Having a single-class system, a trade mark owner seeking registration in Thailand for the same mark in different classes will be required by the Trade Marks Registrar to “associate” its marks. Section 14 of the Thai Trade Marks Act states that the Registrar may order an applicant of similar or identical marks, relating to goods either in the same class or in related classes, to associate these marks to avoid confusion as to the owner of the mark.
Unlike citation objections where the main concern is whether or not the public will think the goods originate from the same owner, Registry refusals based on Section 14 address the possibility that the public may assume that the marks originate instead from different owners.
Moreover, similar marks bearing the same essential characteristics are also required to be associated if they are filed by the same owner in either the same or different classes. In one example, the Trade Marks Board upheld the Registrar’s request to associate the marks shown below as the Board found that the marks, all owned by the same proprietor, bore substantial similarity in the distinctive combination of the letters NBA:
When determining whether or not the marks should be associated, the Registrar will consider a) the substantial similarities between the marks, b) whether the marks belong in the same or related classes, and c) where the marks belong to the same proprietor.
One of the reasons trade mark owners oppose the requirement to associate their marks is because of the provision in Section 50 of the Trade Marks Act that states that associated marks cannot be assigned or transferred separately. Therefore, should the owner decide to assign any of its marks to a third party, the entire set in all its registered classes must also follow suit.
In the case of identical marks in different classes, Section 50 may not appear as disadvantageous to the owner as it would be similar to assigning a mark covering multiple classes considering that all registered classes will be transferred at the same time. However, this poses a problem when the associated marks consist of old marks, no longer used, and their updated versions. In such cases, the Trade Marks Registrar will require the transfer or assignment of marks which are not of interest to the transferee, who in turn will be forced to incur additional administrative costs to record the assignment of marks that are no longer of interest.
Proposed reforms to the Thai Trade Marks Act are set to affect the practice of associating trademarks. One such reform passed in the Draft Bill of the Trademark Amendment Act is the introduction of multiple-class applications, which will completely remove the requirement to associate identical marks filed in different classes.
This article was first published in Managing Intellectual Property magazine, Issue 224, November 2012, p79.