DAMAGES FOR TRADEMARK INFRINGEMENT IN THAILAND
Transcript of DAMAGES FOR TRADEMARK INFRINGEMENT IN THAILAND
DAMAGES FOR TRADEMARK INFRINGEMENT
IN THAILAND
BY
MISS NARISA AEIMAMNUAY
A THESIS SUBMITTED IN PARTIAL FULFILLMENT OF
THE REQUIREMENTS FOR THE DEGREE OF MASTER OF LAWS
IN BUSINESS LAWS (ENGLISH PROGRAM)
FACULTY OF LAW
THAMMASAT UNIVERSITY
ACADEMIC YEAR 2014
COPYRIGHT OF THAMMASAT UNIVERSITY
DAMAGES FOR TRADEMARK INFRINGEMENT
IN THAILAND
BY
MISS NARISA AEIMAMNUAY
A THESIS SUBMITTED IN PARTIAL FULFILLMENT OF
THE REQUIREMENTS FOR THE DEGREE OF MASTER OF LAWS
IN BUSINESS LAWS (ENGLISH PROGRAM)
FACULTY OF LAW
THAMMASAT UNIVERSITY
ACADEMIC YEAR 2014
COPYRIGHT OF THAMMASAT UNIVERSITY
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Thesis Title DAMAGES FOR TRADEMARK
INFRINGEMENT IN THAILAND
Author Miss Narisa Aeimamnuay
Degree Master of Laws in Business Laws
(English program)
Major Field/Faculty/University Business Laws
Faculty of Law
Thammasat University
Thesis Advisor
Academic Years
Professor Amnat Wongbandit, Ph.D.
2014
ABSTRACT
In Thailand, trademark protection has direct and indirect effects on
economic development. At current situation of Thailand, many trademark infringements
still increasingly arise and when a trademark infringement occurs, the trademark owner
would usually seek the civil remedies from the court such as injunctions and damages in
order to recover their injury.
However, in Thailand, the Trademark Act B.E. 2534 does not provide the
provision determining the types of damages that the plaintiff may claim from infringer.
Within the Thai jurisdiction, the court applies trademark law and civil tort law to the
problem of trademark infringement. Anyhow, for compensation, the court applies the
concept of tort damages with the trademark cases under Section 438 of the Civil and
Commercial Code, which in most cases it is improper to apply this Section to the
trademark damages because the provision of this Section is too broad and that it is hard
to give the clear rules and guidelines to the parties and the court. Thus, it may lead to
the failure to achieve the compensation due to the fact that trademark law is more
complicated and different than the general infringement of tort law.
This thesis aims to study the trademark infringement and damages under
foreign laws, namely the United States, Australia, Singapore, Agreement on Trade-
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Related Aspects of Intellectual Property Rights (TRIPS) and Thai law in order to
examine the problems and seek the appropriate resolutions to handle the problem of
non-existence types of damages for trademark infringement under Thai trademark law.
Thus, to solve the mentioned problems, Thai trademark law should be
amended. The resolutions to problem of non-existence types of trademark damages
under Thai trademark law are separated into a short-term and a long-term.
To resolve this problem in short-term where the Trademark Act is not yet
amended, the President of the Supreme Court should issue the recommendation in relate
to types of claimable damages in trademark infringement case in order to give the clear
rules and guidelines for the parties and the civil courts in the proceeding. Moreover, the
Department of Intellectual Property (DIP), as the principal agency in the development
of intellectual property system in Thailand, should draft and publish the guideline and
model framework for legislation on types of damages for trademark infringement in
order to enhance the efficiency of intellectual property enforcement system.
In the long run, the Trademark Act B.E. 2534 should be amended by adding
the provision on types of claimable damages that the court may grant and easily apply
to trademark infringement case.
Keywords: Trademark, Trademark Infringement, Damages, Tort, Agreement on Trade
Related Intellectual Property Rights, the United States, Australia, Singapore, Thailand.
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ACKNOWLEDGEMENTS
This thesis would not have been possible without the guidance and the help
of several individuals who in one way or another contributed and extended their
valuable assistance in the preparation and completion of this study.
