Supreme Court Decisions

Interesting Article
The plaintiff owned the “UNIX” trademark for computer products and software and had advertised and promoted the mark in Thailand before the defendant established a company named “Unix Computer (Thailand) Co., Ltd.” and used the word “UNIX” as part of its corporate name and logo.The defendant also sold products under the “ONIX” brand. The Court found that this mark was identical or sufficiently similar to “UNIX” to create a likelihood that consumers might mistakenly believe that the products or business were associated with the plaintiff. The defendant’s conduct therefore amounted to an improper attempt to benefit from the reputation of the plaintiff’s registered trademark.Although the defendant was not the manufacturer of the products, it knew that the trademark belonged to the plaintiff. Its continued use of the name and sale of products bearing the similar mark therefore constituted infringement of the plaintiff’s trademark rights.The Supreme Court affirmed the judgment of the Court of Appeal, ordering the defendant to change its company name and corporate mark, prohibiting the use of “UNIX” or “ONIX” in connection with its business, and requiring the removal of signs and documents and the withdrawal of products bearing those marks from the market.The defendant was also ordered to pay monthly damages to the plaintiff. However, the Supreme Court modified the award of legal fees for the appellate and Supreme Court proceedings, fixing the attorney’s fee at THB 1,500 for each level of court in accordance with the law.

Interesting Article
The plaintiff was the registered owner of the “SCAGEL” trademark, pronounced “Ska-gel,” for a topical gel used in the treatment of scars. The plaintiff brought an action against the defendant, which sold a product under the name “SCAR GEL,” alleging that the marks were sufficiently similar to cause consumers to believe that the products originated from the same source.The Supreme Court held that the comparison of trademarks must be based on their overall impression, including their pronunciation, wording, visual appearance, and relevant market.The plaintiff’s mark consisted of the single word “SCAGEL,” whereas the defendant’s mark used “SCAR GEL” as two separate words. The lettering and packaging were also visibly different. In addition, the plaintiff’s products were sold through pharmacies and hospitals, while the defendant’s products were sold directly to members. The products were therefore distributed through different market channels.Most importantly, the Court held that the words “SCAR” and “GEL” used by the defendant were descriptive of the nature or characteristics of the product rather than distinctive words exclusively associated with the plaintiff’s trademark. Other traders were therefore also entitled to use such descriptive terms.Considering the marks and surrounding circumstances as a whole, the Supreme Court found that the defendant’s use of “SCAR GEL” was not likely to cause consumer confusion and did not constitute trademark infringement.The Supreme Court therefore affirmed the judgments of the Court of First Instance and the Court of Appeal dismissing the plaintiff’s claim.

Interesting Article
This Supreme Court case arose from a dispute between the user of the “Child Device” trademark and the government authority that refused registration on the ground that the mark was similar to the registered and well-known “Healthy Boy” trademark.The Supreme Court held that, although both marks depicted a child holding a bottle and were used for goods in the same general category of seasoning products, the evidence showed that the plaintiff had long used the “Child Device” mark in good faith for fish sauce, while the “Healthy Boy” mark had likewise been used in good faith for soy sauce.The Court held that the long-standing and honest concurrent use of the marks by both parties constituted sufficient grounds for permitting concurrent registration under Section 27 of the Trademark Act B.E. 2534.The Court further explained that the prohibition against registering a mark similar to a well-known mark under Section 8 (10) is aimed at cases involving imitation intended to take commercial advantage of another party’s reputation. That was not the situation in this case, because both parties had independently used their respective marks in good faith for a substantial period.Accordingly, the similarity between the marks did not, by itself, prevent registration where the evidence established honest concurrent use by both parties.