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Thailand: Use of the same mark for alcoholic and non-alcoholic products

The Thai Alcohol Control Act (the ACA) B.E. 2551, enacted in 2008 sets out the legal framework for trade restrictions on alcoholic beverages in Thailand. Along with the related implementing Ministerial Regulations, the ACA has had implications for trade mark owners' rights.

The ACA has not only affected marks registered for alcoholic beverages, but it has also affected goods and services in other classes. In the Central Intellectual Property and International Trade Court's (CIPITC) decision Samarn Footrakul / Medial for Youth Foundation v The Department of Intellectual Property – 2015, the CIPITC specified boundaries limiting the seemingly overarching effect of the ACA.

In 2011, a cancellation action was brought against a mark registered for alcoholic beverages and for goods and services in other classes. In the cancellation action, the claimants argued that the registered mark for water products should be cancelled given it was identical to a different registered mark owned by the same owner for alcoholic beverages. The Trademark Appeal Board upheld the registration, and the petitioners appealed. The resulting CIPITC decision number 48/2558 (2015) clarified some key points:

  • The claimants argued that the mark owner's true intention in registering the mark for water products was to circumvent the ACA's restrictions on alcohol product advertising. The claimants argued that the public primarily associates the mark with alcoholic products, and that frequent exposure to the mark as used for water products would still have the effect of promoting alcohol products. The claimants deduced that the owner had no intention of using the mark for water products under the subject registration. However, the CIPITC viewed samples of water bottles featuring the subject mark as conclusive evidence of use of the mark for water products, and thus the CIPITC dismissed this argument.

  • Further, the claimants argued using the mark, as it was identical to one widely recognised for alcohol products, for other products, would mislead consumers as to the true nature of the products. The CIPITC rejected this argument, highlighting that the Trademark Act provides mark owners with the exclusive right to register their marks for the same or different products for any subsequent marks, which are the same or represent slight variations of their registered marks. The CIPITC also observed categorically that such a right is widely exercised in contemporary trade.

  • The claimants also argued the registration for water products was in contravention of public order and good morals, which is a valid cause for trade mark cancellation under Section 63 of the Trademark Act. The CIPITC held that contravention of public order in this sense must be demonstrated by the existence of a specific legal provision deeming use of the subject trade mark a legal offence. The CIPITC found that, at present, neither the APA nor its accessory instruments specify any offence arising when a mark registered for non-alcoholic products is used for non-alcoholic products, even if the same mark is also registered and used for alcoholic products. Thus, no contravention of public order was proved in the case, as the mark has been registered and used for water products. This use is subject to neither the ACA's regulatory effect nor otherwise constitutes a legal offence.

The CIPITC's decision illustrates that, while it is possible to prevent trade mark use based on a claim that such use is against public morality, the ACA does not provide a basis for such a claim if a trade mark is registered and used for both alcoholic products and non-alcoholic products.

Daniel Greif

Dhanasun Chumchuay

Spruson & Ferguson

Nos. 496-502 Amarin Plaza BuildingUnit Nos. 1806-1807, 18th Floor, Ploenchit Road, Lumpini Sub-District, Pathumwan District, Bangkok 10330 Thailand

Tel: +66 2 305 6893

mail.asia@spruson.com

www.spruson.com

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