First and foremost, I would like to express my utmost gratitude to my thesis
advisor, Professor Dr. Amnat Wongbandit for his kindness in having accepted being my
advisor, and also his valuable suggestions and comments throughout the course of this
thesis. Especially, my sincere gratitude to Professor Phijaisakdi Horayangkura for
having accepted being a member of my thesis committee, and for giving me his
valuable time, comments, guidance and helpful criticism on my work. Moreover, I
would also like to acknowledge my other two committee members, Dr. Khemapoom
Bhumithavara and Dr. Munin Pongsapan, for their useful advice and comments to this
thesis.
I am deeply gratitude to my beloved parents for their love, understanding,
and supporting me throughout all my studies at Thammasat University and throughout
the period of this thesis. I would like to give my special thanks to Mr. Teepakorn
Komolphanporn, Assistance Public Prosecutor, for love, encouragement, and giving me
helpful suggestions to this thesis. Without them, the completion of this thesis would not
have been possible.
Miss Narisa Aeimamnuay
Thammasat University
Year 2014
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TABLE OF CONTENTS
Page
ABSTRACT (1)
ACKNOWLEDGEMENTS (3)
LIST OF TABLES (7)
LIST OF ABBREVIATIONS (8)
CHAPTER 1 INTRODUCTION 1
1.1 Background and Issues 1
1.2 Hypothesis 4
1.3 Objective of Study 5
1.4 Scope of Study 6
1.5 Methodology 6
1.6 Expected Result 6
CHAPTER 2 FUNDAMENTAL PRINCIPLES OF TRADEMARK
AND TORT LAW 9
2.1 Nature and Background of Trademark Protection 10
2.1.1 Background of Trademark 11
2.1.2 Definition of Trademark 11
2.1.3 Functions of Trademark 12
2.1.3.1 An indication of origin 12
2.1.3.2 A quality indicator 12
2.1.3.3 A method of advertising 13
2.1.3.4 A investment vehicle 14
2.1.4 Purpose of Trademark Law 14
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2.2 Acquiring of Trademark Rights 15
2.2.1 Through use in commerce 15
2.2.2 Registration 16
2.3 Trademark Infringement 17
2.3.1 Infringement of Registered Trademark 18
2.3.2 Infringement of Unregistered Trademark 19
2.4 Damages for Trademark Infringement 21
2.5 Nature and Background of Tort Law 24
2.5.1 Background of Tort Law 25
2.5.2 Purpose of Tort Law 26
2.5.3 Remedies for Torts 26
2.5.3.1 Damages 26
2.5.3.2 Injunctions 29
CHAPTER 3 DAMAGES FOR TRADEMARK INFRINGEMENT
UNDER INTERNATIONAL CONVENTIONS AND
LAWS OF FOREIGN COUNTRIES 30
3.1 International Conventions 30
3.1.2 Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement 1994) 30
3.2 Laws of Foreign Countries 34
3.2.1 The United States (The Lanham Act 1946) 35
3.2.1.1 Subject Matter of Protection 35
3.2.1.2 Trademark Infringement 36
3.2.1.3 Trademark Damages 40
3.2.2 Australia (The Trade Marks Act 1995) 46
3.2.2.1 Subject Matter of Protection 46
3.2.2.2 Trademark Infringement 46
3.2.2.3 Trademark Damages 49
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3.2.3 Singapore (The Trade Marks Act 1998, revised ed. 2005) 51
3.2.3.1 Subject Matter of Protection 51
3.2.3.2 Trademark Infringement 52
3.2.3.3 Trademark Damages 54
CHAPTER 4 PROTECTION OF TRADEMARK AND DAMAGES FOR
TRADEMARK INFRINGEMENT UNDER THAI LAWS 57
4.1 Trademark Act B.E. 2534 (1991) 57
4.1.1 Definition of Trademark 58
4.1.2 Protection of Registered Trademark 60
4.1.3 Protection of Unregistered Trademark 66
4.2 The problems of the Current Thai Trademark Law on Damages 68
4.2.1 Trademark Infringement 68
4.2.2 Remedies for Trademark Infringement 70
4.2.2.1 Injunctions 70
4.2.2.2 Damages 70
4.3 A Comparative Analysis of Trademark Damages 76
CHAPTER 5 CONCLUSIONS AND RECOMMENDATIONS 79
5.1 Conclusions 79
5.2 Recommendations 83
REFERENCES 87
BIOGRAPHY 93
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LIST OF TABLES
Tables Page
4.1 Comparative table: Types of claimable damages for trademark
infringement in the US, Australia, Singapore and Thailand 76
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LIST OF ABBREVIATIONS
Symbols/Abbreviations Terms
IP
WIPO
WTO
Intellectual Property
World Intellectual Property Organization
World Trade Organization
TRIPS Agreement on Trade-Related Aspects
of Intellectual Property Rights
IPITC The Central Intellectual Property and
