Plaintiff: Orien SPA Co. Ltd.
            Defendant: Piyawat Usahakamyang Co. Ltd.

2. Background and Issue

         Background

            The plaintiff sought the registration of the word mark “DE FONSECA” (trademark ) in three applications in class 25.  The Registrar of Trademarks refused the registration because the plaintiff’s mark was the same or similar to the trademarks registered by another person, the defendant.  The plaintiff thus appealed the Registrar’s order to the Board, under section 61 and 62 of the Trademark Act B.E. 2534 (1991).  The Board sustained the Registrar’s order.  The plaintiff then filed the case to the Central Intellectual Property and International Trade Court to cancel the defendant’s trademark registration, under section 65 paragraph 2 of the Trademark Act B.E. 2534 (1991), claiming that the plaintiff has prior use and the defendant’s trademark is so similar to the plaintiff’s trademark that the public might be confused or misled as to the owner or origin of the goods, on the basis of section 6(3).

            As regards the defense, the defendant claimed that the plaintiff was not the owner of the word mark “DE FONSECA” and had no any relation to the mark or the defendant.  The defendant filed an application for the registration of the word mark “DE FONSECA” and has used this trademark with shoes and publicized the product in a variety of periodicals, including television and radio, since 1986.  The product is available in shops and department stores throughout Thailand.  The Board’s decision to refuse the plaintiff’s registration was justified.

            Issue

            (1) Whether the plaintiff is more entitled to the trademark “DE FONSECA” than the defendant.

            (2) Whether the case was filed within the five-year period under section 67 of the Trademark Act B.E. 2534 (1991).

3. Ruling

            The Central Intellectual Property and International Trade Court dismissed the case.  The Supreme Court reversed and ordered the cancellation of the defendant’s trademark registration.

4. Opinion

            (1) According to the issue of entitlement, the plaintiff sought the registration of word mark “DE FONSECA” in class 38, clothes and garments.  The plaintiff ascertained that the plaintiff had established a reputation and registered the word mark “DE FONSECA” since 1982, prior to the registration of the defendant in Thailand.  After the defendant registered the similar mark in Thailand in 1988, the plaintiff registered word mark “DE FONSECA” in many countries, including at WIPO.  In addition, the plaintiff has manufactured and distributed footwear under the word mark “DE FONSECA” (trademark ) in Italy, European countries, China, Singapore, and Taiwan.  In addition, the plaintiff provided evidence, exhibit 13 – the copies of invoice and bill of lading, that the plaintiff had hired the defendant to produce footwear with the word mark “DE FONSECA” in Thailand and shipped the goods back to the plaintiff in Italy during 1986-1988.  The defendant, on the contrary, had not defended or argued any wrong with the invoice and bill of lading which listed the footwear with the word mark “DE FONSECA.”  Moreover, the plaintiff presented the origins of the word mark “DE FONSECA” as having derived from the last name of the president of the plaintiff’s company, while the defendant did not explain anything about the origin of his mark or even the meaning in Thai. 

According to the evidence presented by both parties, it is reasonable to conclude that the defendant knew the word mark “DE FONSECA” came from the plaintiff’s product, during 1986-1988.  The defendant then registered the word mark since such product was not sold in Thailand.  The application thus had not been conducted in good faith.  Bringing together the relevant elements, the defendant’s mark is similar to the mark of the plaintiff and both marks have been used for footwear.  Therefore, the public might be confused or misled due to such similarity of trademarks as to the owner or origin of the goods.  As a result, the plaintiff who had prior use should be entitled to the trademark “DE FONSECA.”

(2) The other grounds for opposition to which the claim should be dismissed is the five-year period under section 67.  The defendant claimed the time limit under section 67 Paragraph 1 of the Trademark Act B.E. 2534 (1991) which states that the plaintiff had to file the case within five years from the date of the Registrar’s order to register the trademark.

Regarding this issue, the plaintiff filed a case to cancel the defendant’s trademark which had been registered in 1988.  The applicable law to enforce this cancellation is the Trademark Act B.E. 2474 (1931) which is the law of the registration period.  The defendant thus could not claim the time limit under section 67 Paragraph 1 of the Trademark Act B.E. 2534 (1991) in the case.

Nonetheless, the part of the plaintiff’s request to bar the defendant from using, registering, or connecting, by any means, the disputed trademark “DE FONSECA” and other similar trademarks, is not granted.  According to the law, the plaintiff who was entitled to the un-registered trademark in Thailand could not sue or bar other persons from the un-registered trademark at the same level as those of the registered trademark.

5. Keywords

            trademark - mark - similarity - likelihood of confusion - appeal and review  - good faith  - priority of right