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.

Other Articles

• Thailand and China Strengthen Cooperation on IP Enforcement
• Ride-Sharing Platforms Face New Digital Governance Requirements
• New Apostille Rules Simplify Thailand Working and Retirement Visa Renewal Documents Requirement
• Billing Software and Electronic Invoicing: Understanding Thailand’s Digital Tax Compliance Framework
• Thailand Launches “Economic Cabinet Plus” Plan to Drive High-Growth and High-Income Status
• Thailand’s Draft Immigration Act and Hotel Act: A Major Step Towards Digitalization and Regulatory Reform

Navigating the Complexities of Trade/Service Mark Registration: Valuable Lessons from a Court Ruling

In a pivotal court decision concerning trade/service mark registration, the Supreme Court, decision nos. 2465-2469/2563, delved into the intricate nuances of assessing the distinctiveness of proposed marks. The case centered around NTT DATA, a company seeking to register its composite trade/service mark comprising the acronym “NTT” (derived from Nippon Telegraph and Telephone, part of the company’s name) followed by the word “DATA.” The court’s comprehensive analysis offers invaluable lessons for businesses and legal professionals alike.

Assessing Distinctiveness: A Holistic Approach

The court emphasized the need for a holistic assessment of the proposed mark’s overall impression. While the acronym “NTT” alone did not directly describe the goods/services, it was deemed the dominant and inherently distinctive element. Crucially, the addition of the descriptive term “DATA” did not negate the mark’s distinctiveness. This underscores the importance of evaluating the collective impact of all components rather than dissecting them individually.

Composite Marks: Synergy and Composition

When a mark comprises multiple elements, the court’s examination extends beyond individual components to their synergistic composition. The juxtaposition of elements, even if one is descriptive, can create a distinctive overall impression, particularly if the dominant component is inherently distinctive. This principle highlights the need for a nuanced approach when assessing composite marks.

Descriptiveness and Contextual Relevance:

The court recognized that the descriptiveness of a term can vary depending on the specific goods/services involved. While the word “DATA” is generally descriptive, the court acknowledged that its descriptiveness could be mitigated in contexts related to data processing or similar goods/services. This contextual consideration is crucial, as it prevents overly broad generalizations and promotes a tailored assessment.

Burden of Proof: Applicant’s Responsibility

The court’s decision clarified that the burden of proof lies squarely with the applicant to demonstrate the distinctiveness of the proposed mark. Merely combining elements does not automatically confer distinctiveness. Applicants must provide convincing evidence and argumentation to support their claim of distinctiveness, considering the mark’s overall impression and the specific goods/services involved.

Procedural Adherence: A Multi-Stage Journey

While the court found the mark potentially registrable, it acknowledged that the registration process involves multiple stages governed by established procedures. The court’s ruling did not automatically grant registration but instructed the trademark office to continue examining the application per the prescribed legal framework. This highlights the importance of adhering to all procedural requirements and respecting the multi-stage nature of the registration process.

In essence, this court decision serves as a guiding beacon for businesses and legal professionals navigating the intricate landscape of trade/service mark registration. It underscores the nuanced approach required when assessing composite marks, considering factors such as overall impression, contextual relevance, and the specific goods/services involved. Additionally, it reinforces the applicant’s burden of proof and the necessity of adhering to established procedural requirements throughout the registration process.

By internalizing these lessons, stakeholders can better navigate the complexities of trade/service mark registration, safeguarding their intellectual property rights while fostering a fair and consistent application of trademark laws.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

• Thailand and China Strengthen Cooperation on IP Enforcement
• Ride-Sharing Platforms Face New Digital Governance Requirements
• New Apostille Rules Simplify Thailand Working and Retirement Visa Renewal Documents Requirement
• Billing Software and Electronic Invoicing: Understanding Thailand’s Digital Tax Compliance Framework
• Thailand Launches “Economic Cabinet Plus” Plan to Drive High-Growth and High-Income Status
• Thailand’s Draft Immigration Act and Hotel Act: A Major Step Towards Digitalization and Regulatory Reform

USTR Annual Review on Thailand Intellectual Property Protection 2023

The Office of the United States Trade Representative (USTR) conducts an annual review of intellectual property (IP) protection and enforcement in U.S. trading partners worldwide. Countries are categorized based on their IP infringement rates, with priority given to addressing issues in countries with high rates of infringement (Priority Foreign Country: PFC), i.e. countries on the Priority Watch List (PWL), and countries on the Watch List (WL).

