Relationship between trademarks and geographical indications by jos19866

VIEWS: 7 PAGES: 5

									                                              Thailand
                                               Thaïlande
                                                Thailand


                                           Report Q191

                                    in the name of the Thai Group


      Relationship between trademarks and geographical indications


Questions

I)   Analysis of current legislation and case law
1)   Do your country’s laws have enactments or systems dealing specifically with GIs, e.g. a
     registration system for GIs?
     Yes, Thailand has enacted the Geographical Indications Protection Act B.E. 2546 (A.D.
     2003) (“GIPA”) which came into force on 28 April 2004. The GIPA provides protection of GIs
     through a specific registration system.
     If so, what are the criteria of registrability?
     To be registrable under the GIPA, a GI must satisfy these three criteria:
     1) It must be a name, symbol, or any other things used to call or used in lieu of, geo–
        graphical origin;
     2) Such name, symbol or any other thing is used to indicate that the goods originated in the
        said geographic origin; and
     3) Such goods are of the quality, reputation, or specific characteristics of the said geo–
        graphic origin.
     According to Section 5 the GIPA, a GI applying for registration for any goods must not be
     1) a generic name of a good that is to use the said geographic origin or
     2) be a geographical indication that is against peace, the good morals of the people or the
        policy of the State.
     For a GI of a foreign country to be registrable under the GIPA, it must have clear evidence
     that such geographical indication has been given protection under the law of such country.
     Moreover, such GI must be continuously used throughout and until the date of applying for
     registration in Thailand.
     To which national authority must an application for protection be made?
     An application for protection of GIs under the GIPA must be made to the Department of
     Intellectual Property, Ministry of Commerce.
     Does the applicant have the right to appeal against the refusal of the national authority to
     register a GI? If so, to which entity?
     Yes, the applicant has the right to appeal against the refusal of GIs Registrar, to the GIs Board
     within ninety days from the date of receipt of the GIs Registrar’s order.




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2)   What is the status of a GI in your country?
     In Thailand, a GI could be registered in Thailand and would be protected as an Intellectual
     Property.
     Does the registration of a GI confer a property right?
     Yes, the registration of a GI confers an Intellectual Property right.
     Who would be the rightholder of a GI?
     From the registration of a GI for any goods,
     1) the manufacturer of such goods who is domiciled in the geographic origin of the said
        good or
     2) the operator of business relating to the said good has the right to use such registered GI
        with the said goods but must be in accordance with conditions prescribed by the GIs
        Registrar (if any).
     Can GIs be the subject of dealings such as assignment, mortgage and licensing?
     There is no provision in the GIPA that allows registered GIs to be subject of any dealing, i.e.
     licensed, assigned or mortgaged. As the right in the registered GIs could be considered
     community rights, it seems that GIs cannot be subjected to any dealing.

3)   Is the application for or registration of a GI made public in your country? Is it possible to
     oppose such application or registration or cancel such registration of a GI? If so, by whom
     and on what (absolute or relative) grounds (e.g. generic or descriptive term or prior
     trademark)?
     Yes, if the application of a GI is in line with the bases prescribed in the GIPA, the GIs Registrar
     will publish the said registration for any opposition. Within ninety days from the date of such
     publication, any interested person may oppose the registration of such GIs. However, it
     should be noted that the GIPA does not specify the criteria as to who would be considered as
     interested person or on what ground the opposition could be based on.
     The competent official will send a copy of such opposition to the applicant within fifteen days
     from the date of the opposition. The applicant has the right to submit his/her counter–
     statement within ninety days from the date of such receipt. Otherwise, the application would
     be deemed abandoned.
     Upon the GIs Registrar having decided the opposition and the counter–statement, the GIs
     Registrar will send its decision and the reasons to the applicant and the opponent. The
     applicant and the opponent have the right to appeal against the decision of the GIs Registrar
     to the GIs Board within ninety days from the date of the Registrar’s decision.
     Upon the GIs Board having made the decision, if the applicant or the opponent disagrees
     with the decision of the GIs Board, he/she has the right to bring to case to the Court within
     ninety days from the date of receipt such decision. Otherwise, the decision of the GIs would
     be deemed final.
     After the registration of a GI, the interested person or the competent officer may ask the GIs
     Registrar to forward the matter to the GIs Board to amend or revoke the registration upon the
     following reasons;
     1) If there is any evidence that the registration was done
         a)   illegitimately,
         b)   by concealment or
         c)   the contents are false or;



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     2) If there is any evidence that the circumstances have changed after the registration and
        such changes have caused the GI to be prohibited as described under the GIPA or have
        caused the particulars relating to the GI or other particulars to change from that stated in
        the registration.

