Plaintiff held to have better right to trademark despite failing to renew it

The managing of their trademark portfolios is crucial for brand owners, especially when it comes to the deadlines for renewing their trademarks. Under the Thai Trademark Act, trademark registrations must be renewed every 10 years. Failure to do so will cause the registration of the trademark to be cancelled.

Tong Cheng Iron Works Co Ltd filed an application for the registration of its trademark SWAN for air pumps on September 2 1981. The trademark was accepted for registration, but was later cancelled due to the owner's failure to renew the registration in 2001.

Shortly thereafter, Chumsin Inter (1999) Co Ltd filed an application for the same mark in the same class, and the application was accepted for registration in 2002 (Registration No TM181204). In 2004 Tong Cheng Iron Works filed a new trademark application for SWAN. This new application was rejected by the registrar on the grounds that it was identical, or confusingly similar, to Chumsin's registered trademark SWAN.

Tong Cheng Iron Works did not have many options available to overcome the decision of the registrar. It decided to file a civil suit with the Intellectual Property and International Trade (IP & IT) Court, claiming that it had a better right to the mark SWAN for products in Class 7 of the Nice Classification, and requesting that the court cancel Registration No TM181204.

Chumsin responded that it had acted in good faith in filing the trademark application, as it had conducted a trademark search and found that there was no earlier registration for the mark SWAN at that time. Chumsin also claimed that it had used the trademark in good faith.

The IP & IT Court found that the plaintiff had used and registered the mark before Chumsin, and that the latter was engaged in the same business as the plaintiff. Therefore, there was reason to believe that Chumsin had used and registered the mark in bad faith. The IP & IT Court cancelled Chumsin's trademark registration, and Chumsin appealed.        

On May 31 2013 the Supreme Court confirmed that the plaintiff had a better right to the trademark SWAN, regardless of whether it had renewed its trademark registration in Thailand or not. The court reasoned that, although it had failed to renew the registration for its mark in 2001, the plaintiff, as well as its local distributor, had continued to use the mark. This was demonstrated by extensive evidence, including evidence from trade and exhibition fairs in 2003, 2004 and 2006, as well as leaflets, brochures, invoices and other sales documents.

The court also considered that the evidence presented by Chumsin was insufficient to prove that it had a better right to the mark. The court stated that, although the plaintiff had not renewed the trademark registration within the relevant time period, resulting in the cancellation of the mark and the loss of ownership rights under the Trademark Act, this did not mean that the plaintiff had lost all of its ownership rights over the trademark.

Tong Cheng Iron Works thus got its trademark back, despite the cancellation of its former registration. This judgment may be considered as an indication that the Thai courts have accepted the concept of common law trademark rights.

Nuttaphol Arammuang, Tilleke & Gibbins International Ltd, Bangkok