Thailand: Supreme Court provides guidance on honest concurrent use

August 29, 2018

Section 13 Paragraph 2 of the Thai Trademark Act directs registrars to refuse applications for marks that are similar to a prior registered mark, given that such similarity is likely to mislead or confuse the public as to the ownership or origin of the goods claimed. In several past cases, in order to demonstrate extensive reputation of a mark and dispel the possibility of consumer confusion under this provision, the party submitted extensive use evidence.

The Central Intellectual Property and International Trade Court (CIPITC)'s decision number 127/2557 (2014) and the subsequent Supreme Court's decision number 8019/2560 (2017) on the same case on appeal have shed valuable light on the relationship between extensiveness, honesty and concurrence of trade mark use and coexistence of arguably conceptually similar trade marks.

The fluttering bird saga

The case of Jaspal Co., Ltd. v The Department of Intellectual Property – 2012 which gave rise to the above-mentioned decisions involved an application by the plaintiff to register itstrade mark in class 25, which was refused by the registrar due to its similarity with a third party's registrations for themark in classes 18 and 25. The plaintiff appealed to the Trademark Appeal Board, arguing that its mark had been used extensively and in honest concurrence with the prior registered marks, which rendered any consumer confusion highly unlikely. The Appeal Board dismissed the appeal on the basis that, while the marks have minor visual differences, they are conceptually similar and their pronunciations identical (Bird Brand). The entire body of use evidence filed to prove an extensively recognised reputation was not sufficient.

The plaintiff appealed to the CIPITC, maintaining its original arguments, supplemented with a reasoning that the clear differences in the origins of the goods (the plaintiff's goods originating in Thailand, while those of the third-party in the USA) are a significant factor indicating to the public that the marks used on the respective parties' goods are different. Furthermore, the plaintiff claimed that it never intended to benefit from the third party's reputation in the development and use of its own mark.

The legal basis for use evidence

While both the CIPITC and Supreme Court agreed the plaintiff's mark was registrable, the Supreme Court overturned the CIPITC's reasoning. The CIPITC observed that the marks are visually different, the plaintiff did not have any dishonest intention to benefit from the prior mark's reputation and that its use was extensive. The CIPITC held the consumer confusion requirement for rejecting marks under Section 13 was not met, and thus, the marks were dissimilar.

On appeal, the Supreme Court disagreed with the CIPITC's reasoning on mark similarity. The Supreme Court found the marks are visually similar and that such similarity is likely to cause consumer confusion. However, evidence of extensive, honest and concurrent use comes into play under Section 27 of the Trademark Act, which states that marks rejected under Section 13 can be registered if honest concurrent use can be proved.

The Supreme Court relied on Section 27 to hold that the plaintiff's evidence of use, contrary to the Appeal Board's opinion, sufficed to prove honest concurrent use. This reasoning indicates that the similarity between marks and the likelihood-of-consumer-confusion test should be applied to the inherent features of the marks only, without considering any external factors such as extent of use or reputation. Extensive, honest and concurrent use of the subject mark does not negate but mitigates the likelihood of consumer confusion due to the conceptual similarity of the marks.

Sufficient level of use evidence

The Trademark Appeal Board's Regulations on Appeal and Cancellation Procedure B.E. 2545 (2002) require that evidence to prove honest concurrent use under Section 27 must demonstrate trade mark use in Thailand for the goods claimed for a reasonably long period of time. To illustrate this requirement, the evidence submitted by the plaintiff at the Supreme Court stage included:

evidence of the mark's conception and first use – to demonstrate honest intention of the applicant;
evidence of the applicant's marketing of goods under the subject mark;
advertising materials in various media;
evidence of advertising budgets for goods under the subject mark;
sales figures of goods under the subject mark over several years.

Also, use evidence of the subject mark as part of a larger composite mark was deemed acceptable evidence.

To conclude, when claiming honest concurrent use after receipt of a similarity rejection, applicants should bring claims under Section 27 of the Trademark Act, and the evidence submitted to substantiate such claims must demonstrate extensive, honest and concurrent use of the trade mark.