Elephant device marks for similar goods can coexist

In Siam Kubota Industrial Company Limited v Amargo Petroleum Company Limited (Case 6657/2548, January 24 2006), Amargo Petroleum Company Limited filed applications to register a device mark made up of an elephant picture in a gearwheel symbol together with a Thai word which means 'flying elephant' for engine oil and gear oil in Class 4 of the Nice Classification.

Siam Kubota Industrial Company Limited, the registered owner of a device mark featuring an elephant picture in a gearwheel symbol lodged an opposition against the registration of Amargo's trademark on the grounds of confusing similarity. The Trademark Registry and the Trademark Committee on appeal rejected the opposition on the basis that Amargo's mark was neither similar nor identical to Siam Kubota's trademark. Siam Kubota appealed.

The Supreme Court of the Central Intellectual Property and International Trade Court (IP & IT Court) found that both trademarks have different appearances. The registered trademark of Siam Kubota includes, on a dark background, a side view of an elephant in a standing position with the front left leg pointing backwards. On the other hand, Amargo's mark includes, on a clear background, a picture of the side view of an elephant with two wings, the front two legs moving up and the two back legs pointing straight back towards the tail in a flying action, as well as the Thai word for 'flying elephant'.

In addition to the clear differences in the graphic elements used in the marks, the IP & IT Court pointed out that the pronunciation of each mark was also different. Siam Kubota's mark can be pronounced as (i) 'Tra Chang', meaning 'elephant brand', or (ii) 'Chang Nai Fuang' or 'Chang Nai Fun Fuang', meaning 'an elephant in gearwheel symbol'. Amargo's mark is pronounced as 'Chang Bin', which means 'flying elephant'. Accordingly, the court held that Amargo's flying elephant device mark was neither identical nor similar to the registered mark of Siam Kubota. There was no likelihood of any confusion on the part of the public regarding the owner or origin of the relevant goods.

Marks including elephant devices are popular for registration in Thailand as the elephant is a symbol of the country. This case adds to a body of precedent that indicates that the courts will allow the registration of an elephant mark even where it covers similar goods and/or services to an earlier mark provided that the action or position of the elephants and the pronunciation of the trademarks are not so similar as to cause confusion.

Chalinee Panthuvichien, Johnson Stokes & Master, Bankgok