Thailand was previously categorized as a country on the Priority Watch List from 2007 to 2017. However, on December 15, 2017, the USTR upgraded Thailand’s IP protection and enforcement status to the Watch List. Currently, Thailand remains on the Watch List along with 22 other countries. The USTR’s Notorious Markets Report for 2022 identified the MBK Center as the only market in Thailand with a high rate of IP infringement.

The USTR’s report acknowledges that Thailand has made progress in improving IP protection and enforcement. Efforts have been made to seize counterfeit and pirated goods, combat the sale of counterfeit goods online, and enhance cooperative measures among governmental agencies. Notable proceedings and plans by governmental agencies include:

1. Amendment to the Copyright Act B.E. 2537 (1994) to strengthen copyright owners’ rights, allowing them to initiate takedowns or block access to copyright infringement contents on the internet. The amendment also extended the lifespan of photography protection and facilitated Thailand’s accession to the World Intellectual Property Organization (WIPO) Copyright Treaty (WCT).
2. The development of the Thai Customs IPR Recordation System (TCIRs), an online system where right holders can submit trademark and copyright information to customs officials for verification of authenticity in imported, exported, or transit goods.
3. Cooperative measures among governmental authorities and organizations to combat the sale and advertisement of counterfeit goods online and online piracy. A Memorandum of Understanding (MOU) has been established between right holders and advertising associations to restrict support for websites that infringe on intellectual property.

However, the USTR report also highlights concerns and areas of improvement. The USTR recommends amending the Patent Act B.E. 2522 (1979) to streamline the patent registration process, reduce patent backlog and pendency, and prepare for accession to the Hague Agreement. Additionally, an amendment to the Copyright Act B.E. 2537 (1994) is suggested to address enforcement obstacles and enable Thailand’s accession to the WIPO Performances and Phonograms Treaty (WPPT).

The Department of Intellectual Property (DIP) is aware of the USTR’s concerns and is taking action to address them. The DIP is currently in the process of redrafting the Patent Act B.E. 2522 (1979)  to provide additional protection for right holders, improve the registration process, and align with global standards for accession to the Hague Agreement. Similarly, the Copyright Act B.E. 2537 (1994)  is undergoing legislative amendments for Thailand’s accession to the WPPT. Enforcement issues are being addressed through cooperative measures among 17 governmental authorities responsible for seizing and enforcing the law against IP infringers.

Despite ongoing efforts at the administrative, policy planning, and enforcement levels, intellectual property infringement remains a significant challenge in Thailand. The DIP is committed to resolving this issue and working towards removing Thailand from the Watch List countries.

Please note that the information provided is based on the USTR’s Special 301 Report 2023 and other relevant published sources.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

• Thailand and China Strengthen Cooperation on IP Enforcement
• Ride-Sharing Platforms Face New Digital Governance Requirements
• New Apostille Rules Simplify Thailand Working and Retirement Visa Renewal Documents Requirement
• Billing Software and Electronic Invoicing: Understanding Thailand’s Digital Tax Compliance Framework
• Thailand Launches “Economic Cabinet Plus” Plan to Drive High-Growth and High-Income Status
• Thailand’s Draft Immigration Act and Hotel Act: A Major Step Towards Digitalization and Regulatory Reform

Overcoming Geographic Barriers: Thai Court Allows Registration of Well-Known Trademarks

For decades, obtaining a trademark registration in Thailand for a geographic name or a product’s own shape was an uphill battle. The country’s Trademark Act B.E. 2534 (1991) and its amendments prohibited registration of marks lacking inherent distinctiveness, including geographic terms and product designs or shapes that merely describe the goods themselves. However, two decisions from Thailand’s Supreme Court have charted a potential path forward for brand owners to secure rights in such non-traditional marks.

The first hurdle in 2018, the Supreme Court, decision no. 4216/2561, appeared to shut the door on registering geographic names as trademarks in a case involving the city name “MILWAUKEE” for tools. The plaintiff had sought to register the MILWAUKEE mark based on extensive use, advertising, and sales in Thailand over many years.

