Supreme Court recognises DOLCE & GABBANA and D&G as well-known marks

In Gado Srl v Pornlada Bag Co Ltd (Judgment No 14582/2557), the Supreme Court of Thailand has affirmed a decision of the Central Intellectual Property and International Trade Court (IP&IT Court), ruling that the plaintiff’s trademarks DOLCE & GABBANA and D&G are well known in Thailand and cancelling the defendant's registration and pending applications for the marks D&G and D&C in Classes 18 and 25 of the Nice Classification.

In 2005 Gado Srl, an Italian company, found out that Thai company Pornlada Bag Co Ltd had filed a trademark application for D&G in Class 18 in Thailand. Gado filed a notice of opposition against that application with the Department of Intellectual Property. The opposition was dismissed by the registrar. Gado also lost on appeal before the Board of Trademarks.

Gado conducted further investigations to determine the scope of use and registration of the mark at issue by the Thai applicant. The investigation revealed that, in addition to the pending application in Class 18, Pornlada also owns two pending applications for D&G in Class 25, as well as the registered trademark D&C in Class 18. Evidence of Pornlada's use of both D&G and D&C in the market was also discovered.

Based on the outcome of the investigation, Gado filed a civil suit with the IP&IT Court against Pornlada and its director. Gado requested that the IP&IT Court issue permanent injunctions:

• ordering the cancellation of the registered trademark D&C and directing the defendant to withdraw all three pending applications for the mark D&G;

• ordering the defendant to refrain from using the marks D&G and D&C in a way that was passing off the defendant's products as those of the plaintiff; and

• ordering the defendant to pay damages for passing off and for the unauthorised registration of its trademarks.

In March 2012 the IP&IT Court ruled in Gado’s favour, citing that it had proved that it had a better right to the mark D&G and that the mark was well known in Thailand; as such, the court ordered the cancellation of the defendant's trademark registration and of all pending applications for the marks D&G and D&C. The IP&IT Court also ordered the defendants to reimburse the attorney fees and litigation expenses of the plaintiff in an amount of Bt35,000. The request for compensation based on passing off was dismissed. Both parties thus filed appeal petitions with the Supreme Court.

On April 23 2015 the Supreme Court affirmed the IP&IT Court's decision, ruling that the plaintiff's marks DOLCE & GABBANA and D&G were well known in Thailand. The court took the following information into consideration:

• The plaintiff has used and registered the marks DOLCE & GABBANA and D&G worldwide since 1985;
• The plaintiff’s products sold under these marks have been officially imported and distributed in Thailand since 1996; and
• The plaintiff registered the mark DOLCE & GABBANA in Class 18 in Thailand in 1990, and registered the mark D&G DOLCE & GABBANA in Classes 3, 9, and 14 in 1999-2000.   

The Supreme Court further stated that the defendant had failed to prove that the plaintiff’s marks DOLCE & GABBANA and D&G are not well known in Thailand. In addition, the defendant’s trademarks D&C and D&G are confusingly similar to the plaintiff’s mark, both in appearance and in pronunciation, despite the different styles used by the parties.

The defendant also claimed that the parties' products differed in terms of the target customers and channels of distributions, and that the defendant's products are affixed with the phrase “Made in Thailand by KTS”. However, the Supreme Court found that such allegations were insufficient to prove that there would be no confusion among the public in the future, as there was no guarantee that the defendant would not change the design of its products, as well as their price and channel of distributions. The Supreme Court thus ruled that the defendant’s marks D&C and D&G were confusingly similar to the plaintiff's marks D&G and D&G DOLCE & GABBANA, which are well known in Thailand. Hence, the defendant's marks were not registrable and should be cancelled.  

Consequently, the Supreme Court ordered the cancellation of the defendant's trademarks and pending applications for the marks D&G and D&C, and ordered that the defendant refrain from distributing and offering for sale bags bearing the marks D&G and D&C.

Nuttaphol Arammuang, ZICOlaw (Thailand) Ltd, Bangkok