The Thai Supreme Court has reversed the Trademark Registrar’s decision to reject a mark on the grounds of similarity, elaborating on the need to carefully consider the specific nature of the targeted goods when determining similarity.

In this 2016 decision, the Thai Supreme Court took the position that the differing nature of goods, however similar, plays a pivotal role in deciding the likelihood of confusion between two marks.

Koninklijke Philips N.V. (Claimant), applied for the trademark “PHILIPS” in class 21 (for various household electronic appliances, including electric toothbrushes). The application was rejected by the Trademark Registrar and the Trademark Appeal Board on the grounds of the similarity of the mark applied for to a third party’s prior registered mark, i.e. “DR.PHILLIPS and Device” in class 21 (for toothbrushes and dental floss). The Claimant appealed the decision to the Intellectual Property and International Trade (IPIT) Court, which found for the Claimant. The Department of Intellectual Property appealed to the Supreme Court.

The Supreme Court separated the similarity consideration into two components:

  • inherent similarity in terms of visual representation, linguistic composition and pronunciation of the respective marks; and
  • the probability of such similarity causing consumer confusion as to the origins of the respective goods at issue.

In terms of the second component, the Court took into account the types of the respective goods and the overlap of their markets (channels of trade) in the minds of consumers and the public’s perception of the respective goods.

It was observed the Claimant specializes in the household electric appliances sector, has marketed its electric appliances in Thailand since 1951, and has been using the “PHILIPS” mark for those products in Thailand since 1991.

The Court found that, although the “PHILIPS” mark has been used in relation to a wide variety of Claimant’s products other than electric toothbrushes, that fact does not give the Claimant a right - under the honest concurrent use provision of the Thai Trademark Act (Section 27) - to be registered as the owner of the “PHILIPS” mark for the goods listed in the application in question. However, the Court did indicate the public at large is aware the “PHILIPS” mark identifies the Claimant generally as the origin of household electric goods and this fact allows consumers to readily understand the Claimant manufacturers the specific electric toothbrushes in question.

Further, the Court observed electric toothbrushes belong in the category of electric appliances. It stated the purchase of electric toothbrushes requires a certain level of care and consideration by consumers, particularly in terms of safety and affordability, and this in turn increases the chance of consumers coming into contact with the Claimant’s brand, and gaining further understanding of the product’s origin.

Thus, the Supreme Court concluded a low probability existed of consumer confusion between the marks, and the decision of the IPIT Court was upheld.