connection with trademark awareness, etc., are very important and useful to trademark owners if their marks lack inherent distinctiveness and/or are similar to a prior-registered trademark.

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