Region: Thailand

Starbucks falls prey to accusations of bullying in trademark dispute

Damrong Maslae and his brother Damras are two independent Thai coffee vendors who have recently become caught up in what has been labelled a ‘David vs Goliath’ battle after their company Starbung was sued by Starbucks for trademark infringement. While the case has now been settled, it highlights the difficulties facing trademark counsel who are concerned that certain enforcement actions could lead to negative publicity.

15 November 2013

Taking positive strides to overcome brand missteps in Asia

A Thai company owned by Unilever recently came under fire for promoting its skin-whitening products by offering cash prizes to students. In light of a social media backlash that criticised the brand for appearing to link education to fair skin, Unilever Thai Trading issued a public apology over any misunderstanding regarding the campaign. Brand consultants advise that companies which find themselves in hot water should react in exactly this way - quickly, transparently and honestly – to minimise any potential brand damage.

11 November 2013

The world’s first BioEconomy Academy’s ambitious plans to brand and market GIs

Rouse has entered into a partnership with Thailand’s Biodiversity Economy Development Office and the United Nations Development Agency to launch the world’s first BioEconomy Academy. The academy will work closely with WIPO to create branding strategies for Thailand’s geographical indications, and its efforts to highlight the importance of IP could improve the domestic framework for all brands and give Thai companies a renewed focus on international markets.

12 September 2013

Plaintiff held to have better right to trademark despite failing to renew it

The Supreme Court has held that plaintiff Tong Cheng Iron Works Co Ltd had a better right to the trademark SWAN than defendant Chumsin Inter (1999) Co Ltd, even though the mark had been cancelled following the plaintiff’s failure to renew its registration. The court found that the plaintiff and its local distributor had continued to use the mark. This judgment may indicate that the Thai courts have accepted the concept of common law trademark rights.

11 July 2013

10th edition of Nice Classification is implemented

As part of Thailand’s efforts to join the Madrid Protocol by 2015, the Trademark Office has announced the implementation of the 10th edition of the Nice Classification for all new applications and renewals submitted after March 1 2013. The purpose of this move is to bring trademark registration processes in Thailand into line with those of many other countries. This should facilitate the task of international applicants and trademark counsel when classifying goods/services.

03 May 2013

Ferrari's 'prancing horse' device registered under 'concurrent use' provision

The Supreme Court has allowed the registration of Ferrari’s 'prancing horse' device, despite the existence of an earlier mark containing a 'prancing horse' device, concluding that both marks had been used honestly and concurrently by both parties. The Supreme Court also overturned the part of the IP & IT Court’s decision that ordered Ferrari to add the word 'Ferrari' in Roman characters or other distinguishing elements to its mark prior to registration.

13 February 2013

Draft Tobacco Consumption Control Act: plain packaging and beyond

In the wake of Australia’s legislation, it seems that Thailand’s Ministry of Public Health may also be considering introducing plain packaging. A current draft Tobacco Consumption Control Act is set to introduce more restrictions, including the government dictating the design of tobacco product packaging.

15 November 2012

Supreme Court considers issues surrounding concurrent use registrations

In <i>Anna Sui Corp v Department of Intellectual Property</i>, the Supreme Court has found that the trademark ANNA SUI for goods in Class 25 was registrable, despite the fact that it was confusingly similar to the earlier registered trademark ANNA IS, which also covered Class 25 goods. The decision shows that, in order to obtain registration of a mark under Section 27 of the Thai Trademark Act, it is necessary to prove the good faith of the applicant.

27 September 2012

Supreme Court clarifies when mark is suggestive, rather than descriptive

In <i>Liebherr-International AG v Department of Intellectual Property</i>, the Supreme Court has held that the Board of Trademarks had erred in finding that the mark BIOFRESH for “apparatus for refrigerating and freezing” was not registrable because it lacked distinctiveness. The Supreme Court found that BIOFRESH was suggestive, rather than descriptive.

04 May 2012

Supreme Court finds ‘bull’ marks not to be confusingly similar

In <i>TC Pharmaceutical Industrial Co Ltd v Bullsone Co Ltd</i>, the Supreme Court has upheld a decision of the IP & IT Court in which the latter had found that the mark BULLSPOWER for goods in Classes 1, 2 and 4 was not confusingly similar to the earlier trademark RED BULL and related 'bulls' device.

16 December 2011

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