In early November 2022, a Thai appeals court overruled the Trademark Registrar’s decision and the Board of Trademarks’ ruling by upholding the registrability of an oil company’s trademark application for its branded service station layout. This is the latest word in a long-running dispute between ExxonMobil and the country’s Department of Intellectual Property (DIP), which had previously rejected the mark as indistinctive. ExxonMobil first filed applications in April 2015 for a trademark bearing a unique colorful drawing of the layout of a service station bearing its well-known registered “ESSO” mark in International Classes 4 and 35 in Thailand. However, the Thai Trademark Registrar refused to register the mark, arguing that the mark was devoid of inherent distinctiveness because the service station layout drawing is directly descriptive of the applied-for goods and services related to oil products. According to the Registrar, the public would not be able to distinguish between the goods and services bearing ExxonMobil’s mark and those bearing the marks of others. ExxonMobil appealed this refusal to the Board of Trademarks, which ultimately agreed that ExxonMobil’s marks are devoid of inherent distinctiveness. The Board explained that the dominant elements in the drawing consist of a common service station with fuel dispensers, which is directly related to the applied-for goods and services related to oil products. The Board also deemed that the submitted evidence was insufficient to prove that the mark had gained distinctiveness through use. ExxonMobil disagreed with these rulings and thus filed a civil complaint with the Intellectual Property and International Trade Court (IP&IT Court) to revoke the Registrar’s decisions and the Board’s rulings. The IP&IT Court examined the case and issued its judgment in favor of ExxonMobil, ruling that the marks are inherently distinctive. The Court noted that to consider a mark’s distinctiveness, it is crucial

Trade dress, which refers to the visual appearance of a product and packaging, as well as the product’s placement at its point-of-sale (store layout), was at the center of an infringement case that recently obtained the highest damages award ever given for a trademark case in Thailand. Trade dress is an important branding consideration because it can create a commercial impression and enable the public to recognize the original source of goods and services, distinct from other traders. Trade dress comes in many different forms, but only a few of them find solid protection in Thailand, and only through creative use of existing intellectual property protections. For instance, a unique packaging design in the form of an unfolded paper box could be eligible for trademark registration. A distinctive product configuration or external design of a container might be eligible for registration as a three-dimensional trademark, or even as a design patent if it features lines or colors giving a special appearance to a novel product that has an industrial application. In addition, a product’s configuration could be subject to copyright protection as a “sculpture work” if it shows a figure with tangible volume. However, in Thailand, trade dress does not yet receive explicit recognition under the country’s Trademark Law—unlike in some other jurisdictions whose trademark laws permit the registration of trade dress. The protection and enforcement of trade dress in the form of “store layout” in particular has been a constant challenge in Thailand, given the lack of explicit laws and precedence. Consequently, brand owners may have a hard time protecting their trade dress in relation to their creative and unique store layout designs, despite a great deal of effort and financial investment. But now this appears to be changing: In December 2021, Tilleke & Gibbins successfully secured a

Intellectual property experts from Tilleke & Gibbins were engaged by ARISE+ IPR, a regional support program funded by the European Union and implemented by the European Intellectual Property Office, to craft a series of IP enforcement guides for Southeast Asian countries, aimed at raising local awareness of the importance of IP protection. The five-year, EUR 5.5 million ARISE+ IPR program supports regional integration through IP cooperation and aims to upgrade national IP systems for creation, protection, utilization, administration, and enforcement to be in line with international best practices and standards and the strategic objectives of the ASEAN Intellectual Property Rights Action Plan 2016-2025. The guides were developed by Tilleke & Gibbins’ lawyers in cooperation with the IP offices of each participating country, and cover issues related to trademarks, industrial designs, and geographical indications. Each guide was produced in a compact leaflet form in English as well as the local language, and is considered an official publication of the respective national IP office. The guides can be accessed from the ARISE+ IPR site (under “Leaflets, brochures and booklets”), or by clicking on the links below: Cambodia: English | Khmer Indonesia: English | Bahasa Indonesia Thailand: English | Thai Vietnam: English | Vietnamese