Tag: Trademark

on by

Thailand’s Progress in Intellectual Property Protection: A Summary of the USTR 2024 Report

In a recent report by the United States Trade Representative (USTR), Thailand’s progress in intellectual property (IP) protection and enforcement has been evaluated. This article aims to provide a summary of the improvements made by the Thailand Department of Intellectual Property (DIP) throughout the year, as well as highlight areas that still require further attention.

Thailand, along with 19 other countries, remains on the USTR’s Watch List (WL) in 2024. While this designation indicates that there are still challenges in IP protection, the USTR acknowledges Thailand’s ongoing efforts to enhance its IP framework. The following notable comments and remarks were made in the report:

Amendment of Copyright and Patent Acts

The USTR urges Thailand to expedite the amendment process of the Copyright Act and Patent Act. Concerns were raised regarding the Copyright Act, specifically, the need to address procedural obstacles to enforcement against unauthorized cam-cording and overly broad exemptions to the circumvention of technological protection measures. As for the Patent Act, streamlining the patent registration process, reducing the backlog in pending patent examinations, and preparing for accession to the Hague Agreement Concerning the International Registration of Industrial Design were recommended.

aerial photography of building

Counterfeit and Pirated Goods

The USTR 2024 report highlights Thailand’s need for improved enforcement and deterrence measures against growing online piracy and applications that enable unauthorized streaming and downloading of copyrighted content. However, the report does acknowledge positive developments in physical enforcement. Notably, Thailand’s 2021 memorandum of understanding with e-commerce platforms has proven effective in combating the sale and advertisement of counterfeit goods online, as well as online piracy. Additionally, the Thai Customs IPR Recordation System, established in 2022, has enhanced the efficiency of seizing imported, exported, and transit counterfeit goods.

Other Concerns

The USTR report also raises several additional concerns. Firstly, there is a lack of resulting criminal prosecutions against online piracy, indicating a need for stronger legal action in this area. Secondly, lengthy civil IP enforcement proceedings and low civil damages remain issues that need to be addressed. Moreover, the continued use of unlicensed software in the private sector and unauthorized disclosure of undisclosed tests or other data generated to obtain marketing approval for pharmaceutical and agricultural chemical products were highlighted as areas requiring attention.

In conclusion, the USTR 2024 report indicates a positive direction for Thailand’s IP protection and enforcement. However, it also emphasizes the need for continued improvements and more stringent measures. The DIP is committed to addressing these concerns and working towards removing Thailand from the USTR’s Watch List of countries. By making progress in these areas, Thailand can further enhance its IP protection regime and foster a favorable environment for innovation and creativity.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

on by

The Unprotected Tile Design: A Cautionary Tale of Copyright vs. Patent

It was a battle over creative rights in the tile design industry that landed in the halls of the Intellectual Property and International Trade Court of Thailand. The plaintiffs, two entities in the business of manufacturing decorative tiles, brought allegations of copyright infringement against four defendants.

Fact Briefing: The plaintiffs were the mold designers who crafted unique, modern tile patterns with shapes, sizes, and appearances distinct from the traditional tiles commonly found in the Thai market. While their design efforts paid off in an innovative product, they failed to take the proper legal steps to safeguard their creative work through patent filings.

The dispute centered around the actions of the defendants – four rival companies that obtained the plaintiffs’ mold designs and proceeded to manufacture and sell tiles mimicking the unique patterns. This sparked allegations from the plaintiffs of copyright violations and misappropriation of trade secrets.

Analysis: As the case progressed, the court narrowed the key issues to determining: 1) whether the plaintiffs actually held copyrights in the tile designs, 2) if the defendants infringed those rights, and 3) the appropriate damages.

Examining the relevant intellectual property laws, the Supreme Court, decision no. 5073/2557, found that while the plaintiffs’ tile mold design qualified as a new “product design” under the Patent Act, it did not meet the criteria for an artistic “sculptural work” eligible for, protection under the Copyright Act. A fatal misstep by the plaintiffs was their failure to file for a petty patent, which left their design unprotected and free for others to legally exploit.

wooden interior of a courthouse

Decision:
Ruling in favor of the defendants, the court concluded that the plaintiffs’ tile designs, while novel, were not copyrightable subject matter. Without a valid copyright, the actions of the defendants utilizing the same patterns could not constitute infringement. The plaintiffs’ loss highlighted the crucial distinction between patented product designs and copyrighted artistic creations under Thai law.