International Trade Court
DIP The Department of Intellectual Property
US United States
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CHAPTER 1
INTRODUCTION
1.1 Background and Issues
In general, the most important feature of property is that the owner may
use his property as he wishes and nobody else can lawfully use his property without
his authorization. Property can take many forms, ranging from real property such as
estate, to personal property such as goods. Throughout the property development
theories, the concept of personal property had become divided into tangible property,
which refers to any types of property that can generally be moved and intangible
property, which generally refers to statutory creation such as copyright, patents or
trademarks. However, there are generally recognized limits of the exercise of that
rights and the limits on an owner’s actions result from expectations and rights of
others as formally sanctioned and sustained by law.1
Property rights establish
relationships among participants in any social and economic system. Property rights
give the holder of the right the ability to use a resource, the ability to exclude others
from using it, and usually the right to sell or to transfer the resource to another
person.2
The term “Intellectual Property” (IP) refers to creations of the human
mind that can be protected under law, such as inventions; literary and artistic works;
designs; and symbols, names and images used in commerce.3 Government grants the
inventors or creators the exclusive rights in inventions and creative works to
encourage them to spend time and other resources innovating and creating and also to
profit their creations by preventing others from using their creative works without
permission.
1 David Easley and Jon Kleinberg, “Network, Crowds, and Markets: Reasoning about
a Highly Connected World”, available at
http://www.cs.cornell.edu/home/kleinber/networks-book/networks-book-ch24.pdf.
(last visited Nov. 11, 2014) 2 Id.
3 World Intellectual Property Organization, What is Intellectual Property?, available
at http://www.wipo.int/about-ip/en/ (last visited Nov. 11, 2014)
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Ownership of intellectual property is similar to ownership of other forms of property.4
For example, the owner of a home has the right to exclude others from trespassing on
the property. The owner of intellectual property also has the right to exclude others
from infringing or taking the property. However, not all products of the mind can
achieve protection under the law.5 The creation must qualify under one of the types of
intellectual property law.
Intellectual property law is the law which concerns legal rights associated
with effort, creativity, commercial reputation and goodwill.6 Intellectual property law
covers copyrights, patents, trademarks, and trade secrets as well as related areas of
law such as the right of publicity and unfair competition.7 The law prevents others
from taking unfair advantage of the invention and provides remedies in the case of
infringement in order to encourage innovation and also reward entrepreneurs so that
that they can be motivated to build new and better inventions for public in return.8
A trademark is defined as any word, symbol, design, device, logo, or
slogan that identifies and distinguishes one product or service from another.9 If a
trademark is used for services rather than products, it is referred to as a service mark.
Trademarks and service marks are not limited to words, logos, and slogans. A
trademark can be anything that identifies and distinguishes a product or service, for
example, the yellow McDonald’s arches.10
Besides trademarks and service marks,
there are two other forms of mark: collective marks that signify membership in an
organization; and certification marks that certify quality or origin of goods.
4 David I Bainbridge, Intellectual Property 8 (1996).
5 Id. 6 Id.
7 Richard Stim, Trademark Law 3 (2000).
8 Embassy of the United States, Economic Report of the President, available at
http://usa.usembassy.de/etexts/econ/eop/2006/2006-10.pdf. (last visited Nov. 11,
2014) 9 Stim, supra note 7, at 3.
