“I have existed from the morning of the world and I shall exist until the last star falls from the night. Although I have taken the form of Gaius Caligula, I am all men as I am no man and therefore I am a God”– Caligula, Roman Emperor
If what Caligula said about himself could be said about a trademark, that trademark would be the epitome of registrable under Thai law (as indeed under the laws of most other countries). A long-lasting existence recognised by the entire world and uniqueness amongst its peers is a combination that gives a trademark the strongest possible claim to be registered under the Thai Trademark Act. However, in our time, creation of trademarks, as with all creative activities, is generally not an activity conducted in a vacuum. Words and devices, even invented ones, are created within the context of pre-existing creations. Thus, it is highly possible that trademarks created in and for a similar trade environment would have similar features. This has led to legal provisions in the Thai Trademark Act such as Section 6(3) prohibiting registration of a mark which is similar to a prior registered mark and Section 17 disallowing exclusive appropriation of a word or device commonly used in trade of the relevant goods/services.
Under Section 17, which directs registrars to order disclaimers on generic components of holistically distinctive trademarks, the Thai Trademark Registrar has issued the Registrar’s Regulation 1/2559 (2016) which establishes a list of words devices to be presumed as commonly used in trade for goods in various classes. For example, depictions of a child,a flower, a woman or a crown and depictions of a colobine monkey are to be presumed generic for cosmetics in Class 3 and spirits drinks in Class 33 respectively. The colobine monkey is a primate that is common throughout Asia and is apparently commonly used in the trade of alcoholic spirits in Thailand. Its appearance on the Registrar’s Regulation may seem surprising to the international community, and this proves that trademarks are not created in a vacuum but in a relevant trade environment and specific social context. By establishing a list of generic images, the Thai Trademark Office creates a presumption of non-distinctiveness for words and signs that would otherwise be deemed distinctive butfor their prevalent use in a particular trade sector.
In several cultures, images of large felines connote fierceness, speed and agility. From automobiles to sneakers, many major brands have capitalised on these connotations by using depictions of leopards and panthers in their trademarks.The Thai Supreme Court’s decision number 9807-9808/2559 (2016) concerned claims by Puma AG Rudolf Dassler Sportthat a Thai company had infringed its rights by having obtained and applied for registration of and having used severaltrademarks that are imitations of Puma’s registered marks. While the principal issues in this case were related to questions of inherent similarity, likelihood of consumer confusion and intention to imitate, from a societal point of view,these issues are tinted with a hue of pictorial appropriation.
In the Puma case, the Supreme Court found that only the defendant’s marks featuring a prancing tiger device were similar to Puma’s iconic prancing mountain lion marks, based largely on stylisation similarities of the feline images. Thisvein of analysis shows that Puma’s rights in the mountain lion image are limited to its particular stylised expression thereof, without prejudice to others’ interests in images of this animal. Public interest in images and trademark owners’rights are balanced under the court’s approach, which confirms that there are indeed visual limits to trademark rights.
This article was first published in Managing IP.