Mark owners team up to stop parodic use of their marks

Thailand

The owners of a number of world-renowned trademarks, including adidas-Salomon AG, PepsiCo Inc, Philip Morris, Playboy and Starbucks Corporation, have teamed up to stop the imitation of their famous trademarks on T-shirts bearing drug-related or sexually-explicit messages (Criminal Cases 568-47 to 589-47).

Marijuana ROP produced T-shirts bearing imitations of famous trademarks such as the STARBUCKS mermaid logo where the word mark STARBUCKS COFFEE was replaced by the phrase 'Starfucks for free'. In another example, the Philip Morris red roof design logo for Marlboro cigarettes had been altered so that the word mark MARLBORO was substituted for the word 'marijuana'. The mark owners obtained search warrants against Marijuana ROP pursuant to Sections 109 and 110 of the Thai Trademark Act, which prohibit the imitation of registered trademarks. During simultaneous raids carried out at 16 separate sites near Bangkok last month, the police (including officers from the Economic Crime Investigation Division) seized more than 2,000 infringing T-shirts, numerous bundles of blank shirts and screening blocks with the infringing designs, along with other manufacturing equipment used in the processing and finishing of the goods.

The owners of Marijuana ROP have been charged with imitation of trademarks that are registered in Thailand and possession of goods infringing registered marks. The maximum sanctions include fines of Bt200,000 each (about $5,000), prison sentences of up to two years, or both. There is no fair use defence under the Thai Trademark Act, thus depriving Marijuana ROP from making a claim of free speech rights to justify its use of the marks.

For a discussion of another recent joint operation conducted by various brand owners, see Online counterfeiters halted in Thailand.

Edward J Kelly and Liza S Leung, Tilleke & Gibbins International Ltd, Bangkok

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