Supreme Court Ruling Opens Door for Personal Names as Trademarks in Thailand

In a groundbreaking judgment, Thailand’s Supreme Court, decision no. 2652/2566, has cleared the way for personal names to be registered as trademarks, marking a significant shift in the country’s intellectual property landscape. The ruling stems from a long-standing legal battle over the application to register the prestigious name “Pierre Cardin” as a trademark.

The Case History:

The plaintiff believed to be an entity associated with the late French fashion icon Pierre Cardin, had applied to register his personal name as a trademark in Thailand back in 2013. However, the Trademark Registrar rejected the application, citing lack of distinctiveness under Section 7 of the Trademark Act B.E. 2534 (1991).

This kicked off a series of appeals, with the Trademark Board and the Intellectual Property and International Trade Court (CIPITC) upholding the rejection. The CIPITC’s interpretation was that personal names could only be registered if displayed in a special character, as per the legal requirement for “trade names.”

Supreme Court’s Ruling

The case eventually reached the Supreme Court’s IP Division, which delivered a groundbreaking ruling that could open floodgates for personal names and surnames to be trademarked more easily in Thailand. Examining Section 7(1) which outlines what constitutes a “distinctive” mark, the Supreme Court made a crucial distinction. It ruled that the phrase “displayed in a special character” only applies to “trade names” and not to “first names and surnames of natural persons which are not ordinary surnames.”

As such, the Supreme Court found that “Pierre Cardin” inherently serves to distinguish the goods bearing that name from others, by virtue of being an uncommon personal name not directly descriptive of the products. No special display of the name was required to consider it a distinctive trademark.

Implications and Looking Ahead:

This precedent-setting ruling overturns decades of narrower interpretation that demanded personal names meet more stringent criteria like special display properties to be registered as trademarks in Thailand. It opens up immense branding opportunities, allowing famous personalities, celebrities, artists and even ordinary individuals to capitalize on the name recognition and goodwill associated with their personal names and surnames across product lines.

However, the Supreme Court’s emphasis on “not an ordinary surname” suggests scrutiny will remain for very common names. Trademark applicants may still need to demonstrate how a personal name is distinctive and not merely descriptive of the products.

As Thailand increasingly integrates with the global intellectual property regime, this ruling aligns its trademark laws closer to more permissive jurisdictions that routinely allow personal names as trademarks based on acquired distinctiveness through use. The case has now been remanded back to the Trademark Office to proceed with the registration of the iconic “Pierre Cardin” mark, in what is likely to inspire a fresh wave of personal name trademark filings by brand owners in Thailand.

Author: Panisa Suwanmatajarn, Managing Partner.

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