4)   Must use requirements be satisfied in order to maintain GI protection? If so, is there any
     definition of what constitutes use?
     No, there is no requirement of use under the GIPA. Nonetheless, the use of a registered GI
     must be in accordance with conditions prescribed by the GIs Registrar (if any). Otherwise, the
     GIs Registrar may issue a specific order suspending the usage of such GI of particular person
     for a specific period (but would not be for more than two years) from the date of receipt of the
     order.
     Are the legal rules established for appraising the maintenance of a trademark registration
     applicable to the appraising of the maintenance of GI protection?
     No, the legal rules established for appraising the maintenance of a trademark registration are
     not applicable to the appraising of the maintenance of GI protection.

5)   What is the scope of protection of a GI? Is it only protected against use of the name or also
     against use of elements of the specification of the GI (e.g. slicing, grating) or any other
     practice liable to mislead the public as to the origin of the product (e.g. use of same trade
     dress)?
     Registered GIs are protected from illegitimate actions which could be described as follows;
     1) Using GIs to show or to deceive other persons that the goods which are not originated in
        the geographic origin specified in the application are the goods from the said geo–
        graphic origin; or
     2) Using GIs in any way that causes confusion or misrepresentation in the geographic origin
        of the goods and in the quality, reputation or other characteristics of the said goods, so
        as to cause damages to other business operators.
     Nonetheless, the GIPA stipulates an exception of these actions for being illegitimate if such
     actions have been carried out prior to the date of registration of such GI.
     There are some specific goods which gain higher protection, i.e. rice, silk, wines and spirits.
     The use of a GI with goods that did not originated in the geographic origin specified in the
     application would be considered illegitimate actions regardless whether the user also stated,
     used words or carried out anything that shows the true geographic origin of the said goods.
     Nonetheless, there is an exception if the user of the GI has been using such GI for
     1) a period of ten years or
     2) used in good faith prior to 15th April 1994.
     Moreover, the said specific goods would also be protected from the use of words “kind”,
     “category”, “type” or words or things of the same nature, incorporating the GI used with the
     said goods.
     Are the legal rules established for determining the scope of trademark protection applicable
     to determining the scope of GI protection (e.g. in relation to reputed or well–known GIs,
     likelihood of confusion, infringing and non–infringing acts)?
     Currently, there is no specific precedent case that establishes the scope of GI protection.




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     May rights in a GI be enforced even where a product which allegedly infringes those rights
     has been made purely for export?
     Yes, the right to a GI may be enforced even where a product which allegedly infringes those
     rights has been made purely for export.

6)   Can a GI be registered as individual trademark? If so, under what conditions?
     No, a GI cannot be registered as individual trademark. The Thai Trademark Act B.E. 2534
     (A.D. 1991) (“TMA”) clearly states that trademarks having or consisting of any GIs are not
     registrable.

7)   Do your country’s laws provide for collective or certification marks? If so, under what
     conditions can a GI be registered as a collective mark or a certification mark?
     Yes, the TMA provides the registration and protection for collective and certificate marks.
     However, a GI could not be registered as a collective or certificate mark as the TMA states
     that the provisions concerning trademarks are also applied to collective and certification
     marks except if provided specifically.

8)   Does inclusion of a protected GI as part of a trademark qualify as legal bar to the registration
     of such trademark?
     Yes, as mentioned above, a trademark in combination of a GI is not registrable under the
     TMA.

