تايلند

This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 6

Supreme Court of Thailand, Intellectual Property and International Trade Case Division [2020]: Mr.Surasak Prasertbadeekul v Ms.Saranya Udornrungrueng, Case No. 2464/2020

Date of judgment: May 21, 2020

Issuing authority: Supreme Court of Thailand, Intellectual Property and International Trade Case Division

Level of the issuing authority: Final instance

Type of procedure: Judicial (Civin( �/span>

Subject matter: Trademarks; Enforcement of IP and Related Rights

Plaintiff: Mr. Surasak Prasertbadeekul

Defendant: Ms. Saranya Udornrungrueng

Keywords: Trademarks, Likelihood of confusion, Exclusive rights of trademark owner, Trademark infringement, Injunctive relief, Permanent injunction

Basic facts: Mr. Surasak Prasertbadeekul (the plaintiff) is the owner of a registered trademark consisting of an image of an anchor with the letters “N” and “M” and the words “New Mos.” This trademark has been registered under Class 25, covering clothing items and student uniforms. The plaintiff has been producing and distributing student uniforms bearing this trademark in the northeastern region of Thailand.

Ms. Saranya Udornrungrueng (the defendant) was previously a distributor of student uniforms featuring the plaintiff’s registered trademark. However, the defendant later began producing and distributing student uniforms in the same region using a trademark that features an anchor, an owl’s head, the letters “D” and “T,” and the words “Darty Mos.”

In the present case, the plaintiff asserted that the defendant’s trademark is so similar to the plaintiff’s registered trademark that it could cause public confusion or mislead consumers regarding the ownership or origin of the goods. As a result, the plaintiff requested the court to issue a permanent injunction to prevent the defendant from distributing goods bearing the imitated trademark.

Held: The Court ruled that a permanent injunction be issued against the defendant, restraining the distribution of student uniforms bearing the defendant’s trademark.

Relevant holdings in relation to permanent injunctions: The Court emphasized several key factors in its judgment:

Similarity of Trademarks: The defendant’s trademark was strikingly similar to the plaintiff’s registered trademark, creating a risk of public confusion regarding the ownership or origin of the goods. This was due to:

·         Both trademarks prominently featured the word “Mos” as their essential element.

·       Despite the presence of other components, such as pictures, letters, and words, the word “Mos” stood out in both trademarks due to its large, bold font, making it the most visible and memorable aspect. Consequently, the public may have mistakenly believed that both trademarks were associated with the same owner or origin.

·         Both trademarks were used in connection with the same product: student uniforms.

Exclusive Rights of the Plaintiff: The plaintiff’s trademark was registered, granting the plaintiff exclusive rights to its use for the goods covered by the registration.

Dishonest Conduct of the Defendant: The defendant’s actions were deemed dishonest for the following reasons:

·         The defendant was previously a distributor for the plaintiff;

·         The defendant was fully aware of the plaintiff’s registered trademark; and

·         The defendant deliberately attempted to imitate the plaintiff’s trademark by incorporating the same essential element, the word “Mos”.

Market Competition: The distribution of products bearing both trademarks occurred within the same geographic area, indicating direct competition in the same market.

Superiority of Plaintiff’s Rights: The Court recognized that the plaintiff held superior rights to the trademark compared to the defendant.

Relevant legislation:

·         Trademark Act B.E. 2534, Article 44.