Key Takeaways: The case underscores the importance for designers and inventors to thoroughly understand and navigate the intellectual property protection pathways available. While copyright safeguards creative expressions like art and literature, it does not extend to functional product designs in most jurisdictions. To secure exclusive rights over an innovative product, one must pursue patent registration – a critical lesson for maintaining a competitive edge in fields where form meets function. The plaintiffs’ oversight allowed open season on their prized tile patterns, lost to the public domain by not taking the proper patenting measures.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

on by

The Buddha’s Leaf: A Copyright Conundrum

A Tale of Artistic Expression and Legal Interpretation

In the realm where spirituality and art converge, a sculptor’s creation ignited a legal saga that delved deep into the nuances of originality and the contours of copyright law. At the heart of this narrative stood a sculpture exquisitely crafting a Buddha’s serene visage upon the hallowed canvas of a bodhi leaf.

The Facts Unveiled: The sculptor, henceforth known as the plaintiff, had meticulously registered their magnum opus with the very guardians of intellectual property, securing the coveted aegis of copyright protection. However, their artistic triumph was soon overshadowed by allegations that a cohort of defendants had produced a strikingly similar sculpture, potentially infringing upon the plaintiff’s exclusive rights.

As the legal proceedings unfolded, the plaintiff’s counsel wove a tapestry of arguments asserting the work’s unparalleled originality. They extolled the painstaking artistic choices that breathed life into the Buddha’s countenance, from the nuanced expressions etched onto the surface to the intricate details adorning the serene visage. Moreover, they heralded the seamless integration of the face onto the iconic bodhi leaf, a masterful interplay of placement and scale that elevated the work to realms of unprecedented creativity.

The Defendants’ Rebuttal Undaunted, the defendants mounted a formidable defense, vehemently denying any transgression of copying the plaintiff’s work. Their assertions delved into the annals of Buddhist art, wherein the depiction of the Buddha’s face was a recurring, almost universal motif. They contended that their sculpture, though potentially divergent in stylistic elements such as the rendering of facial features or the portrayal of the bodhi leaf itself, drew inspiration from this rich tapestry, a wellspring that should not be constrained by the shackles of copyright.

rock cave temple and bodhi tree in sri lanka

The Crux of Contention: As the legal battle raged on, two pivotal points of contention emerged, their resolution proving pivotal to the saga’s denouement. First, the court grappled with the enigma of originality, tasked with determining whether the plaintiff’s sculpture transcended the mere depiction of a Buddha’s face and embodied a truly unique artistic expression. Secondly, the extent of similarity between the two sculptures came under intense scrutiny, prompting an examination of whether the artistic choices underpinning each work differed substantially enough to preclude allegations of infringement.

The Court’s Analysis and Decision: In a Supreme Court, decision no. 19350/2557, which reverberated through the art world, the court held that the plaintiff’s sculpture lacked the requisite originality to warrant copyright protection. The ruling underscored that the sculpture, at its core, was a mere representation of a Buddha’s face, devoid of the creative spark that elevates a work beyond the realm of the mundane. Furthermore, the court found that the defendants’ sculpture, while thematically akin, exhibited notable differences from the plaintiff’s work, effectively exonerating them from any accusations of copying.

Key Takeaways from the Saga: This ruling served as a poignant reminder that copyright law, while designed to safeguard artistic expression, does not extend its protective embrace to ideas or concepts, no matter how deeply rooted in cultural or religious traditions they may be. To merit the hallowed status of copyright protection, a work of art must transcend mere imitation and bear the indelible imprint of the artist’s unique creative vision.

As the final chapter of this legal odyssey closed, its reverberations echoed far beyond the courtroom walls. Artists working within the domain of religious art were provided with a clarion call – to push the boundaries of their craft, imbuing their works with the spark of originality that elevates them above the realm of the commonplace, while simultaneously honoring the rich tapestry of tradition that has inspired generations of creators.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

on by

Navigating the Fine Line between Patent Protection and Product Innovation: Thai Supreme Court Ruling Emphasizes Importance of Inventive Details

Fact Briefing:

In a closely watched case, the Thai Supreme Court’s Intellectual Property and International Trade Division, Decision No. 2586/2559, has upheld the dismissal of a patent infringement claim by a display panel inventor against a taxi light manufacturer.

