By Tipsuda Suttasing
Trade dress is the overall appearance and feel of a product or service that identifies the source of the product or service and distinguishes it from that of others. It includes, but is not limited to, color, shape, size, configuration, and product packaging. Trade dress also refers to the overall presentation of a product, such as the display of products in a store or the way a product is presented, and anything that is designed or used to promote a product or service.
Furthermore, distinct store layouts, designs and themes, especially for F&B or restaurant franchises, can also be considered as a trade dress.
This leads us to the recent conflict between two famous bubble milk tea brands in Thailand, “FIRE TIGER” vs. “THE FIRE BEAR”, which thrust trade dress into the spotlight.
On 23 December 2021, the Central Intellectual Property and International Trade Court ordered THE FIRE BEAR’s owner to pay damages amounting to THB10 million to FIRE TIGER’s owner, the highest amount in the history of trademark infringement cases in Thailand.
What happened between “FIRE TIGER” and “THE FIRE BEAR”?
This case follows plaintiffs Ms. Nuntanat Uasirisub and Ruay Sabai Sabai Co., Ltd., owners of the “FIRE TIGER” bubble tea brand, who filed a lawsuit on 30 November 2020 against two natural persons (the defendants), who are the owners of the bubble tea franchise named “THE FIRE BEAR”, alleging trademark infringement under the Trademark Act 2534. The plaintiffs requested that the court issue an order requiring the defendants to stop infringing on the plaintiffs’ trademark and service mark, and ask that the defendants refrain from using any trademarks or service marks that resemble those belonging to the plaintiffs.
The Court found that the defendants’ use of the terms “FIRE BEAR” and “THE FIRE BEAR” as the store name and on their goods, menus and service business, as well as the use of a fire-breathing bear head sculpture with a mouth opening to deliver bubble tea products to customers, was similar enough to the plaintiffs’ business to cause customers to believe that the products originated from the same source.
The defendants were found guilty of infringing the plaintiff’s rights and committing passing off by the Court. Consequently, the defendants were ordered to pay THB10 million in damages, along with legal interest from the date of filing until the infringing actions are ceased.
The case between “FIRE TIGER” and “THE FIRE BEAR provides evidence that trade dress in the form of a store layout can be safeguarded in Thailand. Even so, trade dress is not explicitly recognized under the Thai Trademark Act B.E. 2534. The protection and enforcement of trade dress in the form of “store layout” in particular has been a constant challenge in Thailand, given the lack of explicit laws and precedence. However, this case shows that regardless of the absence of explicit legislation in the country, the Court is open to interpreting the law in line with international standards by making use of the existing laws offering protection to brand owners.
How does one protect trade dress in Thailand if it is not explicitly recognized under the Thai Trademark Act?
Although there is no specific law governing trade dress, the protection of trade dress can be sought through a traditional trademark application as soon as the mark has been used in public. Referring to the infringement in the above case, the ground of prosecution for this case is the use of an identical or similar name and logo for both the products and restaurants, which falls under the definition of “mark” according to the Thai Trademark Act B.E. 2534. Therefore, trademark registration is a necessary step, which can be utilised in the protection for trade dress.
It is important to ensure that your business is appropriately protected against your competition. Unauthorized parties who use your registered trademark without authorization can damage your brand, reputation, and business. These parties are usually in a weaker position legally and can be easily prevented from causing further damage by pursuing legal action.
Want more information on trade dress and trademark registration in Thailand? Reach out to us at firstname.lastname@example.org!
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