Region: Thailand

Fighting the fakes in Thailand

The king of Thailand may have received a special IP prize from WIPO, but brand owners in the country are severely critical of the country's 'temporary' anti-counterfeiting plans. <i>WTR</i> spoke to brand owners and practitioners on the ground to hear what should be done.

24 March 2009

Thailand takes steps to join Madrid Protocol

Under the guidance of the Department of Intellectual Property, preparations are underway for Thailand to join the Madrid Protocol. Among other things, in August last year Thailand ratified the Paris Convention for the Protection of Industrial Property in preparation for entry into the Madrid System.

24 February 2009

LASERJET held to have acquired distinctiveness through use

In <i>Hewlett-Packard Company v Department of Intellectual Property</i>, the Supreme Court has held that the trademark LASERJET had acquired distinctiveness through use and was thus registrable under Section 7(3) of the Trademark Act. Among other things, the court referred to a computer dictionary which defined 'HP LaserJet' as “a trademark of Hewlett-Packard”.

05 February 2009

GREDDY Case highlights importance of being first to use mark

In <i>Trust Co Ltd v Amornpornwiwat</i>, the Intellectual Property and International Trade Court has held that Trust Co Ltd had a better right to the trademark GREDDY, even though the defendant was the first to apply for the registration of the mark in Thailand. Among other things, the court held that Trust Co was the owner of the mark because it was the first to use it in Thailand in relation to its goods.

02 October 2008

BEVERLY HILLS POLO CLUB is not confusingly similar to POLO

The Intellectual Property and International Trade Court has overturned a decision of the Board of Trademarks refusing to register the trademark BEVERLY HILLS POLO CLUB. Among other things, the court held that the board had erred in finding that since the applicant had disclaimed the words 'Beverly Hills' and 'club', these words should not be taken into account in the assessment of likelihood of confusion.

09 September 2008

No likelihood of confusion between ROCKLETS and LOCKETS

The Intellectual Property and International Trade Court has reversed a Board of Trademarks decision in which the latter had found that the mark ROCKLETS for chocolate confectionery was confusingly similar to Mars Inc's trademark LOCKETS for similar goods. Among other things, the court held that there was no likelihood that consumers would be confused as to the origin of the goods.

16 June 2008

Application for CERASIL dismissed on grounds of bad faith

In <i>Unimin Corporation v Department of Intellectual Property</i>, the Board of Trademarks has held, among other things, that Industrial Mineral Development Co Ltd had applied for the registration of the trademark CERASIL in bad faith in an attempt to derive benefits from the goodwill attached to Unimin Corporation's unregistered trademark CERASIL.

24 April 2008

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

In <i>Avermedia Technologies Inc v Department of Intellectual Property</i>,the Intellectual Property and International Trade Court has reversed a Board of Trademarks decision refusing to register the mark AVERMEDIA for goods in Class 9 on the grounds that it lacked distinctiveness. Among other things, the court held that AVERMEDIA does not directly refer to the character or quality of the relevant goods.

12 March 2008

Significant step made towards accession to Madrid Protocol

The National Legislative Assembly has passed the interim cabinet's proposals regarding Thailand's accession to the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty. The proposals must now be endorsed by the King. This represents a significant step towards Thailand's accession to the Madrid Protocol.

08 February 2008

'Concurrent use' theory implemented for the first time by IP & IT Court

In <i>Grotto SpA v Department of Intellectual Property</i>, the Central Intellectual Property and International Trade Court has issued an extremely rare judgment implementing the theory of 'concurrent use' in order to allow the registration of the trademark GAS (and design). Although the theory of 'concurrent use' was introduced into Thai law in 1931, this is arguably the first time that the court has implemented this principle.

29 October 2007

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