Bringing the Office Action to Court in Thailand
12 October 2012
Thailand’s Department of Intellectual Property (DIP) is often tagged as being excessively strict. The arduous exercise of its function has even been bludgeoned by some as ‘nitpicking.’ The notorious ‘Office Action’ raises many eyebrows, stalemating trademark applications at the first move and crushing hopes with the DIP’s even more infamous threshold for ‘evidence of use/distinctiveness.’
In disfavour thereof, an appeal lies before the Trademark Board (Board). Commentators hold opinion that prospects of success are generally low, as the Trademark Board tends more toward sharing similar views with the DIP.
To one dismayed earnest proprietor, Section 18(1) of the Trademark Act, which basically stipulates that the decision of the Board is final in respect of DIP Registrars’ Office Actions, appears to be the ultimatum. Insufficiently answered or insubstantially rectified ‘Office Actions’ lead to filing refusals and the Trademark Board’s “no” is the insurmountable brick wall.
All this may be incomprehensible to a proprietor whose trademark has been registered virtually everywhere else.
An ingenious caveat has been placed thereupon in benchmark cases such as Case No. (Red) IP 106/2546 and Societe BIC’s case: for the Board’s decision to indeed be final, it has to be ‘legitimate’ and ‘lawful.’ If it is not, an ‘appeal’ or rather, a cause of action in the form of a suit against the DIP, lies with the Central Intellectual Property and International Trade Court (CIPITC) (which opens another course of appeal to the Supreme (Dika) Court).
True enough, the CIPITC is not slow to consider ‘appeals’ in spite of Section 18(1). Can the earnest proprietor then breathe easier? Or does this merely serve an inevitable end?
Considering that the CIPITC’s first and foremost IP function is dispute resolution, is its armoury similarly well catered to handle ‘appeals’ against irresolvable Office Actions and decision of the Board thereto?
How do the Courts deal with DIP questions?
As early as Societe BIC’s case, the Courts have demonstrated relatively higher appreciation of marks as ‘devices,’ digesting the mark more thoroughly as well as attributing more significance to the applicant’s ‘evidence of use.’
As a result, the Courts had directed registration of shapes of the applicant’s lighter and pen, which had fallen far short in the DIP/Board’s perspective.
This principle was reaffirmed in the Supreme Court’s decision in case No. 85577/2009, whereby much consideration was extended to pronunciation.
The Aquafeed case illustrated the Courts liberal approach in construing ‘ d e s c r i p t i v e n e s s ’ whereby it held that although Aquafeed would be descriptive of feed for aquatic animals, it was not descriptive of a more specific product: shrimp feed.
Indeed, in the US Polo Association case, besides placing due consideration on the issue of disclaimers, the CIPICT, among other reasons, applied ‘non-descriptiveness’ to catch and validate common words of ‘Since’ and ‘Association’! It appears from this approach that the CIPICT had gone so far as to use the bar in Section 7 of the Trademark Act as a deeming provision.
Recently, in the Club 21 case, the CIPITC attached much significance in the stylization of the mark Club, and although the word Club and the number 21 were commonplace, together they were held neither a generic term in relation to the goods and services nor descriptive.
Much importance is attached by the CIPITC to the practicality of whether the mark can be used to distinguish the goods and service of the applicant from others. Where the answer is in the affirmative, the mark was distinctive, and there was no need to look beyond that for evidence of use.
Again, in Decision No. 2183-2184/2553 the Courts took an entirely different perspective from that of the DIP with regards to marks which consists of groups of colours. The frequent departure of the Courts from the DIP/Board’s sentiments are mostly advantageous to the proprietor.
Whatever the approach or reasoning taken and in spite of the jargon spewed in exchange between the DIP/Board and the Courts, the Courts are inclined to more extensively consider registrability of the mark and in effect adopt a more wholesome, practical approach and so long as the registration of the mark is unlikely to prejudice in the Courts’ eyes, they may well warrant registration.
The answer thus is yes, inasmuch as the expert CIPITC is more equipped to study the legal merits and arguments related to the registrability of the trademark, the CIPITC has been appropriately coined as the saving grace against insistent filing refusals. Proprietors should not shy away from having their mark registered in Thailand merely because of DIP difficulties with the presence of the CIPITC as guardian of deserving marks.
patrick mirandah (thailand) co. ltd.
12 Floor Unit 1202-1
Exchange Tower, 388 Sukhumvit Rd.
Klongtoey, Klongtoey
Bangkok 10110, Thailand
T: +66 2 663 6363
F: +66 2 663 6364
E: thailand@mirandah.com
W: www.mirandah.com
