Supreme Court Fortifies Ban on Monopolizing Common Trade Imagery

In a ruling with widespread implications for trademark registrability, Thailand’s highest court, decision no. 2314/2564, has upheld the invalidation of pharmaceutical trademarks depicting the commonplace image of a “sage” or “yogi” figure. The decision reinforces the principle that truly generic or commonplace trade imagery cannot be monopolized by any single brand owner.

Trademark Revocation Saga:

The legal battle stemmed from a rival firm’s successful applications in 2014 to cancel six registrations owned by a company for marks featuring a cross-legged, robed figure representing a “sage” or “yogi”. These covered products like cough medicines, anti-itch powders and medicated talcum powders.

The Trademark Board eventually ordered revocation of four registrations in 2016 while allowing two stylized versions to survive. It ruled the four canceled marks comprising essentially just the “sage/yogi” image lacked inherent distinctiveness under Section 7(1) of the Trademarks Act. The depiction was deemed a prohibited common trade representation for medicinal products under a 2006 Registrar’s Notification.

The registration holder appealed, with mixed results at the Intellectual Property & International Trade Court and Specialized Appeals Court. Both lower instances had reinstated the four revocations, accepting arguments that the designed figure itself established acquired distinctiveness through extensive prior use as per Section 7(3) of the Act. Ultimately, the Supreme Court’s IP Division took a stringent view agreeing with the initial Board finding of banned common imagery. 

Key Findings:

The Court characterized the “yogi/sage” illustration as the marks’ essential and predominant feature matching the prohibited Registrar’s listing, rather than any accessory wording or stylization. It held Section 7(3) on acquiring distinctiveness through use was inapplicable. This provision only allowed non-inherently distinctive word marks a chance at registration based on marketplace recognition – not device marks like designed imagery.

Since the four revoked registrations consisted of essentially just the prohibited “sage” image lacking inherent distinctiveness, their acceptance for registration violated Section 7(1)’s standards ab initio and was improper. While a 2016 amendment did extend Section 7(3)’s acquired distinctiveness avenue to certain device marks going forward, this could not be applied retroactively to pre-existing registrations under transitional rules.

Preserving Competition in dismissing the appeal, the Supreme Court’s judgment reinforces the principle that common imagery, symbols, or depictions already used and associated with an entire product category cannot be monopolized through trademark registration. This preserves fair competition and avoids causing public deception regarding source.

The Supreme Court reaffirmed the narrow exceptions where acquired distinctiveness through extensive prior use can secure trademark rights over marks initially lacking inherent distinctiveness. However, the evidentiary threshold remains stringent, especially for device marks mimicking common trade imagery.

The precedent guides trademark owners and examiners on the registrability limits for common symbols, packaging trade dress, or other imagery already widespread within a particular industry segment. It could benefit smaller businesses by preventing large competitors from locking up monopoly rights over commonplace imagery integral to product marketing.

As Thailand increasingly integrates into global IP norms, this ruling aligns its trademark policies closer to preserving free competition and preventing monopolization of generic imagery that should remain in the public domain for all to use.

Author: Panisa Suwanmatajarn, Managing Partner.

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