‘Remarkable development’ as Thai court upholds trademark protection for service station layout

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

‘Remarkable development’ as Thai court upholds trademark protection for service station layout

Sponsored by

tillekegibbins.png
Petrol_Station.jpg

Waralee Sripawadkul of Tilleke & Gibbins says that the overturning of a decision on a trademark application by ExxonMobil could have a substantial impact in the area of non-traditional marks

In early November 2022, a Thai appeals court overruled the Trademark Registrar’s decision and the Board of Trademarks’ ruling by upholding the registrability of an oil company’s trademark application for its branded service station layout.

This is the latest word in a long-running dispute between ExxonMobil and the country’s Department of Intellectual Property (DIP), which had previously rejected the mark as indistinctive.

ExxonMobil first filed applications in April 2015 for a trademark bearing a unique colourful drawing of the layout of a service station bearing its well-known registered ‘ESSO’ mark in international classes 4 and 35 in Thailand.

However, the Thai Trademark Registrar refused to register the mark, arguing that the mark was devoid of inherent distinctiveness because the service station layout drawing is directly descriptive of the applied-for goods and services related to oil products. According to the Registrar, the public would not be able to distinguish between the goods and services bearing ExxonMobil’s mark and those bearing the marks of others.

ExxonMobil appealed this refusal to the Board of Trademarks, which ultimately agreed that ExxonMobil’s marks are devoid of inherent distinctiveness. The Board explained that the dominant elements in the drawing consist of a common service station with fuel dispensers, which is directly related to the applied-for goods and services related to oil products. The Board also deemed that the submitted evidence was insufficient to prove that the mark had gained distinctiveness through use.

Civil complaint

ExxonMobil disagreed with these rulings and thus filed a civil complaint with the Intellectual Property and International Trade Court (the ‘IP&IT Court’) to revoke the Registrar’s decisions and the Board’s rulings.

The IP&IT Court examined the case and issued its judgment in favour of ExxonMobil, ruling that the marks are inherently distinctive. The court noted that to consider a mark’s distinctiveness, it is crucial to determine the elements that are recognisable and stand out in people’s minds. ExxonMobil’s mark consists of its registered mark ‘ESSO’ being placed in a position and text size that can be readily seen in the layout. Moreover, the mark ‘ESSO’ has been used in Thailand over a long period and has gained public recognition in Thailand and overseas. The court recognised that the ‘ESSO’ mark is recognisable and stands out in people’s minds, and thus it is the dominant element of the mark when considering the mark’s distinctiveness, even though it is smaller in size than the pictured service station and fuel dispensers.

In addition, the court noted that ExxonMobil’s mark is different from other marks because it features other words, such as “fuel technology” and “synergy”, plus an arbitrary placement of colours and shapes as elements of the service station and fuel dispensers. These are also dominant elements to be considered when examining the mark’s distinctiveness because they contribute to the general public’s ability to recognise that the goods and services bearing this mark originate from ExxonMobil.

The DIP appealed the case to the Court of Appeal for Specialized Cases, which agreed that ExxonMobil’s mark is inherently distinctive and registrable under the Thai Trademark Act, because the well-known ‘ESSO’ mark enables the public to understand that the goods bearing this mark originate from ExxonMobil.

However, the court held a differing opinion from the IP&IT Court regarding the service station and fuel dispensers featured in the mark, pointing out that the physical characteristics of these elements are common to service stations and fuel dispensers in general. Therefore, these elements are descriptive and are not subject to exclusive rights, though the mark as a whole remains inherently distinctive.

Comment

In the opinion of Tilleke & Gibbins, these judgments are valid proof that both courts have moved towards taking a more positive judicial perspective of non-traditional trademarks in Thailand. For this case, even though the Court of Appeal for Specialized Cases determined that the physical characteristics of the service station and fuel dispensers featured in the mark are descriptive, it found ExxonMobil’s mark inherently distinctive in its entirety and accepted it for registration.

Overall, the judgment stands as a remarkable development in the acceptance of non-traditional trademarks in Thailand and will likely encourage brand owners to seek trademark protection for new types of marks.

more from across site and SHARED ros bottom lb

More from across our site

News of an alliance between two Malaysian law firms and the launch of a self-help video aimed at supporting IP professionals through menopause were also among the top talking points
Speakers at the EUIPO’s IP Mediation Conference discussed how lawyers can act in tandem with clients during mediation, and the importance of showing a united front
A report that revealed top legal LinkedIn influencers are generating hundreds of thousands in advertising value is the push lawyers need to up their social media presence
Speakers at the EUIPO’s Mediation Conference say mediation can offer a ‘cathartic’ and effective alternative to litigation that IP owners should consider
Partner Scott Sudderth says he is looking forward to building strong client relationships and expanding the firm’s patent practice
Find out which firms secured the most nominations for Managing IP’s Asia-Pacific Awards 2025, ahead of the winners being revealed on November 6
Raluca Vasilescu joins our ‘Five minutes with’ series to discuss patent mining and watercolour painting
Jan Phillip Rektorschek, founding partner at Pentarc in Germany, explains why the firm broke away from Taylor Wessing and discusses its plans for staying competitive
Royal Mail Group wins copyright and database right infringement case, in a dispute that can be linked to the history of postcodes in the UK
Managing partner Mark O’Donnell explains why people are at the centre of the Australian outfit’s investment focus and how being independent benefits the firm
Gift this article