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Thailand – Washington Apple Commission vs Department of Intellectual Property (DIP)

Washington Apple had successfully registered the mark “Washington” and “apple picture” after the Supreme Court of Thailand revoked the Trade Mark Board decision in the Supreme Court Decision No. 5449/2549 (2006). The trade mark application number 456808 for mark in class 31 for fresh apple was rejected by the Trade Mark Board (Board of Appeal) on the ground that it was prohibited because the word “Washington” is the geographical name. Moreover, the apple picture has the direct reference to product.

Section 7 paragraph 2 of Thai Trade Mark Act prohibits the use of Geographical name to be the trade mark. It appears that the name “Washington” is the name of capital of United State of America, it can mislead the public to believe that the products are originated from USA. The apple picture is also prohibited under the same section because it has the direct reference to product. The “apple” device is regarded as common for trader in the class 31. Therefore, the Trade Mark Board reaches to conclusion that the mark is not distinctive under section 7.

However, section 7 provide in paragraph 3 that even if the name, word, or statement that is not distinctive, it is registrable if the owner can prove that they use the mark until it acquire distinctiveness in Thailand. DIP provides the guideline which can be summarised as follow:

1. The mark has been used in Thailand continuously for a reasonably long period of time such that consumers to whom the goods/services are targeted would know that the goods/services are distinguished from those of others.

2. The mark may be regarded only as distinctive for those goods or services of which such use is proven.

3. The evidence of use submitted to prove use of the mark must show exactly the same mark as shown in the trade mark application.

The evidence to prove that the mark is distinctive through use includes receipt, invoice, waybill, license, petition, or evidence of advertisement.

The Supreme Court found that the geographical name can also enjoy exemption under the section 7 paragraphs 3 as it is the word, or statement. This decision reversed the Central of Intellectual Property Court Decision where it stated that Geographical name cannot enjoy the exemption under section 7 paragraph 3.

The Supreme Court also reverses the evidence assertion of Trade Mark Board. The Board of Trade Mark found that the evidence submitted by applicant could not prove that the mark acquire the distinctiveness. In particular, the Board of Trade Mark stated that the evidence like copy of trade mark registration is not the evidence of extensive use in Thailand. However, the Supreme Court found that the Board of Trade Mark fail to give the credited reason why the evidence of invoice, waybill, and bill is not sufficient to prove that the mark is distinctive through use. As such the Supreme Court of Thailand reverses the decision of Central of Intellectual Property Court (IP court).

In further to this, the Supreme Court asserts that the evidence submitted by applicant can prove that the public in Thailand can distinguish the applicant’s product from other. In addition, applicant has shown to the court of evidence of promotional activity, table information of export, invoice, advertisement, etc. The court also found that the fresh apple of applicant had been widely distributed in many provinces in Thailand for more than ten years. It is also found that the sale volume of applicant’s product is very high. By these evidences, the Supreme Court reaches to the conclusion that the applicant’s mark acquires distinctiveness through extensive use.

This Supreme Court decision clarify that even if geographical name is prohibited for trade mark registration under section 7 paragraph 2, it can be registrable if the mark owner has extensively used it. If the mark owner has extensively used, the Trade Mark Office cannot deny the registrability.

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