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.
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:
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:
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.