However, the court found the evidence submitted – promotional materials, sales invoices, and website printouts – was insufficient to prove the geographic term had acquired distinctiveness as a source identifier in the minds of Thai consumers. Merely showing promotional and sales documents was not enough. Under the Trademark Act and Ministry of Commerce Regulations, the plaintiff needed to conclusively demonstrate that the geographic name alone had become a well-known brand for its specific products through longstanding, widespread exposure and consumer recognition across Thailand. The court noted the evidence did not specify the start date of use, sales volumes over time, geographic extent of sales, or how long the promotional activities had continued. Without such details, the court could not infer that Thai consumers would perceive “MILWAUKEE” as a brand rather than just a city name.

An Opening for Well-Known Marks

Just a few years later, the Supreme Court’s specializing in Intellectual Property and International Trade Court, decision no. 5449/2549, took a different stance in a case brought by a fruit producer. This time, the court approved the registration of a trademark containing both the geographic term “WASHINGTON” and a stylized apple design for the company’s fresh apple products (Class 31).

On its face, the evidence submitted was similar to the previous case – advertising and promotional materials, sales data, product packaging samples, and documentation of trademark registrations in other countries. However, the court found this evidence compelling enough to meet Thailand’s stringent acquired distinctiveness requirements.

Key factors that appeared persuasive included:

Testimony from the company’s witnesses that Thai consumers did indeed recognize the “WASHINGTON and Stylized Apple” trademark as uniquely identifying the branded apples as distinct from competitors’ products.

Proof of decades of extensive nationwide promotional efforts across Thailand, with details on advertising expenditures. Massive sales volumes and retail sales values showing the branded apples were consistently available through major supermarket chains in all provinces over more than 30 years. Physical packaging examples demonstrating how the trademark was prominently displayed on bags/labels as the primary brand identifier. Taken together, this evidence persuaded the court that the combined “WASHINGTON and Stylized Apple Design” trademark had cumulatively acquired strong source-identifying capacity among Thai consumers, despite incorporating non-distinctive components individually. Even though geographic names and representations of the product itself typically cannot be registered alone, the court found this well-known composite mark had achieved distinctiveness through sustained, widespread use and marketing over decades.

Charting a path forward these two Supreme Court decisions indicate that while registering geographic names and product shapes/designs remains very challenging in Thailand, it is possible for brands to secure trademark rights in such non-traditional, non-inherently distinctive marks. However, the evidentiary requirements are stringent – brand owners must amass overwhelming evidence that the applied-for mark has achieved widespread consumer recognition and association as a source identifier through sustained, nationwide use and intensive promotional campaigns over many years.

Critically, the evidence must specify details like the start date of use, annual advertising expenditures, sales volumes and values over time, the geographic scope of sales/marketing, and consistent trademark usage on packaging/labeling. Simply submitting generic advertisements and invoices is unlikely to be sufficient.

For foreign brand owners exporting products to Thailand featuring geographic and product shape/design elements, this underscores the importance of implementing a long-term, nationwide branding strategy from the outset. Consistent trademark use, major advertising investments, physical branding on packaging, and meticulous recordkeeping of marketing spend and sales data can help pave the way for enhanced trademark rights and enforcement, even for non-conventional marks that Thai authorities may initially view as non-distinctive.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

• Thailand and China Strengthen Cooperation on IP Enforcement
• Ride-Sharing Platforms Face New Digital Governance Requirements
• New Apostille Rules Simplify Thailand Working and Retirement Visa Renewal Documents Requirement
• Billing Software and Electronic Invoicing: Understanding Thailand’s Digital Tax Compliance Framework
• Thailand Launches “Economic Cabinet Plus” Plan to Drive High-Growth and High-Income Status
• Thailand’s Draft Immigration Act and Hotel Act: A Major Step Towards Digitalization and Regulatory Reform

Navigating Generative AI’s Impact on Intellectual Property

What is Generative AI

Generative AI, or generative artificial intelligence, is a type of AI that can create new content and ideas, such as text, images, videos, music, and more. It works by learning patterns and structures from existing data and then using that knowledge to generate new content that has similar characteristics. For example, it can be used to create chatbots for customer service, generate realistic images, write text like emails or resumes, and even suggest new ideas for product development. Generative AI is like a creative assistant that can help businesses and individuals come up with new and innovative content, making tasks easier and more efficient.

What benefits of using Generative AI are

Generative AI therefore offers a multitude of advantages for companies, encompassing increased efficiency by automating tasks that would otherwise demand manual labor, enhanced quality of generated content, quicker results compared to manual labor, cost savings, improved decision-making, heightened creativity, and enhanced customer experience through personalization.

