Asia IP

On behalf of Societe du Figaro (SDF), Baker & McKenzie lawyers in Bangkok filed an application for the Madame Figaro trademark in International Class 16 covering various types of publications and stationery, among other goods, with the Thai Trademark Office. This is the same mark that SDF has used on one of its magazines which is distributed worldwide. The same mark and variations thereof had been registered in many other countries around the worldwide both directly and through the Madrid system of international registration.

The Thai trademark registrar deemed that the mark was registrable but demanded that the word Madame be disclaimed as it was considered a common word which lacked distinctiveness. That is, the mark was registrable purely on the basis of the word Figaro.

An appeal was filed against the disclaimer demand to the Trademark Board. The appeal was submitted together with evidence of overseas registrations and worldwide use of the mark on SDF’s magazine of the same name. Unfortunately, the Trademark Board was even more narrow-minded than the trademark registrar. The Trademark Board ruled that the word Madame was the substantial element of the mark and such word was common and non-distinctive and the evidence submitted was insufficient to show that the mark had developed distinctiveness through use. As such, without a remaining substantial element, the application was rejected in its entirety. That is, rather than considering the appeal purely on the grounds on which it was filed, i.e., against the disclaimer demand, the Board reconsidered the mark as a whole.

The decision of the Board was appealed further to the Central Intellectual Property & International Trade Court. Under previous practice, suit would be filed against the Trademark Board and its individual members. However, rather doing so, Baker & McKenzie took a new approach and named the Department of Intellectual Property as defendant instead. The arguments raised, in brief, were: 1) the mark should be considered as a whole rather than separately considering each part; 2) the mark is well known in Thailand; 3) no overseas application had been rejected, including those in French and English speaking countries; and, 4) the Board had not followed international practice in considering the appeal. An affidavit was submitted by SDF in lieu of testifying in person and the local Thai licensee of the publication Madame Figaro testified as a witness in the case.

The Court ruled that even though the word Madame is a common mon word of ordinary meaning, such word is not common to trade for the goods under the trademark application or descriptive of the goods. Further, as the mark of SDF is inherently distinctive in and of itself, it was unnecessary to consider the issue of whether or not the mark is widely used and known. The court then ordered the registrar to proceed with the registration process.

It is very likely that the Department of Intellectual Property will appeal the court’s decision as it appears to be standard practice, whether or not there is grounds for appeal. However, it is anticipated that the court’s decision will be upheld on appeal.

About the Author

Say Sujintaya and Garry Pennington, Baker & McKenzie