PROTECTION OF WELL-KNOWN MARK AGAINST TRADEMARK DILUTION IN THAILAND

Abstract

Now a day, the legal protection for well-known marks has been expanding to cover the protection not only against the unauthorized use of a similar or identical trademark by another person, which cause the public consumers to be misled or confused on the origins or sources of the goods but the law has also expanded to cover the protection against the unauthorized use of a trademark that is identical with or similar to a famous mark in a way that would lessen the distinctive quality of such trademark. In other word, traditional trademark law on confusion-based liability aims to ensure consumer protection, and the protection of the quality of information transmitted to consumers. On the other hand, the traditional trademark law on confusion-based liability has expanded to cover the concept of dilution-based liability in order to protect trademarks as a property right, by securing an investment from the trademark owner to establish and promote such strong mark.

For example, let us consider the use of a trademark, which is similar to or identical with the famous Kodak Trademark for cameras, by another party for a completely non-competing product such as pianos or bathtubs. In this case, Kodak by Eastman Company would not be successful in filing the claim under traditional trademark law because the related law in such situations requires that an unauthorized party sell goods that are directly competitive with, or at least related to, those goods sold by the trademark owner, in order to constitute confusion-based liability.

The concept underlying the trademark dilution doctrine is based on the protection of producers, traders or manufacturers because under this doctrine, a trademark has been viewed as a valuable asset of the trademark owner. As the trademark owner has invested massive amounts of money and put considerable effort in making the mark highly distinctive and famous. The law seeks to prevent diminution in the value of a famous mark from the unauthorized uses of other marks, even when consumers are not confused as to the source of the goods or services. This is because the trademarks that are identical with or similar to the famous mark have been used in non-competing markets. Such use can diminish or dilute the mark’s selling power and distinctive value because the mark is no longer associated with a single source.

In Thailand, although a well-known trademark has long been protected and in practice, there are many dilution-like cases which the well-known marks are protected against trademark dilution by the determination by the court but there is no legal provision explicitly specifying the protection of well-known marks in the Trademark Act.

Therefore, this Article suggests that it is an appropriate time for Thailand to amend and incorporate an anti-dilution law in the Trademark Act, in order to protect the benefits of consumers, and to promote fair competition for traders, and especially the owner's of famous/well-known marks in Thailand, by entitling them to impose civil liabilities against trademark dilution.