THAILAND INTELLECTUAL PROPERTY – TRADEMARKS
TRADE DRESS PROTECTION IN THAILAND
It is perhaps worrying to note that the Thai Trademark Act 1991 (as amended by the Trademark Act (No.2) 2000 does not explicitly confer protection over the ‘Trade Dress’ of products. Trade Dress protection would typically be treated as separate and distinct from that of traditional Trademarks, the latter which may be considered as the sum of trade names, symbols, marks, etc. enshrined in the Trademark Act. On the other hand, Trade Dress protection is a generally more expansive, encompassing combination of elements such as the overall packaging of products.
In light of Thailand’s accession to the World Trade Organization a while ago, implication of the Trade-Related Aspects of Intellectual Property saw Notifications from the Department of Intellectual Property / Ministry of Commerce setting out guidelines for the Registration of Figurative Elements.
This facet can be observed to have been successfully utilized by proprietors in obtaining protection for the ‘packaging designs’ of their products for example in The Coca-Cola Company v DIP (Supreme Court Judgement 7024/2549) and in The Coca-Cola Company v DIP (Supreme Court Judgement 630/2551) whereby the Supreme Court allowed the Coca-Cola and Sprite bottles registration as Trade Marks respectively.
Notwithstanding, at DIP level, it remains difficult to satisfy the DIP of registrability where the latter tends to hold representation of containers of the product to be descriptive of the product itself. Trademark Applications for a ‘Perfume Bottle Mark’ by Carolina Herrera and a ‘Juice Bottle Mark’ by Australiana Group Holdings have been likewise rejected.
Despite the unsuitability and inaccessibility of the avenue, proprietors need not feel too helpless, as decisions do show that due recognition is in fact given to such IPRs. For instance, recently in 2011 the Supreme Court in its Judgement 2335/2553 in the case of Schneider Electric Industries SAS v Thai Bumroong Electric Co Ltd granted an injunction and compensatory damages to the Plaintiff for the Defendant’s ‘passing-off’ of its Trade Dress.
In its Judgement, the Supreme Court seconded the Central Intellectual Property and International Trade Court’s finding that the Defendant’s packaging was confusingly similar to that of the Plaintiff’s, both having consisted of similar colors, layouts, shapes, content, slogan, labels, and pictures. Further, the parties’ products and Marks themselves were held to be similar
Although there is imminent need for a more adequate avenue for acquisition of Trade Dress rights in Thailand: Proprietors should be able to rest assured that the Trade Dress of their products are IPRs that are at least enforceable vide common law ‘passing-off’ even though unregistered.
For more information on the foregoing, please contact the author JOEL LOO SEAN EE, the Bangkok-based Senior Regional Counsel at Kelvin Chia Thailand and a member of Kelvin Chia Partnership’s Regional Practice Group at Joel.Loo@KCPartnership.com.
This article is published to provide general information only and is not offered as specific advice on any particular matter – This information is to be taken subject to proper consultation with a lawyer.