Russian company not entitled to apply for RUSSIAN VODKA marks

Following a preliminary examination, the Thai Trademark Office (TO) has rejected applications to register the marks ORIGINAL RUSSIAN VODKA and RUSSIAN VODKA on the grounds that the applicant, Russian state-owned company Sojuzplodoimport, was not entitled to file the applications (April 25 2005).

Under the Geographical Indications Protection Act, which came into force in 2004 (see Applications for GIs now accepted), a foreign applicant that wishes to apply for registration of a geographical indication (GI) of a foreign country must be (i) a national of Thailand or a country that is a party to a convention or international agreement concerning GI protection to which Thailand is also a member, or (ii) domiciled or have its actual place of business in such a country.

The TO found that Russia is neither a member of the World Trade Organization (WTO) nor a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). In the absence of evidence that Russia is a party to an agreement that affords reciprocal GI protection to Thai nationals, the registrar held that Sojuzplodoimport could not apply for registration of a GI under the Geographical Indications Protection Act unless it could prove that it has established a subsidiary or branch in Thailand or in any WTO member country that is signatory to the TRIPs Agreement. The fact that Sojuzplodoimport registered the marks at issue in the United States, which has an agreement providing reciprocal GI protection to Thai nationals, could not be used as a basis to file the GI application in Thailand.

Dej-Udom & Associates, Bangkok