MARNI and MANI can coexist, says Supreme Court

Thailand
In Marni International SA v Department of Intellectual Property (Case 1147/2552 (AD 2009)), the Supreme Court of Thailand has held that Marni International SA's trademark MARNI could coexist with Armani's earlier registered trademark MANI under Section 27(1) of the Trademark Act 1991.

Section 27(1) provides that the registrar of trademarks may allow concurrent-use registrations if he or she deems that there has been honest concurrent use of the trademarks or based on other special circumstances.
 
Marni applied for the registration of the trademark MARNI for goods in Classes 18 and 25 of the Nice Classification. The registrar rejected the application on the grounds that the MARNI mark was confusingly similar to the earlier registered trademark MANI for goods in Classes 18 and 25. Marni appealed to the Board of Trademarks, which upheld the registrar’s decision. Marni then filed a complaint with the Central Intellectual Property and International Trade (IP & IT) Court. The IP & IT Court upheld the decisions of the registrar and the board. Marni appealed to the Supreme Court.
 
The Supreme Court first held that the marks were similar from a visual and phonetic point of view. Further, the court held that the goods covered by the marks were identical. Therefore, there was a likelihood of confusion among consumers.
 
The court nevertheless considered whether Marni’s trademark could be registered under Section 27(1) of the act. Marni submitted evidence that the MARNI mark was first created in 1988 for use with high-end coats, and was later used for various goods in many countries, including Thailand. Further, Marni presented evidence of advertisements for the goods in question and demonstrated that the MARNI mark was registered in many countries.

The court found that the goods sold under the trademarks MARNI and MANI were of a different nature and that the MARNI mark was recognized by the relevant group of consumers. Moreover, the court pointed out that Armani had provided a letter of consent to Marni. Even though the letter of consent did not lessen the degree of similarity between the marks, it showed that Armani had acknowledged that both marks could coexist. Therefore, the court held that Marni had used its mark in good faith. The court also found that Marni had established first use of the mark before the application was filed in Thailand.
 
The court thus reversed the decision of the IP & IT Court and ordered that the decisions of the registrar and the board be annulled.
 
This decision is groundbreaking in that it provides a clear interpretation of Section 27(1) of the act. It also confirms that applicants may rely on this provision even where there is a likelihood of confusion between the mark applied for and an earlier registered trademark. 
 
Parichart Monaiyakul and Nuttaphol Arammuang, Tilleke & Gibbins International Ltd, Bangkok

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