US company wins out in dispute over UNIVERSAL PICTURES

In Universal City Studio Inc v Universal Pictures (Thailand) Co Ltd (Case Tor Por 29/2548, March 29 2005), the Thai IP and International Trade (IP&IT) Court has upheld an opposition against the registration of the mark UPT UNIVERSAL PICTURES (THAILAND) CO LTD.

Universal Pictures (Thailand) Co Ltd (Universal Thailand) filed an application to register the mark for Super Video CDs with the Thai Trademark Office. Universal City Studio Inc (Universal City), a company incorporated under the laws of California, lodged an opposition against the registration of the trademark on the grounds that it was confusingly similar to its unregistered Universal Pictures trade name, trademark and company name, and would infringe its rights. The trademark registrar rejected the opposition.

Universal City further appealed to the Trademark Committee, which upheld the registrar's decision, finding that (i) the trademark UPT UNIVERSAL PICTURES (THAILAND) CO LTD was not similar to the company name Universal City Studio Inc, and (ii) as Universal City had not registered the name Universal Pictures as a trademark or company name in Thailand, this showed that Universal City did not intend to use that name as a trademark or company name in Thailand. Therefore, Universal Thailand had not infringed Universal City's rights in any way. Universal City further appealed to the IP&IT Court.

The court found that Universal City operates various kinds of entertainment businesses under the trade name Universal, such as Universal Pictures, Universal Television and Universal Music. For film entertainment, Universal City uses the name Universal Pictures as part of its company names. Its overseas affiliates also use the name Universal Pictures accompanied with the country name where the branch or affiliate is located.

Furthermore, Universal City has registered worldwide the marks UNIVERSAL and UNIVERSAL PICTURES for goods and services related to film and television materials. In Thailand, Universal City has never registered the name Universal Pictures, but it has owned the registered mark UNIVERSAL as a trademark in various classes since 1947.

The court stated that it was clear that Universal City had used the name Universal Pictures for many years before Universal Thailand set up its company in Thailand. The fact that Universal City had not registered a company branch under the name Universal Pictures did not give Universal Thailand a legitimate right to use the name.

Even though the terms 'Universal' and 'Pictures' are commonly used words that Universal City cannot prohibit others from using, Universal Thailand had started using the mark in bad faith, with the intention of confusing the public into thinking that (i) Universal Thailand and Universal City are related, or (ii) that Universal Thailand is a branch of Universal City in Thailand. Therefore, said the court, Universal City has a better right to use the name Universal Pictures.

The court awarded damages at the rate of Bt5,000 (approximately $125) per month from the filing date of the complaint until such time as Universal Thailand changes its company name.

Chalinee Panthuvichien, Johnson Stokes & Master, Bangkok