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Board of
Trademarks Decisions: New Trend
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Until
the first quarter of the year 2000, decisions of the Board of
Trademarks followed a more or less predictable pattern. However,
since the early part of 2000, when new faces appeared on the
Board to replace some members whose tenure had ended, a new
trend has emerged in the decisions made by the Board.
Take,
for example, the prevalent practice of the Trademark Registrar
to require, as a condition of registration, disclaimers from
applicants to the exclusive right of use of a part, word, or
device of a trademark which he considered non-distinctive under
Section 17 of the Thai Trademark Act 1991. In past appeals,
the Board either upheld the Registrar's decision or ruled in
favor of the applicant. However, this has not been the case
recently. In most of the appeals of this nature brought to it,
the new Board has ruled that the particular mark was not registrable
as a whole for the reason that the non-distinctive part of a
mark should be considered an equally vital part of the mark.
Hence, if a mark has a non-distinctive part, it is non-distinctive
as a whole and should be rejected regardless of the Registrar's
willingness to register the mark as long as his requirement
was met. Based on the unfavorable decisions handed down by the
Board recently, a trend can be seen among its members to consider
future cases in the same manner, suggesting that appeals under
these circumstances would be useless. The Board's decision would
only turn out to be unfavorable, and a new application in an
attempt to register the same mark would be difficult in view
of the trend.
Moreover,
the Board has the power to rule beyond the Registrar's initial
rejection of a trademark, as in the case of the trademark BRITISH
AMERICAN TOBACCO (word & device) filed by British American
Tobacco. In the Registrar's opinion, the word group BRITISH
AMERICAN TOBACCO must be disclaimed under Section 17 of the
Thai Trademark Act 1991 because it is a non-stylized juristic
name. However, he considered the device in the mark to be a
distinctive part. The applicant appealed to the old Board contesting
the Registrar's requirement of a disclaimer. In its decision,
the old Board stated that the mark BRITISH AMERICAN TOBACCO
(word & device) is not registrable as a whole because the
words BRITISH AMERICAN TOBACCO signify "tobacco belonging
to the British and American people". As such, the mark
is prohibited under Section 8(12) of the Trademark Act 1991
and the decree issued by the Ministry of Commerce, Volume 11
(B.E. 2540). It is obvious that the Board paid no regard to
the aspect of the mark being a non-stylized juristic name as
initially raised by the Registrar.
Interestingly,
the new Board recently rendered a decision related to the same
mark, BRITISH AMERICAN TOBACCO (word & device), filed by
the same applicant in a different class of goods, which was
ultimately accepted for registration. The Registrar initially
rejected the application on the basis that BRITISH AMERICAN
TOBACCO is a non-stylized juristic name, and he asked the applicant
to disclaim the words. The applicant appealed to the old Board
at the time, which thereafter, issued an official notification
stating that the mark BRITISH AMERICAN TOBACCO (word & device)
was not registrable because the word group BRITISH AMERICAN
TOBACCO, the vital part of the mark, means "tobacco belonging
to the British and American people". When used with goods
in Class 28, the mark was deemed to be misleading and would
cause public confusion as to the origin and ownership of the
goods. The old Board thus ruled that the mark was prohibited
from registration under Section 8(12) of the Thai Trademark
Act 1991 and the decree issued by the Ministry of Commerce,
Volume 11 (B.E. 2540). The old Board, at that time, however,
decided to hold the application in abeyance and let the applicant
file an explanatory letter within 60 days following the date
of receipt of the official notification.
Based
on our experience, applications rejected in this manner were
always ultimately refused registration as a whole by the old
Board. However, it was fortunate that the above case came under
the consideration of the new Board. Consequently, upon the filing
of the required explanatory letter, the new Board ultimately
issued a ruling that even though BRITISH AMERICAN TOBACCO is
the name of a juristic entity and not represented in a special
or stylized design, the mark is combined with a device. The
mark is thus considered to be a distinctive trademark under
Section 7(1) of the Thai Trademark Act 1991. In addition, the
evidence of use submitted by the applicant sufficiently proved
that the trademark is widespread and well known to the extent
that confusion as to the origin and ownership of the goods will
not occur. The applicant's trademark is, therefore, not contrary
to Section 8(12) in combination with the decree issued by the
Ministry of Commerce, Volume 11 (B.E. 2540). The trademark BRITISH
AMERICAN TOBACCO (word & device) is thus registrable under
Section 6 of the said Act.
From
the foregoing discussion, it can only be concluded that the
new Board members do play an important role in influencing and
deciding the outcome of appeals, which has given rise to this
new trend.
For
more information, please contact Mrs.
Supatra Watanavorakitkul,
Deputy Managing Director - Trademark Department, Intellectual Property
Division, Tilleke & Gibbins (e-mail supatra.w@tillekeandgibbins.com).
©2000 Tilleke
& Gibbins, Bangkok, Thailand
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