9)   Do your country’s laws, e.g. trade or merchandise legislation, require the application of
     correct designations of origin/source on agricultural products and food–stuffs?
     There is no specific Thai law that requires the application of correct designations of
     origin/source on agricultural products or food–stuff. However, the use of incorrect/untrue
     designation of origin/source in any goods might be considered a violation of the Thai
     Consumer Act B.E. 2522 (A.D. 1979) (“CA”) and/or the Thai Penal Code which would be
     subjected to criminal penalties.
     For your information, Section 22 of the CA prohibits all advertisement from containing a
     statement which is unfair to consumers or which may cause adverse effects on the society as
     a whole, for example, a statement which causes misunderstanding in the origin of such
     goods. In addition, Section 271 of the Thai Penal Code stipulates penalties for any fraudulent
     and deceitful acts such as selling goods so as to deceive the buyer as to the source of origin
     of such goods is subjected to criminal penalties.

10) How are conflicts between trademarks and GIs resolved under your country’s laws? Do they
    co–exist or does either the trademark or GI prevail? Is there a rule for determining whether the
    trademark or GI should prevail, and what are the criteria to take into account (e.g. the “first
    in time, first in right”–rule, the reputation of the geographic region or the reputation of the
    trademark, the length of time that the name has been used to indicate the geographic region
    and the extent of such usage, the length of time that the trademark has been used and the
    extent of such usage)?
     Neither the GIPA nor the TMA provide specific provisions on how to resolve conflicts between
     trademarks and GIs under Thai law. However, as a GI cannot be registered as a trademark
     in Thailand, it is unlikely that any GI is registered as a trademark. In addition, conflicts by the
     use of a GI as an unregistered trademark by other party prior to the registration of a GI would
     be resolved by exceptions of illegitimate actions specified in Question 5.




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II)   Proposals for adoption of uniform rules
      The Groups are invited to put forward any proposals for adoption of uniform rules regarding
      the relationship between trademarks and GIs. More specifically, the Groups are invited to
      respond to the following questions:
11) Should countries provide for registration systems dealing specifically with GIs? If so, what
    should the key features of such system be?
      As trademark registration and protection in some countries could not be applied to the
      registration and protection of GIs, countries would be benefit from having a specific
      registration system that deals only with GIs. The key features of such system might be the proof
      of a special connection between the geographic origin and the GI.
      Should a multilateral system of registration of GIs be established? If so, what should the key
      features of such multilateral system be? Specifically, which international body should be
      tasked with establishing such system? How should the application for or registration of a GI
      be notified/made public (either in your country or at a multilateral level) in order to avoid that
      a trademark may conflict with a GI previously unknown to the trademark owner?
      Countries would be benefit from establishing a multilateral system of registration of GIs as
      countries could use the list of multilateral registered GIs as a guideline for their domestic
      registration. There might be a new administrative body established to handle the registration
      of GIs specifically. The application or registration of a GI may be notified by such
      administrative body to each member country. Then, each member country may inform their
      constituents to solicit potential opposition in order to avoid conflict between the trademark
      and the GI.

12) Do you have any suggestions as to the acquisition, maintenance, scope and enforcement of
    GI protection? What should the scope of protection of a GI be? Should the legal rules
    established for appraising the acquisition, maintenance, scope and enforcement of trademark
    protection apply to the appraising of the acquisition, maintenance, scope and enforcement of
    GI protection?
      No, we do not have suggestion as to the acquisition, maintenance, scope and enforcement
      of GI protection.

13) Should a protection of GIs by individual and/or collective or certification marks be possible?
      It might be possible for a GI to be protected by individual marks, collective marks or certificate
      marks. However, this would depend on the domestic registration and protection in each
      country. For example, it is statutory that a GI could not be registered as a trademark,
      collective mark or certificate mark in Thailand.

14) How should conflicts between trademarks and GIs be resolved? Please propose a specific rule
    for determining whether trademark or GI should prevail, which is likely to be broadly
    accepted. If co–existence is contemplated, should such co–existence be limited to the country
    of origin or relate to the relevant markets?
      Conflicts between trademarks and GIs might be resolved by the notification–opposition
      system and if the conflicts still could not be resolved at that stage, the parties might pursue the
      case further in a multilateral arbitration. The determination of whether the trademark of a GI
      would prevail might be the proof of the use of a trademark in good faith prior to the
      registration of a GI in such country. It would be necessary to limit the co–existence in the
      country of origin or relevant market if a trademark and a GI co–exist.




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