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

May 23, 2016

Thailand: Record Damages Awarded in Trademark Case

Subscribe to Updates
Managing Intellectual Property

“Born in Canada, Living in London, Made in Italy” is the brand motto of Dsquared2, the famous international fashion brand originally created by Dean and Dan Caten, twin brothers from Canada who have used the series of trademarks D2, DSQUARED, D2 DSQUARED2, and DSQUARED2 since 1994.

The trademarks were filed in many countries under the name Belmont Brands Ltd., and they were subsequently assigned to DSquared2 TM S.A. In Thailand, however, DSquared2 discovered that its trademarks had already been registered by a Thai company that is also in the fashion industry.

Not only were the trademarks already registered under the name of the local Thai company and its directors, but the Thai company had also opened shops in several major shopping malls in Bangkok under the infringing name, DSQUARED2.

In order to reclaim their rights to their brand, Belmont Brands Ltd., the plaintiff, and DSquared2 TM S.A., the coplaintiff and assignee of the trademarks from the plaintiff, brought a civil litigation case against the Thai company and its two directors. The case was filed at the Intellectual Property and International Trade Court (IP&IT Court) in April 2010.

The plaintiff requested the court to order the cancellation of all trademark applications and registrations of the first defendant that are similar to the plaintiff’s series of trademarks, namely D2, D2 DSQUARED, DSQUARED2, and DSQUARED. The plaintiff also requested the court to order the defendants to cease all use of the trade name DSQUARED2 as the name of their stores and jointly pay the compensation to the plaintiff.

In February 2011, the IP&IT Court pronounced its judgment naming the plaintiff as the original owner of the trademark DSQUARED2, reasoning that the plaintiff had a better right than the defendants to the disputed trademarks for the goods in Classes 3, 9, 14, 16, 18, 20, 24, 25, 26, and 35. The defendants were found to have passed off their products as the plaintiff’s for the purpose of confusing or misleading the public into believing that their products belonged to the plaintiff.

The IP&IT Court ordered that the defendants be prohibited from: (1) imitating the plaintiff’s trademarks and products; and (2) using DSQUARED2 as their trade name and the name of their stores. The Court subsequently cancelled the first defendant’s 17 registered trademarks as well as its one pending trademark application. The Court also ordered the defendants to compensate the plaintiff in the amount of THB 100,000 per month, calculated from the date the plaintiff filed the complaint until the defendants withdrew their registered trademarks, or the date the defendants ceased infringing on the plaintiff’s trademarks.

The defendants appealed the IP&IT Court’s decision to the Supreme Court in April 2011. In February 2016, the Supreme Court announced its judgment affirming the IP&IT Court’s judgment and amending only one issue—the defendants must pay compensation to the plaintiff in the amount of THB 100,000 per month from the date the plaintiff filed the complaint until the defendants cease infringing the plaintiff’s trademarks and products and cease using DSQUARED2 as their trade name and the name of their shops. The total compensation accumulated to approximately THB 6-7 million, which is believed to be the highest amount of compensation that defendants have ever been ordered to pay the plaintiff in a trademark litigation case based on “passing off.”

This will serve as a landmark case for international companies looking to operate a business in Thailand that fall victim to their trademarks and trade names being stolen by a local company. This case demonstrates that Thai trademark law provides effective means for original trademark owners to prove their better right over their marks. The amount of compensation granted by the Court is also improving as the Court increasingly recognizes the value of intellectual property and the damage that arises from infringement.

It is significant, however, that it took the legitimate owners of the mark nearly a decade to reach a resolution affirming their better right to the mark. This is an area where the Thai system could benefit from further improvement. In any event, trademark owners are encouraged to seek protection for their trademarks as soon as possible, as it will save them unnecessary stress, time, and costly legal disputes revolving around the legitimate owner of a mark.

Download Full Article
Related Professionals

Practices

Dispute Resolution and Litigation

Intellectual Property

Location

RELATED INSIGHTS​ 

August 6, 2026
Introduction: A Trademark Paradox in Sustainable Packaging Walk into any Thai supermarket, and the label-free water bottle is no longer a novelty. Thailand’s packaging market, valued at approximately USD 15.68 billion in 2025, is shifting toward minimalist, plastic-light designs as ESG pressures reshape how brands present their products. The country generated roughly 5.68 million tons of plastic waste in 2021, with a recycling rate of only 19 percent, and regulators are now considering rules that would allow label-free bottled water relying on embossing, laser printing, or QR codes instead of wrap-around labels. As packaging itself becomes the brand identifier, a paradox emerges: designs built to say the least often struggle hardest for protection under Thai intellectual property law. The Trademark Barrier: When Shape Is Not Enough Section 7, paragraph 2(10) of the Thai Trademark Act deems a shape distinctive only if it is not the natural form of the goods, is not necessary to achieve a technical result, and does not add value to the goods. The Department of Intellectual Property’s 2022 examination guidelines apply this test conservatively, as the following examples illustrate. A plain water bottle relying on subtle contours to signal its brand is typically read as just another bottle, not a source identifier. Acquired distinctiveness offers a theoretical escape route, but it demands extensive evidence of sales, advertising, and consumer recognition—an especially heavy burden for new entrants whose minimalist packaging has not yet achieved market prominence. The result is a structural bias against precisely the design innovation that sustainability goals are meant to encourage. Design Patents: A Partial, Imperfect Substitute Design patent protection, covering a product’s shape, configuration, or ornamentation, appears to offer an alternative route. In practice, it is constrained by the same forces driving the minimalist trend. Because many brands converge on similar solutions—clear
Read More
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