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Describing the Specifications of Goods or Services for Trademark Registration in Thailand is Much More Important Than You Think

15

OCT

2020

One of the significant requirements for filing an application for trademark registration in Thailand is that the applicant must clearly specify the list of goods or services for which the protection is sought. From the author’s experience, it seems that many entrepreneurs do not recognize the importance of describing the specifications of goods or services submitted for the trademark registration. We, therefore, often find many entrepreneurs, startup companies or SMEs who register their marks with only one or two items of goods or services, despite providing other goods or services under the same marks. This likely occurs because most entrepreneurs are unaware of the consequences of incomprehensive description of specifications of goods or services, which is similar marks may be registered by third parties if the applied goods or services are different.

The case of EIKON vs EIKON

Here, the plaintiff, applied for the mark “”, i.e. “Thailand service mark application no. 728358”, in Class 42, for the “Computer rental services; Designing computer software for others; Update computer software for others; and Computer software rental services” from Thomson Reuters Finance SA. After reviewing this application, both the Registrar and the Board of Trademarks (“the Board”) refused to register this mark because it was confusingly similar to the trademark application/registration no. 639223/Kor303678 “”, which had been previously registered for goods in Class 9 namely; “Voltage controllers; Fuses; Switches, electric; Plugs; Reversing switches; Push-button switches; Remote control switches; Sockets, electric; Residual-current devices; Residual-current circuit breakers; Gas and carbon monoxide detectors; Smoke detectors (and other anti-theft devices)”.

The plaintiff therefore filed a complaint with the Central Intellectual Property and International Trade (IP&IT) Court and the Supreme Court respectively. In this case, the Supreme Court disagreed with the decisions of the Registrar and the Board. Even though the Supreme Court recognized the similarities in whole appearances and pronunciation between both marks, the Supreme Court firmly addressed that all of these similarities may not cause confusion or mislead the public as to the origin or source of the goods or services due to the differences of (1) the applied goods and services and (2) the target customers. The Court held that there was no evidence to prove that the plaintiff had any intention to benefit from the prior-registered mark. The plaintiff’s mark “ was therefore registrable because it was NOT confusingly similar to the prior-registered mark“”.

The noteworthiness of this case is that, at the Registrar and the Board’s stages, both considered the plaintiff’s mark and the prior-registered mark to be (1) the same invented word – without any meaning found in the dictionary, (2) apparently provided with capital letters, and (3) pronounced in the same way. Even if they were applied for different classifications of goods or services, the applied services of the plaintiff still could be used as anti-theft devices. The goods or services between them are thus relevant to each other.

However, the Supreme Court found the specifications of goods and services and the target customers of both parties, different and irrelevant. The Supreme Court took the attentiveness of the customers in both industries into consideration, as shown in the judgment, “…as the plaintiff’s services are mostly involved with technological and electronic advancements, the service receivers are therefore knowledgeable and interested in technological and electronic advancements and will carefully choose the service provider who is trustworthy and capable to deliver the services (and maintenance services) with full quality, not just consider merely the overall appearances. For goods of the prior-registered mark, they are all electrical appliances and devices which are related to the safety of products, lives, and property of the consumers, so the buyers of these kinds of products will consume the goods with carefulness. Therefore, the public is not likely to be confused or misled.”

The above-mentioned decision by the Supreme Court is much welcomed in Thailand, which is noted for very strict Trademark Examiners at the Registry and Board Level. The author hopes that the Trademark Registry will take note of this decision and will be able to use this case as precedence, when exercising its discretion during examination of trademarks.

Saowanee Leewijitsin is an IP Executive at KASS IP Services (Thailand) Company Limited. KASS is an established intellectual property firm with over 20 years of experience and offices in Malaysia, Singapore, Indonesia, Myanmar, Thailand and Vietnam. For more information, visit www.kass.asia or drop an e-mail to kass@kass.asia.

About the Firm

KASS IP Services (Thailand) Company Limited
Address 11/1 AIA Sathorn Tower, 9th & 10th Floor, South Sathorn Road, Yannawa Sub-district, Sathorn District, Bangkok, 10120 Thailand
Tel 66-8-9700 1614
Fax
Email hello@kass.asia
Link www.kass.asia

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