Supreme Court sets new precedent for figurative marks

Until Thailand became a member of the World Trade Organisation (WTO), which requires it to implement the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs), the Trademark Law protected only traditional marks (eg, words, logos, or other graphic signs applied to products). However, the Trademark Act 1991, which was amended in 2000 in order to implement the TRIPs Agreement, extends protection to certain non-traditional marks – namely, combinations of colours and figurative elements.

The Department of Intellectual Property has issued notifications laying down the guidelines for the registration of figurative elements. One important criterion for such registration is that the figurative element itself must be distinctive. To qualify as a distinctive mark, the figurative element shall not consist of or be related to goods or services. For example, the shape of a loaf of bread cannot be registered as a mark for bread products and a shape which looks like a spirits bottle cannot be used for spirits products. However, if the figurative element has been designed or modified to the extent that the general public does not recognise that it is related to the relevant goods or services, the figurative element is registrable. For example, a bottle in the shape of a duck is registrable as a trademark if it is intended to be used for perfume products, as there is no association between the bottle and the perfume in the mind of public.

Unfortunately it is rather difficult for the owners of figurative element marks to obtain a trademark registration from the IP Office since many limitations are imposed on the registration of a figurative element as a trademark. Many trademark applications for figurative elements are rejected due to a lack of distinctiveness, or because the mark makes a direct reference to the quality or characteristic of products or services applied for registration.

However, two recent Supreme Court judgments have shed light on this issue: 

• Supreme Court Judgment 7024/2549 in regard to the Coca-Cola bottle; and 
• Supreme Court Judgment 630/2551 in regard to the Sprite bottle.

In these two cases the trademark registrar ruled that both marks, which are bottles for soft drinks, had a lack of distinctiveness due to the nature of the bottles, even though they were designed to be distinguishable from the bottles of other soft drinks. The registrar considered that the designs were common in trade when used with the registered products (ie, Coca-Cola and Sprite). However, the Supreme Court held that the decoration added distinctiveness to the bottles and that the trademark owner used the decorated bottle to identify the source of products, with no intention of making the bottle a product in itself. Moreover, the trademark owner has used the bottles for soft drink products for over 10 years to the extent that the public now associates the design of the bottles with the source or origin of goods. In light of this, the court ruled that the bottle designs were sufficiently distinctive for registration. Thus, bottles can be registered as marks under the law. The court then ordered the registrar and the IP Office to accept such marks for registration.

Following the precedent set in these two cases, it is hoped that an increasing number of registrations will be granted to trademark applications for figurative elements in Thailand.