1 August 2010Jurisdiction reportsKowit Somwaiya and Prasantaya Bantadtan

Football crazy: famous marks in Thailand

Under Section 8 (10) of the Trademark Act (TMA), the Trademark Office (TMO) is not allowed to register “a mark which is identical with a famous and well-known mark, registered or not, pursuant to the rules prescribed by the Minister or which is confusingly similar thereto that the public might be confused as to the proprietor or origin of the goods”.

The Famous and Well-known Marks Committee accepts that a mark is well known if the goods or services used with the mark have been continuously and extensively sold, used or advertised in Thailand or abroad to the extent that it is well known and recognised by the general public in Thailand. As of April 2010, the committee has received applications to deposit 183 marks as well-known marks, approving 75 of them.

Under Section 61 of the TMA, the Trademark Board (TMB) also protects well-known marks by cancelling the registration of any trademark that is identical or confusingly similar to a well-known trademark. The cancellation is prompted by a petition from an interested person or the Trademark Registrar.

“The Famous and Well-known Marks Committee accepts that a mark is well known if the goods or services used with the mark have been continuously and extensively sold, used or advertised in Thailand or abroad to the extent that it is well known and recognised by the general public in Thailand.”

In judgment no. 8834/2542, the Supreme Court confirmed the judgment of the IP & IT Court, which upheld the TMB’s decision to cancel five registrations of the logos of A.C. Milan, Parma A.C., Juventus F.C., Argentina Football Association and Ajax Amsterdam F.C. by a Thai national. The Thai national sued the Department of Intellectual Property (DIP) over its petition to the TMB to cancel the registrations. The IP & IT Court found in favour of DIP. The plaintiff filed an appeal with the Supreme Court, which ruled that the plaintiff could not register the five marks because they were confusingly similar to the well-known football team logos and therefore would cause confusion to the public if they were used to sell similar goods to those sold by the clubs.

In judgment no. 4747/2549, the famous Brazilian football player Edison Arantes do Nascimento, aka Pele, and another plaintiff sued a Thai company for registering and using ‘Pele & Device’ as a trademark for footballs. The Supreme Court ruled that the nickname ‘Pele’ was very well known. It found that the defendant had registered and used Pele & Device in bad faith to gain benefit from Pele’s fame.

The act of the defendant constituted a passing-off. The court ruled that Pele could sue the defendant under the second paragraph of Section 46 of the TMA to enjoin the use of Pele & Device. It also ordered the defendant to withdraw the registration of Pele & Device because it was confusingly similar to the name Pele.

Kowit Somwaiya is the managing partner at LawPlus Ltd. He can be contacted at: kowit.somwaiya@lawplusltd.com

Prasantaya Bantadtan is a partner at LawPlus Ltd. She can be contacted at: prasantaya.bantadtan@lawplusltd.com

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