Elephant device mark owner crushes opposition

In Thai Cement (Public) Company Limited v Tusco Trafo Company Limited (Case 7631/2547, March 7 2005), the Supreme Court of Thailand has upheld a decision to reject an opposition to the registration of the mark TUSCO TRAFO (and Elephant device).

Tusco Trafo Company Limited filed an application to register TUSCO TRAFO (and Elephant device) as a trademark for voltage adapters in Class 9. The trademark registrar did not object to the application. However, Thai Cement (Public) Company Limited lodged an opposition against registration on the grounds that the mark was identical or similar to its prior registered trademarks:

• "Elephant device in two overlapped circles";
  
  
• "Erawan Elephant device in two overlapped circles"; and
  
  
• "Elephant device in six angles frame".

The trademark registrar rejected the opposition on the basis that Tusco's mark was neither similar nor identical to the registered trademarks of Thai Cement, nor might the public be confused as to the owner of the goods. Therefore, the trademark TUSCO TRAFO (and Elephant device) was registrable.

Thai Cement appealed to the Trademark Board, which endorsed the registrar's decision. Thai Cement further appealed to the Supreme Court.

The Supreme Court upheld the ruling. It found that the owner of the prior registered marks did not have an exclusive right to use an elephant picture as its trademark, nor could it prohibit a third party from using or registering an elephant picture as its trademark. However, it noted that a picture of an elephant can only be registrable as a trademark if it is sufficiently distinctive, and not (i) similar to any prior registered elephant trademark of another person, or (ii) likely to cause confusion to the public.

The court held that even though a picture of an elephant was a substantial element of both parties' trademarks, Tusco's mark also included the words TUSCO TRAFO in the same size as the elephant picture and these words were a significant part of the trademark. Additionally, both sets of trademarks were noticeably different in terms of general design, scope of goods and classification. It was not likely that the public would mistake the products sold under the TUSCO mark with those marketed by Thai Cement or its affiliates. The court further held that Tusco's elephant device mark was sufficiently distinctive to warrant registration.

Chalinee Panthuvichien, Johnson Stokes & Master, Bangkok