The dispute centered around two petty patents (utility model patents) held by the respective parties. The plaintiff, a display panel inventor, held patent No. 4715 for an invention related to a panel on the roof of a vehicle. Meanwhile, the defendant, a taxi light manufacturer, held patent No. 6574 for an invention related to a taxi light panel.

The plaintiff alleged that the defendant had infringed on its patented invention. However, key witness testimony from a patent examiner revealed three significant differences in the design of the inventions. Specifically, the left panel, lower support plate, and right panel of the defendant’s product differed notably from the features described in the plaintiff’s patent.

Ruling:

In its ruling, the Supreme Court emphasized that assessing patent infringement requires a meticulous examination of the specific details outlined in the patent specification and drawings, not just a cursory comparison of the overall product appearances. While there may have been some similarities in common components, the court found that the defendant’s invention lacked the “special characteristics” that the plaintiff had claimed as the core of its patented invention.

Notably, the plaintiff had argued that the general structure and assembly method were sufficiently similar to constitute infringement. However, the court disagreed, stating that patents protect the invention itself, not just the product design. Since the defendant had not incorporated the plaintiff’s patented features, such as the particular grooves and slots for bolt fastening, its actions did not amount to an infringement.

security logo

Key Takeaways:

This ruling underscores the importance for patent holders to precisely define the boundaries of their invention in the patent claims and disclosure. Courts will closely examine these details when assessing potential infringement, rather than relying solely on overall product similarities.

The decision serves as a cautionary tale for patent owners, emphasizing that infringement determinations hinge on the specific technical features claimed, not just the general appearance of competing products. As the Thai IP landscape continues to evolve, this case provides valuable guidance for navigating the complex interplay between patent protection and product innovation.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

on by

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. 

blue white orange and brown container van

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.

Other Articles

on by

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.

vivienne westwood neon sign on a clothing store in nagoya

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

on by

Thai Supreme Court Provides Guidance on Grounds for Courts to Annul Arbitral Awards

The Thai Supreme Court, Decision No. 7150/2561, has issued an important decision clarifying the scope of arbitral authority in construction contract disputes. The case involved a contractor’s challenges to an arbitration award over incomplete work and claims for additional compensation on a large development project.

The key facts are that in August 2011, the contractor entered into a 500 million baht subcontract to construct and install a decorative water fountain feature and landscape lighting for the convention center project. As work progressed, the contractor alleged there were oral agreements to perform substantial additional work upgrading the golf course facilities.

However, in March 2013 before this additional golf work was fully rendered, the project owner terminated the subcontract citing deficiencies in the contractor’s original fountain and lighting work scope. The parties then proceeded to arbitration as required under their contract’s dispute resolution clause.

The arbitration tribunal issued an award holding the contractor liable for 588,113.82 baht in damages, representing costs the owner incurred to remedy deficient work after termination. The tribunal rejected the contractor’s claim for separate compensation for the additional golf course work, finding there was no written agreement as contractually required to expand the work scope.

icra iflas piled book

On appeal, the Supreme Court made the following key rulings:

The arbitrators properly exercised their jurisdiction over disputes concerning the admitted water fountain and lighting work scope under the subcontract’s broad arbitration clause. However, the tribunal exceeded its authority by deciding the contractor’s claim for the additional golf course work, which required a separate written agreement to incorporate it into the arbitrable subcontract per legal requirements. This portion of the award was annulled as violating Thai arbitration law’s public policy grounds.

The intellectual property rights claim over the fountain’s logo design was correctly rejected as already compensated under the design services fees in the original subcontract pricing. The fact that the contract was terminated did not void the arbitration clause, permitting the tribunal to award damages relating to deficient completed work despite the termination.

The Supreme Court therefore upheld the core findings while annulling the award only as to the unincorporated additional golf work claim.

Key Takeaway:

This Supreme Court decision provides useful guidance on grounds for Thai courts to annul arbitral awards and the need for arbitral tribunals to carefully examine whether alleged additional work was properly incorporated in writing into the underlying arbitration agreement’s scope. Arbitrators exceed their jurisdiction by deciding claims over work that was not validly added to the contracted scope through proper documentation, which can result in awards being annulled on public policy grounds under Thai arbitration law. Clear documentation of any change orders authorizing extra work is crucial for the arbitrability of claims seeking compensation for that additional scope.

Author: Panisa Suwanmatajarn, Managing Partner.

Other Articles

on by

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.

black android smartphone on top of white book

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

on by

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).

security logo

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