Descriptive TWO WAY mark gives way to new registration

In UB Chemical Industry Company Limited v Trademark Committee (Case 296/2546), the Supreme Court has dismissed the plaintiff's opposition to the registration of SUN MELON TWO WAY CAKE and device. The court held that the plaintiff's TWO WAY mark and variations thereof were not distinctive, and could not be protected.

In 1997 an individual named Prakaicum Sriwichai filed an application to register the trademark SUN MELON TWO WAY CAKE and device for cosmetics. Registration was subsequently opposed by UB Chemical Industry, which had been using the trademarks TWO WAY and device, TWO WAY POWDER CAKE and device, and 2 WAY and device for over 20 years. It had also held registrations of the marks for over 11 years. UB Chemical Industry claimed that the mark SUN MELON TWO WAY CAKE and device was confusingly similar to its various TWO WAY trademarks and would cause public confusion as to the source of the goods.

The opposition filed by UB Chemical Industry with the registrar was unsuccessful, as was the subsequent appeal to the Trademark Committee. An appeal was then filed with the Central Intellectual Property and International Trade Court, which upheld the Trademark Committee decision. Undeterred, UB Chemical Industry filed a final appeal with the Supreme Court.

In its decision, the Supreme Court noted that although UB Chemical Industry had prior registered and used the TWO WAY mark and variations thereof, the term 'two way' is a common term of the trade or is descriptive of the goods to which UB Chemical Industry's marks relate. Its marks were therefore not distinctive and it was not able to prevent Sriwichai from incorporating the term 'two way' into her own trademark.

Dej-Udom & Associates, Bangkok