Coke bottle shape registration marks change for unconventional signs

The Supreme Court of Thailand has allowed the registration of the two-dimensional shape of the Coca-Cola bottle as a trademark. This ruling marks an important departure from the Thai practice regarding unconventional marks to date.

Thailand's trademark registrar has historically provided clear guidelines as to what constitutes distinctiveness in relation to conventional marks, but, controversy arose in relation to the registrar's determination of distinctiveness criteria for non-conventional marks. The registrar has found such marks inherently non-distinctive and thus incapable of functioning as trademarks - even where substantial evidence of acquired distinctiveness has been submitted. The registrar has not published any guidelines as to what would constitute sufficient evidence of acquired distinctiveness through use for inherently non-distinctive marks. It has also applied a subjective and strict analysis of what can function as a trademark as far as unconventional marks are concerned, thus refusing unconventional marks until the applicant has proved beyond any reasonable doubt that its mark has acquired distinctiveness through extensive use, marketing and advertising. Consequently, it has proved extremely difficult to register unconventional marks such as shapes in Thailand.

However, the Supreme Court has issued a decision that marks a clear change in practice.

The decision stems from The Coca-Cola Company's application to register the design of its Coca-Cola bottle (the contour mark) as a trademark in Class 32 of the Nice Classification, which covers, among other things, mineral water and soft drinks. The contour mark has been used extensively for many years in combination with the word marks COCA-COLA and COKE, and has become well known worldwide - including in Thailand. Although the trademark registrar and trademark committee acknowledged these facts, the registrar rejected the contour mark application on the grounds that the bottle design refers to the container which describes a characteristic of the goods inside. Therefore, both the registrar and the committee considered the contour mark to be non-distinctive and incapable of functioning as a trademark.

Coca-Cola appealed first to the Central Intellectual Property and International Trade Court and ultimately to the Supreme Court.

The Supreme Court ruled that the contour mark represented a creative invention appearing in two dimensions. It determined that the application was not a sketch of a picture or of a material shape - a finding that the court had always made in the past for similar bottle shape applications. Instead, the court here found that the contour mark should not be considered as a mere representation of a product container. The shape was held distinctive and thus registerable as a trademark. The court revoked the trademark registrar and committee's decisions and ordered that Coca-Cola's application be accepted.

This is the first time that a two-dimensional bottle design has been accepted for trademark registration in Thailand. Further, the decision provides a significant foundation for future development of unconventional trademark protection in Thailand as it indicates that the registrar, the committee and the court should apply a less restrictive approach to recognizing non-conventional marks and allow registration where an applicant submits extensive evidence of acquired distinctiveness through long-term use.

Worawut Krairt and Poondej Krairit, Dej-Udom & Associates, Thailand, with the assistance of Daniel Q Greif, The Coca-Cola Company, Pacific Group