In terms of intellectual property (IP) rights and content creation, Generative AI presents a myriad of potential benefits for companies. Firstly, organizations can leverage generative AI to develop custom models trained on their own institutional knowledge and intellectual property, allowing seamless collaboration between knowledge workers and the software in a familiar language. Moreover, generative AI empowers businesses to scale up their creative output, automatically producing captivating ad copy, visuals, and video content, thus reducing the need for extensive manual creative work. This not only enhances creativity but also leads to significant time and cost savings, streamlining content creation processes and reducing the resources required for manual content generation. Additionally, generative AI can augment workers’ abilities to draft, edit, and classify content, thereby optimizing talent within the organization. Furthermore, as a company’s AI maturity grows, generative AI can open new revenue channels, contributing to overall growth and innovation. However, it is crucial for companies to navigate the legal implications and ensure compliance with IP laws when integrating generative AI into their content creation and innovation processes.

Generative AI and Intellectual Property (IP) Issues

Generative AI, which uses data lakes and question snippets to recover patterns and relationships, is becoming more prevalent in creative industries. However, the legal implications of using generative AI are still unclear, particularly in relation to copyright infringement, ownership of AI-generated works, and unlicensed content in training data. Courts are currently trying to establish how intellectual property laws should be applied to generative AI, and several cases have already been filed around the globe.

While courts and lawmakers in various countries grapple with complex cases blurring the lines between human and machine creation, the EU is on the verge of implementing the world’s first comprehensive law on artificial intelligence. The EU Artificial Intelligence Act aims to regulate the use of AI in the EU to ensure better conditions for its development and use. It covers AI systems placed on the market, put into service, or used in the EU, including those offered by global vendors to EU users. The Act categorizes AI systems into three risk categories and imposes specific legal requirements on high-risk applications. AI systems posing unacceptable risks, such as those considered a threat to people, are banned. As for Thailand, she is catching up with EU. Government agencies are developing draft legislations to government AI. Soon we will see what they are.

In a separate development, the Beijing Internet Court made a landmark ruling endorsing copyrights for AI-generated artwork. This decision contrasts with recent USPTO rulings, which did not uphold copyrights for AI-generated creations. The ruling sets a legal precedent that could encourage more innovation and exploration in this field, acknowledging the potential of AI in creative industries and emphasizing the need to view such creations on a case-by-case basis, considering the unique blend of AI and human input. [Source: Judgment of the first case of copyright infringement of AI-generated images (qq.com)]

Amidst the rapid advancement of generative AI technology, a narrative unfolds with key intellectual property (IP) issues at its core.

Copyright Infringement: Within the intricate web of generative AI lies a concern regarding copyright infringement and rights of use. The uncertain ownership of AI-generated works further complicates matters, raising questions about the presence of unlicensed content in training data. As courts grapple with the application of intellectual property laws to Generative AI, the landscape remains nebulous, awaiting clarity.

Ownership of AI-Generated Works: The heart of the debate revolves around the ownership of AI-generated content. A palpable uncertainty looms, highlighting a significant concern for policymakers. As stakeholders navigate this uncharted territory, the quest for clarity on ownership rights intensifies, shaping the trajectory of IP discourse.

Patenting AI-Generated Inventions: In the realm of AI-generated art and inventions, a hostile legal landscape awaits. Amidst diverging perspectives, suggestions emerge to future-proof the patent system by carving out a distinct category dubbed AI-IP. With proposed patents potentially lasting for shorter durations than their traditional counterparts, the quest for equilibrium between innovation and protection unfolds.

Judicial Understanding and Interpretation: As generative AI blurs the boundaries between human and machine creation, judges find themselves embroiled in complex cases. Navigating this terrain demands a profound understanding of both IP laws and the intricacies of AI systems. The evolving narrative underscores the imperative for judicial actors to deepen their understanding of AI-related issues, shaping the contours of legal interpretation.

Disclosure and Representation: Beneath the surface of AI-generated output lies a concern regarding its representation. The ethical imperative of honest disclosure weighs heavily, challenging users to navigate the Copyright Office’s requirements diligently. As the narrative unfolds, the need for transparency in representing AI-generated content as distinct from human creation becomes increasingly apparent, shaping the discourse surrounding disclosure and representation.

