RADAR goes off the register

The Thai IP and International Trade (IP&IT) Court has cancelled a local registration for RADAR in Chinese characters (Case (Red) 51/2547). The court held that Shin Tung Electronic Industry Co Ltd, a Taiwanese manufacturer of electric switches, had better rights to the mark pursuant to Section 67 of the Thai Trademark Act as it had used it on an international basis.

Section 67 provides that a party can apply to the IP&IT Court to cancel a registered trademark where the applicant has a better right to the mark. Section 67 states:

“Within a period of five years from the date of the registrar’s order for registration of a trademark in accordance with Section 40, any interested person may petition the court to cancel the registration of that particular trademark if he can prove that he has a better right to that trademark than the person registered as the proprietor.”

Although Section 67 does not provide what standard of review to apply in determining whether a registered trademark should be cancelled, the IP&IT Court generally considers whether the disputed marks are similar. If so, it will examine the extent of prior use of the mark by the applicant to decide which party has the better right to the mark. If the disputed marks are not similar, then the court will dismiss the cancellation action.

In the case at hand, Shin Tung filed a trademark application in Thailand to register its mark RADAR in Chinese characters in Class 9 of the Nice Classification, for liquid level control switches. The trademark registrar refused registration due to a prior registered identical mark for the same class of goods, which was owned by a Thai individual. Upon discovering this, Shin Tung filed a cancellation action against the Thai registrant’s mark.

Shin Tung claimed that its trademark was registered in good faith in various countries for many years and submitted copies of trademark registrations from countries such as Chile, China, Indonesia, Peru, Taiwan and Vietnam. Shin Tung also submitted substantial evidence of use, such as sales invoices and advertisements demonstrating that its RADAR mark in Chinese characters was used worldwide and that the mark was first introduced on to the Thai market in 1978. In response to Shin Tung’s cancellation action, the Thai registrant filed a counterclaim alleging trademark infringement.

During the cancellation proceedings, the Thai registrant relied on its registered trademark to have police arrest and charge the directors of Shin Tung’s distributor, Krung Thai Hardware Import Ltd, with criminal trademark infringement. When the police file was referred to the public prosecutor to submit formal charges against the directors, the prosecutor declined to charge them, finding that they had acted in good faith.

After many delays and hearing continuances brought by the Thai registrant, the cancellation proceedings resumed. The IP&IT Court held that Shin Tung used its mark on a worldwide basis prior to the registration of RADAR in Chinese characters by the Thai registrant. Thus, pursuant to Section 67 of the Trademarks Act, Shin Tung had better rights to the RADAR (in Chinese characters) mark and the court ordered:

• the cancellation of the Thai registrant’s mark;
  
  
• the Thai registrant to pay court costs and attorney fees; and
  
  
• the dismissal of his trademark infringement counterclaim against Shin Tung.

Liza S Leung and Srila Thongklang, Tilleke & Gibbins International Ltd, Bangkok