PHOENIX rises from the ashes as geographical name preclusion fails

In Unilever NV Company Limited v Department of Intellectual Property (Case 2802/2546), the Supreme Court of Thailand has overturned a Trademark Board decision that rejected the registration of the mark PHOENIX for soap in Class 3 of the Nice Classification on the grounds that it was a geographical name.

Unilever NV Company Limited filed an application to register the word ‘phoenix’ as a trademark for soap. The trademark registrar rejected the application on the grounds that ‘phoenix’ was (i) not distinctive, and (ii) a geographical name prohibited from registration under Section 7(2) of the Trademark Act. Section 7(2) provides that the mark must not be a geographical name as prescribed by Ministerial Notification (Volume 5) BE 2535 as follows:

• a country name or any state that has the same status as a country or group of countries and is widely known to the public;
  
  
• a continent or sub-continent;
  
  
• an ocean;
  
  
• a country’s capital city; or
  
  
• any geographical name such as port, province, district, sub-district, state, mountain, river, sea or lake that is widely known to the public.

Unilever appealed to the Trademark Board, which upheld the registrar’s decision. Unilever further appealed to the Supreme Court.

The Supreme Court reversed the decision. It found that ‘phoenix’ has two meanings: it is (i) a mythical bird that can be reborn from the ashes of a fire, and (ii) the name of the capital city of the US state of Arizona. The court held that the name Phoenix does not fall within the meaning of the term ‘geographical name’ as set out in the ministerial notification as it is neither a country’s capital city (Clause 4) nor widely known to the public (Clause 5). Further, the court held that the mark PHOENIX was sufficiently distinctive to warrant registration.

Chalinee Panthuvichien, Johnson Stokes & Master, Bangkok