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Thailand Enforces Its Marks

Among the Asian brands that are gaining worldwide fame are: Sony (Japan), Cathay Pacific (Hong Kong), Singapore Airlines (Singapore), San Miguel (Philippines), Wipro (India), Red Bull and Singha Beer, both from Thailand.

Every IP strategy starts with a solid trade mark registration portfolio. For example, one of the well-known marks in Thailand is Singha Beer. The mark is characterised by the term Singha and an illustration of a lion. It is a lager type of beer brewed by Boon Rawd Brewery and has been in production for more than 75 years. It is distributed in more than 30 countries across the world and protected in more than 50 countries worldwide.

Another famous Thai company is the Jaspal Group. The group started out as Jaspal & Sons in Bangkok in 1947. It began as an importer and distributor of bed and bath linen products and evolved into the highly diversified conglomerate it is today with interests in manufacturing, trading, retailing and real estate. It has a total of 100 stores in Thailand and overseas. Its trade mark, particularly its Santas mark, is protected in more than 40 countries.

Owners of internationally well-known marks are encouraged to supplement their registration portfolio with a watch service for identical and potentially similar marks. It is essential to file timely oppositions considering that the costs of challenging a pending application is much lower than those of filing an action to invalidate or cancel an existing trade mark. In addition, a watch service can point out marks that may cause dilution and eventually affect the strength and notoriety of an internationally well-known mark.

Red Bull is one company that has a firm resolve in protecting its mark. It has filed cancellation actions in Turkey and the UAE to protect its Red Bull mark. It has filed similar actions in China as well, when it discovered several kinds of counterfeit Red Bull drinks in 2005. Further investigation revealed than the Red Bull mark was registered by a certain Wei Tingjian in Class 30 for “non-medical nutritional drinks”. Not only did he register the Red Bull mark, he also licensed third parties to manufacture the infringing product. After five years of tough litigation, the Beijing People’s High Court ordered the mark cancelled.

Another important aspect that should be considered by owners of internationally well-known marks in Thailand is effective enforcement policies. Court action may be expensive but there are reasonable alternatives – such as undertaking border control protection. Thailand is a country that provides for a system of registration of marks with the Customs authorities. Usually, a copy of the registration certificate will be deposited with the Customs authorities who will act as watch dogs, policing the transhipment of counterfeit products along the borders.

Brand owners who wish to go global can learn from the Thai experience.