Guidelines for the Discretion of Foreign and Thai Courts in Making a Decision on the Infringement of Well-known Marks

Abstract

This research aimed to study the protection of the well-known marks and the guidelines for the court's discretion in making a decision on the infringement of trademarks with reputation. This documentary research is composed of gathered data from statutory provisions, academic articles, as well as national and international court judgments. The findings revealed that in determining whether there is a similarity between the original or earlier trademark and an unregistered or later trademark, the court must take into account all factors relevant to the circumstances of the case then the court will further consider whether the original/earlier trademark has a strong distinctive characteristic. If the original/earlier trademark has strong distinctive characteristic, the similarity of the distinctive characteristic to that of the later trademark is likely to confuse the public in believing that the later trademark is the original/earlier trademark. In this manner, it would show the dishonest intent of the later trademark. The European Court of Justice (ECJ) considered this approach of discretion to be insufficient in establishing the use of the later trademark to take unfair advantage of or is detrimental to the repute of the earlier trademark. That is, the earlier trademark must present evidence proving actual damage and that there has been a change in the economic behavior of the average consumer of the goods or services for which the earlier trademark was registered consequent on the use of the later trademark.