Trademark Board decisions can be overruled, says Supreme Court


In Société des Produits Nestlé SR v Department of Intellectual Property (Case 3543/2545), the Supreme Court of Thailand has ruled that a final decision of the Trademark Board, issued under Section 18 of the Trademark Act, can be overruled by the courts. In so doing, the Supreme Court upheld a lower court's decision to overturn the Trademark Board's refusal to register Nestlé's TRUSTY trademark for pet food.

In 1997 Nestlé filed a trademark application with the Trademark Registrar for the word 'trusty' for pet food. The registrar refused the application, ruling that the term is descriptive and cannot be registered pursuant to the Trademark Act. Nestlé appealed to the Trademark Board. The board upheld the earlier order on the same grounds and stated that the decision was final.

Undeterred, Nestlé appealed to the Central Intellectual Property and International Trade Court. At these proceedings, the Trademark Board argued that Nestlé was not entitled to appeal its ruling, as a decision of the Trademark Board is final pursuant to Section 18 of the Trademark Act.

The court held that it can review decisions of the Trademark Board because only decisions that have been made legally are final. The court reasoned that, to determine whether a Trademark Board's decision is legal, it can review the board's interpretation of the Trademark Act on matters of fact. Thus, the court found that it had the authority to hear Nestlé's appeal and after assessing the evidence it overruled the board's decision.

The Supreme Court rejected an appeal by the Trademark Board and upheld the decision of the lower court.

Wanchai Raksirivorakul and Chalinee Panthuvichien, Johnson Stokes & Master, Bangkok

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