Unusual combination of words held to be distinctive by IP & IT Court

In Avermedia Technologies Inc v Department of Intellectual Property (December 28 2007), the Intellectual Property and International Trade (IP & IT) Court has reversed a Board of Trademarks decision refusing to register the mark AVERMEDIA on the grounds that it lacked distinctiveness. The decision emphasizes the discretion of the court in deciding whether an unusual combination of words used in an arbitrary manner may be considered to be distinctive.

According to Section 7 of the Thai Trademark Act, a distinctive trademark is "one which enables the public or users to distinguish the goods with which the trademark is used from other goods". Under Section 7(2), a mark that consists of a word or clause that has no direct reference to the character or quality of the goods and is not a geographical name shall be deemed to be distinctive. Similarly, Article 15 of the Agreement on Trade-Related Aspects of Intellectual Property Rights provides as follows:

"any sign or any combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings shall be capable of constituting a trademark."

In early 2004 Avermedia Technologies Inc, a Taiwanese corporation which manufactures and distributes products in the field of digital media, filed an application for the registration of the mark AVERMEDIA for goods in Class 9 of the Nice Classification (including television tuners, PC-to-TV scan converters and document cameras).

The registrar of trademarks rejected the application on the grounds that the mark lacked distinctiveness. The registrar asserted that the word 'avermedia' can be interpreted as "a recording device which can accurately measure or improve information". When applied to goods in Class 9, the registrar felt that the mark made a direct reference to the relevant goods. The decision was upheld by the Board of Trademarks. Avermedia appealed to the IP & IT Court, arguing the mark had not been created with this reference in mind.

The IP & IT Court found in favour of Avermedia, holding that the trademark AVERMEDIA does not directly refer to the character or quality of the relevant goods in Class 9. The court found that although the word 'aver' means 'to affirm/confirm a fact' (as the registrar claimed), most Thai consumers would not make such connection immediately. Moreover, even if the mark as a whole may be interpreted in this manner, this meaning is not directly descriptive as it does not refer to the exact characteristics of the products.

Therefore, the IP & IT Court ordered that the mark AVERMEDIA be registered for goods in Class 9.

The decision highlights the fact that the IP & IT Court tends to be less conservative in considering word mark applications in Thailand and that an unusual combination of words can be interpreted in many different ways. However, as long as the trademark owner can prove to the court that registration was sought in good faith and provide evidence of the history of the mark, the mark should be protected under the trademark legislation.

Srila Thongklang and Suebsiri Taweepon, Tilleke & Gibbins International Ltd, Bangkok