In Trust Co Ltd v Amornpornwiwat (Case Red IP 97/2551, July 21 2008), the Intellectual Property and International Trade (IP & IT) Court has considered whether Trust Co Ltd, a Japanese company that was the first to use the trademark GREDDY abroad, or Bussanee Amornpornwiwat, an individual who was the first to apply for the registration of the mark in Thailand, had a better right to the mark.
In 2006 Trust Co filed three applications with the Thai Department of Intellectual Property
(DIP) for the registration of the trademark GREDDY for goods in Classes 7, 9, and 12 of the Nice Classification
(automobile parts and accessories). The registrar rejected the applications on the grounds that the mark was identical or confusingly similar to six registrations for the trademark GREDDY and seven pending applications for the registration of the mark for goods in Classes 5, 6, 12 and 20. All registrations and applications were in the name of Amornpornwiwat.
Trust Co requested that the DIP suspend its three applications. It also filed suit before the IP&IT Court seeking to cancel Amornpornwiwat’s trademark registrations on the grounds that it had a better right to the mark GREDDY, as it had started to use the mark before Amornpornwiwat. Trust Co also requested that the court order Amornpornwiwat to abandon all pending applications.
During the trial, Trust Co provided evidence that it had:
- invented the mark GREDDY by combining the words 'great' and 'Eddy';
- used the mark in relation to automobile parts since 1985;
- applied to register the mark in Japan in 1987 for goods in Class 12;
- registered, advertised and used the mark in several countries over a long period of time; and
- distributed goods bearing the trademark GREDDY in Thailand since 1996.
In her defence, Amornpornwiwat claimed that the trademark belonged to her family, which had engaged in the production of licence plate frames since 1987. According to Amornpornwiwat, her father had invented the mark by combining the English word 'grade' and the Thai word 'dee' (which means 'good'). Amornpornwiwat applied to register the mark GREDDY in 2002 and the application was accepted by the registrar. Amornpornwiwat thus alleged that:
- she had the exclusive right to use the mark GREDDY; and
- Trust Co was not entitled to initiate an action for the cancellation of the mark.
The IP & IT Court held that the owner of the trademark was the party which had invented the mark and used it in relation to its goods, regardless of whether it had registered the mark in Thailand. The fact that Trust Co's applications were rejected by the registrar did not imply that Trust Co was not the owner of the mark. In light of the evidence provided by the parties, the court held that Trust Co's evidence was more credible than that submitted by Amornpornwiwat and concluded that Trust Co had a better right to the trademark GREDDY.
Consequently, the IP & IT Court ordered that Amornpornwiwat's trademark be cancelled and that she abandon all pending applications.
Nuttaphol Arammuang, Tilleke & Gibbins International Ltd, Bangkok