Region: Thailand

IP owners advised to take precautions as new class action legislation is approved

New legislation on class action lawsuits, which was recently approved by the National Legislative Assembly and published in the <I>Royal Gazette</I>, is due to come into force in December 2015. IP owners are advised to take the necessary precautions to prepare for the implementation of the new law, and to protect themselves against potential product liability claims which may lead to a class action.

27 July 2015

Supreme Court recognises DOLCE & GABBANA and D&G as well-known marks

In <I>Gado Srl v Pornlada Bag Co Ltd</I>, the Supreme Court has confirmed that Gado Srl’s trademarks DOLCE & GABBANA and D&G are well known in Thailand, and ordered the cancellation of the defendant’s registration and pending applications for the marks D&G and D&C in Classes 18 and 25.

14 July 2015

New Customs software program launched

The Intellectual Property Rights Coordination Centre has recently developed a software program that brand owners can use to record their marks for monitoring. The database will provide the most up-to-date contact details for trademark owners or their representatives, as well as information about the trademarks registered with the Department of Intellectual Property.

25 June 2015

Recent Board of Trademarks decisions on similarity encouraging for trademark applicants

In the past, if a registrar refused to register a trademark on the ground that it was similar to a registered mark, the Board of Trademarks would typically confirm the registrar’s order. However, in two recent cases the board reversed the decision of the registrar, thereby showing a willingness to challenge the criteria used by the registrars and focus on the actual likelihood of confusion among the public.

03 June 2015

Supreme Court considers continued and honest concurrent use of trademarks

The Supreme Court has held that clothing company Jaspal Co Ltd had successfully proved the continued and honest concurrent use of its CHAPS marks in Thailand. The judgment illustrates that evidence showing continued and honest use of a trademark in the country can be a valuable tool for trademark owners if their marks lack inherent distinctiveness and/or are similar to an earlier registered trademark.

19 May 2015

Supreme Court rules on marks similar to INNs

The Supreme Court has dismissed an appeal against a decision of the IP&IT Court in which the latter had found that the order to cancel the registration of the trademark VALATAN for Class 5 goods was lawful. Among other things, the Supreme Court agreed with the IP&IT Court that the mark VALATAN was similar to the INN Valsartan.

16 March 2015

Important updates to IP regime implemented

Following the installation of a new government on September 15 2014, a number of important updates have been made to the country’s IP regime. Among other things, the new director general of the Department of Intellectual Property has put in place a plan to clear the backlog of trademark and patent design applications by the first quarter of 2015. Moreover, two sets of amendments to the Trademark Act are currently under review by the Cabinet.

08 December 2014

Supreme Court: generic or common words may be distinctive

The Supreme Court has held that Club 21 Private Limited’s trademark CLUB 21 was registrable for goods and services in Classes 16, 25 and 35. The registrar and the Board of Trademarks had refused to register the mark on the ground that it lacked distinctiveness. Among other things, the Supreme Court stated that the provisions of the Trademark Act do not stipulate that a generic word or a word with a general meaning cannot be distinctive.

25 July 2014

Board of Trademarks decisions highlight difficulty of cancelling mark for non-use

Recent decisions of the Board of Trademarks have highlighted the difficulties faced by petitioners seeking to prove non-use of a mark in a cancellation action. Based on the decisions, it seems that reports by independent investigation firms or documents taken from the Internet are insufficient to prove non-use or an intent not to use.

22 May 2014

Supreme Court orders registration of 'polo' mark despite existence of earlier 'polo' marks

In <i>Young Sangyo Co Ltd v Department of Intellectual Property</i>, the Supreme Court has overturned a decision of the IP & IT Court in which the latter had found that the plaintiff’s figurative mark BEVERLY HILLS POLO CLUB was confusingly similar to the earlier figurative mark SANTA BARBARA POLO & RACQUET CLUB. The Supreme Court stated that, due to its appearance and pronunciation, the plaintiff’s trademark was clearly different.

23 January 2014

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