Success for Sony in trade name dispute

In Sony Kabushiki Kaisha v Sony Impex Company Limited (Case 542/2546), the Supreme Court of Thailand has upheld a decision of the Central Intellectual Property and International Trade Court that a trade name should not be accepted for registration if its use would cause confusion due to the existence of a similar prior registered trade name, trademark or service mark.

In 1994 Sony Impex successfully registered and began operating under the trade name Sony Impex Company Limited. Sony Kabushiki Kaisha, the famous Japanese electronics manufacturer also trading as the Sony Corporation, has been using its SONY mark and trade name in Thailand since 1958. It filed a complaint with the Central Intellectual Property and International Trade Court against Sony Impex, its company directors and the government officer responsible for accepting registration of the trade name, claiming that the registration and use of the trade name infringed its rights. Sony demanded that the trade name registration be withdrawn.

Before the Central Intellectual Property and International Trade Court, the government officer argued that he was only acting in his capacity as representative of the Department of Commercial Registration and that Sony had no right to file an action against him. He further argued that when accepting registration of a trade name, he is not obligated to consider whether that trade name would cause public confusion. He contended that he is only required to consider whether such trade name has already been registered. Sony Impex and its company directors failed to file a response to the complaint.

The court held that the registration and use of the Sony Impex Company Limited trade name had caused injury to Sony. It stated that Sony was entitled to request the withdrawal of the registration under Section 18 of the Civil and Commercial Code and seek compensation for damages under Section 421 of that code. The court also found that although registrations of trademarks under the Trademark Act will not normally interfere with bona fide use of a trade name, Sony Impex's use was not bona fide and constituted trademark infringement. The court ordered Sony Impex and the government officer to withdraw the trade name registration.

The decision was subsequently upheld by the Supreme Court on appeal.

Steve MW Benhar, Dej-Udom & Associates, Bangkok