The
registrability of a juristic name is indicated in Section 7.1 of the Thai Trademark
Act 1991 (B.E. 2534) as follows:
"A
distinctive trademark shall consist of at least one of the following essential
particulars:
- The name of a juristic
person, first name and surname of an individual which is ordinarily understood
or trade name represented in a special or particular manner."
Until
mid-1995, a juristic name without a word showing juristic status (Co., Ltd., Corp.,
SPA, etc.) could be registered, for example, "Swatch", "Pierre
Balmain", "Missoni". However, in July 1995, the Trademark Registrar
changed the interpretation of Section 7.1 and, as a result, registration of a
mark which bore the same name as a juristic name was no longer allowed, even though
the mark contained no word showing juristic status. An exception was if the juristic
name was stylized or presented in a special manner. However, a non-stylized juristic
name together with a distinctive word or device could still be registered provided
that the right to exclusive use of the juristic name was disclaimed.
Because
of numerous complaints and difficulties concerning the registration of juristic
names, a lot of pressure was brought on the Department of Intellectual Property
to amend the law.
As
a result, an amendment to the Trademark Act has been drafted, with Section 7.1
reading as follows:
"A
trademark which comprises any one of the following characteristics as an important
component shall be held to have a unique characteristic:
- the
name, surname of a natural person which is not a surname according to the meaning
which is normally understood,
the
full name of a juristic person which has a word showing juristic status or a trade
name, which is shown by a special characteristic."
The
above amendment clearly states that a mark bearing a juristic name with a word
showing juristic status will be registrable if it is shown in a special characteristic.
However, a mark bearing a non-stylized juristic name without a word to indicate
juristic status will also be registrable.
The
amended law is expected to take effect this year. In the meantime, while it is
not yet in force, the Registrar has set a new guideline for juristic name registration
whereby a mark which bears the same name as its juristic name may be registrable
if it is proved that the mark has been previously registered for other classes
and used in Thailand. Evidence of such registration and use of the mark must be
submitted when filing the application for registration.
For
more information, please contact
Ms.
Vipa Chuenjaipanich,
Co-Managing Partner and Managing Director, Intellectual Property
Department, Tilleke & Gibbins (e-mail vipa.c@tillekeandgibbins.com).
©1998
Tilleke & Gibbins, Bangkok, Thailand
