Trademark common law rights in Thailand

A trademark case in Thailand provides an interesting insight into how Thai law provides for a certain level of non statutory/common law rights. 

 

Tong Cheng Iron Works of Taiwan filed its SWAN mark for air compressors in class 7 in 1981. The mark was registered but later on not renewed, so it lapsed in 2001. A Thai company, Chumsin Inter filed an application for the same mark in the same class and the mark was registered in 2002. Then Tong Cheng Iron Works filed a new trademark application for SWAN which was rejected as it conflicted with Chumsin's mark.

Tong Cheng Iron Works filed a cancellation action at the Intellectual Property and International Trade (IP & IT) Court claiming a better prior right. Chumsin defended on the basis that it was in good faith. However the court found otherwise; that Chumsin had used and registered the mark in bad faith so they cancelled Chumsin's registration. Chumsin appealed.

 

In May 2013 the Supreme Court confirmed that Tong Cheng Iron Works had a better prior right to the SWAN mark, regardless of its non-renewal because they had continued to use the mark. There was extensive sales and marketing evidence from the early 2000s. The Supreme Court also said that Chumsin had not proven a better right to the mark. Lack of renewal was not automatic loss of ownership rights under the Trademark Act.

In some sense this decision enshrines a form of common law rights based on use into Thai trademark law.