Supreme Court Ruling on Geographical Name for PHOENIX
Fact Summary
The plaintiff filed an application to register the word “PHOENIX” as a trademark. The defendant issued an order refusing registration, stating that the mark lacked distinctiveness and was ineligible for registration under Section 6 of the Trademark Act B.E. 2534 (1991), as “PHOENIX” is the name of the capital city of the state of Arizona, USA, and thus considered a geographical name under Section 7(2).
The plaintiff appealed to the Trademark Board, but the Board upheld the Registrar’s decision, ruling that “PHOENIX” is a geographical name lacking distinctiveness under Section 7(2) and the Ministry of Commerce Notification No. 5 (1992).
The plaintiff then filed a lawsuit against the defendants at the Central Intellectual Property and International Trade Court (Central IP&IT Court), seeking to revoke the Registrar’s order and the Board’s decision, and requesting the Registrar to proceed with registering the “PHOENIX” mark.
Court Decision
The Central IP&IT Court ruled in favor of the plaintiff, revoking the Registrar’s order and the Trademark Board’s decision, and instructing the Registrar to proceed with registering the “PHOENIX” mark.
The defendants appealed to the Supreme Court.
Supreme Court Analysis
The Supreme Court examined the meaning of “PHOENIX” and noted that while it primarily refers to a mythical bird, it is also the name of the capital city of the state of Arizona, USA.
Concerning the Ministry of Commerce Notification No. 5 (1992), which defines geographical names ineligible for registration under Section 7(2), the Supreme Court observed that “PHOENIX” does not fall under item 4 (capital city of a country) but could potentially fall under item 5 (other geographical names known to the general public).
However, the Supreme Court found that the Registrar and the Trademark Board failed to consider whether “PHOENIX” is a geographical name known to the general Thai public, as required by item 5. This omission was a legal error.
The Supreme Court dismissed the defendants’ claims that “PHOENIX” is a well-known city name due to American football and NBA coverage, as these claims were unsubstantiated in the Registrar’s order and the Board’s decision.
Key Takeaways
- The Supreme Court upheld the lower court’s decision, ruling that the Registrar and the Trademark Board erred by not considering whether “PHOENIX” is a geographical name known to the general Thai public.
- Geographical names may be registrable as trademarks if they are not known to the general public, as per the Ministry of Commerce Notification.
- Trademark authorities must thoroughly examine and provide reasoning for their decisions, particularly when invoking exceptions or specific criteria.
- The ruling emphasizes the importance of a comprehensive and well-reasoned examination of trademark registrability, taking into account all relevant factors and criteria.
This landmark decision provides valuable guidance on the registration of geographical names as trademarks in Thailand, clarifying the applicable legal standards and underscoring the need for thorough examination by trademark authorities.
Author: Panisa Suwanmatajarn, Managing Partner.
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