Decision refusing registration of H2O marks washed away


The Thai IP and International Trade (IP&IT) Court has reversed the Department of Intellectual Property's (DIP) decision to refuse the registration of ~H2O+ and H2O PLUS for cosmetics and related services (Case Red Tor Por (IP) 105/2547).

Well-known US manufacturer of cosmetics and other body-care products H2O Plus applied to register the marks in Classes 3 and 35 of the Nice Classification. The DIP refused registration. It considered the trademarks to be non-distinctive based on the use of Latin characters, Arabic numerals and mathematical symbols. In addition, it stated that the fact that the marks contained the chemical formula for water (H2O) meant they were descriptive of the goods covered by the application. H2O Plus appealed to the IP&IT Court.

H2O Plus responded to the DIP's argument that the marks were not distinctive due to their direct reference to the characteristics of the relevant goods and services by stating that the products bearing the mark were cosmetics, consisting of many different ingredients, not just water. H2O Plus also submitted evidence (i) showing extensive use, promotion and sales under both marks, demonstrating that the marks have achieved a secondary meaning, and (ii) of trademark registrations in Argentina, the European Union, Japan, Mexico, Singapore, Thailand, the United Kingdom and the United States.

The IP&IT Court noted that the marks ~H2O+ and H2O PLUS referred to the chemical formula for water and that the goods in Class 3 covered by the application included toiletries, which contain water. As a result, the marks lacked inherent distinctiveness. However, because the evidence presented by H2O Plus demonstrated that its trademarks enjoyed a well-known reputation in Thailand, the court held that they had acquired a secondary meaning allowing registration in Class 3. It also stated that the marks made no direct reference to the character or quality of the retail services in Class 35, thus, it also allowed registration in that class.

Nuttaphol Arammuang and Liza S Leung, Tilleke & Gibbins International Ltd, Bangkok

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