By Saowanee Leewijitsin
“Stop smoking, start sucking” is a well-known slogan of “Chupa Chups”, a popular lollipop and confectionery brand originally founded by Enric Bernat in 1958 and presently owned by Perfetti Van Melle S.p.A.
The trademark “Chupa Chups” has been used and registered in many countries around the world. In Thailand, however, Enrique Bernat F., S.A. (the former owner) discovered that similar marks (as shown below right) had been filed for “Candy”, in class 30 by Thai company, European Food Public Co., Ltd., which is also in the confectionery and snack industry.
Not only were the trademarks filed in the same classification for the same kind of goods, but the Thai company had also used these similar marks with its products, sold, and exported them. Of course, this inevitably affected Chupa Chups’ sales and the Thai company became the biggest Chupa Chups’ competitor.
So, if you were the Chupa Chups’ brand owner, how would you handle this situation?
And, how would you beat this competitor… legally?
Enrique Bernat F., S.A. (the plaintiff) and Perfetti Van Melle S.p.A. (the co-plaintiff) brought a civil litigation case against European Food Public Co., Ltd. (the defendant), while all of the defendant’s trademark applications were in the examination process at the Thailand Trademark Office, by claiming that the defendant had committed the infringement of their registered trademarks, which were registered in Thailand since 1995. Both plaintiffs also requested the court to order the defendant to:
- stop manufacturing, selling, offering to sell, having for sale, import, and export candies and/or lollipops under the trademarks “JOOPY JOOPS” and “จุ๊ปปี้ จุ๊ปส์ (Thai word)”;
- withdraw all trademark applications of the defendant that are similar to the plaintiffs’ trademarks; and
- compensate the damages to both plaintiffs at the rate of THB 900,000 (USD 27,404) per month calculated from the date of filing the complaint onwards until the cessation of the trademark infringement.
In the IP&IT Court, the court pronounced its judgment that the plaintiffs’ complaint was dismissed and no costs shall be paid to the plaintiffs.
Both plaintiffs then appealed the IP&IT Court’s decision to the Supreme Court. After thoroughly considering the case, the Supreme Court agreed with the complaint of the plaintiffs and accepted that the closely similar pronunciations between the disputed marks could lead to the public confusion easily (“chu-pa-chups” vs “joop-py-joops”). The Supreme Court also pointed out that the young age of the target consumers for the products in question is directly linked to the level of awareness in consumption, as their ability to distinguish the products are lower than adults.
The Supreme Court finally reversed the IP&IT Court’s decision and rendered judgment (in the Supreme Court’s decision no. 6768/2553) that the defendant had committed the infringement of the plaintiffs’ registered trademarks and ordered the defendant to abide by the plaintiffs’ requests in (i) and (ii) according to the complaint. However, as the plaintiffs could not enumerate the damages to the court exhaustively, the defendant must pay the compensation to both plaintiffs only in the amount of THB 50,000 (USD 1,522) per month, calculated from the date the plaintiffs filed the complaint until the date the defendant ceased infringing the trademarks.
Although in the end the damages in this case were not as high as what Chupa Chups had requested, being able to eliminate the competitor legally still rendered a sweet ending for Chupa Chups, didn’t it? Likewise, our advice to you would be to “Stop hesitating, start registering!” if you also would like to taste the sweet flavour of your brand as Chupa Chups did.