In this narrative, the evolving landscape of generative AI intertwines with key IP issues, painting a complex portrait of technological innovation and legal intricacies. As stakeholders navigate this dynamic terrain, the narrative unfolds, illuminating the path forward in the pursuit of balance between innovation and protection in the digital age.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

• Thailand and China Strengthen Cooperation on IP Enforcement
• Ride-Sharing Platforms Face New Digital Governance Requirements
• New Apostille Rules Simplify Thailand Working and Retirement Visa Renewal Documents Requirement
• Billing Software and Electronic Invoicing: Understanding Thailand’s Digital Tax Compliance Framework
• Thailand Launches “Economic Cabinet Plus” Plan to Drive High-Growth and High-Income Status
• Thailand’s Draft Immigration Act and Hotel Act: A Major Step Towards Digitalization and Regulatory Reform

Will AI bring the death to IP enforcement work?

In this digital-centric era, many thriving businesses rely on intellectual property (IP) as crucial assets in selling their products and services and maintaining and promoting their brand image. Consequently, business owners must dedicate resources to protecting their IPs and taking appropriate action against IP infringement.

The recent emergence of accessible artificial intelligence (AI) tools has opened up the possibility for the automation of this undertaking, raising concerns about whether such tools will replace the enforcement of IPs by humans.

Traditional enforcement of IP

In Thailand, IP infringement is considered as both civil and criminal offense. IPs are primarily governed by the Copyright Act B.E. 2537 (1994) (as amended) (the “Copyright Act”), Trademark Act B.E. 2534 (1991) (as amended) (the “Trademark Act”), and Patent Act B.E. 2522 (as amended) (the “Patent Act”).

Under these laws, an IP owner can initiate a civil proceeding by filing a complaint with the Intellectual Property and International Trade Court (the “IP and IT Court”). Also, an IP owner can initiate a criminal proceeding by filing a complaint to either the IP and IT Court or the police.

What AI can help in IP enforcement work?

The traditional IP enforcement process can be an intricate process that is costly and timely for business owners. In monitoring IP infringement in online platforms, IP owners can benefit significantly from incorporating AI tools.Using a natural language processing (NLP) algorithm, AI can understand human language structure, allowing it to recognize similarities and patterns in text. Similar algorithms also exist for recognizing patterns in images and videos.

With this technology, specific sets of data can be used to train AI and enable it to identify similarities in copyrighted works, spot unauthorized use of trademarks, and sort through online marketplace listings of counterfeit goods. Following this, human personnel can review the evidence obtained and take further action, making infringement monitoring less timely and costly and more extensive.

In addition, large language model (LLM) AIs such as ChatGPT, which are capable of generating original written content based on training data, can be developed for use in specific contexts such as in legal writing. Provided that further developments improve its reliability, this technology can further aid legal counsel in legal research and preparing documents in court procedures relating to IP litigation.

Can AI replace traditional enforcement of IP by humans?

While AI can significantly reduce the workload in smaller infringement cases and assist in issuing takedown notices, it cannot completely replace human involvement in more complex cases involving legal procedures. AI tools for identifying online content infringement do not cover cases outside of online platforms, such as counterfeit goods or unauthorized use of copyright work in physical markets. Legal counsels play a vital role in coordinating with enforcement officials, analysing IP laws and preparing legal arguments. Although AI can make these tasks easier, the complexity of IP enforcement procedures still requires a high degree of human involvement.

AI serves as an assistive tool that accurately and efficiently performs resource-intensive tasks like infringement monitoring. However, AI’s lack of self-sufficiency and the intricate nature of IP enforcement mean that, for the time being, human-led enforcement of IP remains essential. AI can enhance the fight against counterfeiting, but human expertise and judgment are still crucial, especially in ambiguous cases or those lacking context.

In conclusion, AI tools can assist IP owners in tracking down and taking action against IP infringement, but they cannot replace the human-led enforcement of IP. AI serves as a powerful tool in IP enforcement, but human involvement, particularly that of legal counsels, remains vital in navigating the complex procedures associated with IP enforcement.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

• Thailand and China Strengthen Cooperation on IP Enforcement
• Ride-Sharing Platforms Face New Digital Governance Requirements
• New Apostille Rules Simplify Thailand Working and Retirement Visa Renewal Documents Requirement
• Billing Software and Electronic Invoicing: Understanding Thailand’s Digital Tax Compliance Framework
• Thailand Launches “Economic Cabinet Plus” Plan to Drive High-Growth and High-Income Status
• Thailand’s Draft Immigration Act and Hotel Act: A Major Step Towards Digitalization and Regulatory Reform