10 Id.
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According to the definition and function of trademark, a trademark
provides protection to the owner of the mark by ensuring the exclusive right to use it
to identify goods or services, or to authorize another to use it in return for payment. In
a larger sense, trademarks promote initiative and enterprise worldwide by rewarding
the owners of trademarks with recognition and financial profit. Trademark protection
also obstructs the efforts of unfair competitors, such as counterfeiters, to use similar
distinctive signs to market inferior or different products or services.11
The system
enables people with skill and enterprise to produce and market goods and services in
the fairest possible conditions, thereby facilitating international trade.12
In case of trademark law, the law is designed to serve two purposes. The
first is the purpose of protecting consumers from being misled about the source of
goods or services in the marketplace. And second, is the purpose of protecting
manufacturers’ investment of time, creativity and money by protecting the goodwill
they have built around their trademarks. And because of this two-sides protection,
trademark becomes an important matter in the modern commerce.13
Trademark protection is enforced by the courts, which the most systems
have the authority to stop trademark infringement. However, in the international scale,
when trade does not only occur locally or nationally, but consists of international co-
operations, there is a comprehensive international system for defining, protecting, and
enforcing IP rights, including both multilateral treaties and international
organizations. The famous treaties and bodies include Paris Industrial Property
Convention 1883, Berne Convention 1886, Agreement on Trade Related Intellectual
Property Rights (TRIPS) 1994, World Intellectual Property Organization (WIPO),
United Nations Commission on International Trade Law (UNCTRAL), World Trade
11
World Intellectual Property Organization, What does a trademark do?, available at
http://www.wipo.int/about-ip/en/ (last visited Nov. 11, 2014) 12
Id. 13
“Chapter 1 Nature and Purpose of Trademark Protection”, available at
www.lexisnexis.com. (last visited Nov. 11, 2014)
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Organization (WTO), World Customs Organization (WCO), and European Union
(EU).14
In today’s competitive business world, a trademark is one of the most
valuable intellectual properties and significant to each countries’ national economy
and commerce.15
Consumers have many choices of product they want to consume at
their desirable price and quality. The manufacturers consequently have found many
methods and techniques to compete each other in marketplace and to develop better
products and services. While, the globalization of trade in products and services has
changed, the problem of trademark infringement still has always been increasingly
arisen and it has also been one of the more difficult issues to resolve. The problem
also arises in the borderless world of cyberspace.
1.2 Hypothesis
In situation where trademark protection in Thailand has direct and indirect
effects on economic development, a number of trademark infringements still
increasingly arise. When the trademark infringement occurs, the trademark owner
would usually seek the civil remedies from the court such as injunctions and damages
in order to recover their injury.
However, in Thailand, the Trademark Act B.E. 2534 (1991) has no
specific provision concerning the types of damages that the trademark owner can
claim in case of infringement. Thai court generally applies the general principle of tort
law to the case through Section 438 of the wrongful act in the Civil and Commercial
Code, which in most cases it is improper to apply this Section with the trademark
damages because this Section is so broad and that it is hard to give the clear rule and
guideline to the parties and the court.16
Although, Section 438 is the general principle of compensation in tort law
which the court generally applies for the civil cases under court’s discretion, while
14
Catherine Colston & Kirsty Middleton, Modern Intellectual Property Law 7
(2005). 15 Worrawong Atcharawongchai, “Trademark damages: the comparative study on
trademark damages in Thailand and US” 320 (2012). 16 Id.
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applying Section 438 for the trademark infringement cases may lead to the failure the
achieve the goal of compensation due to the fact that trademark law aims to protect
human intellect which is intangible values property where the related damage is more
complicated and different than the general infringement of tangible property. On the
other hand, Section 438 only determines the damages for general tort infringement
that is mostly relevant to the injury to death, body, health and tangible property.
Moreover, in regard to, limitation on Section 438 is that it does not clearly stipulate
damages for profits such as defendant’s profits or loss profits. Thus, it is improper to
apply to the trademark disputes, which are intangible and related to the strict liability,
private interests, and also national economy and commerce.
In addition, the court regularly grants injunctions and damages against
further trademark infringement without indicating what types of damages are
included. The absence of types of damages is causing the problem that the plaintiff
may over-claim the damages through their own estimation, which is normally hard to
prove such damages and therefore the court shall grant damages according to
circumstance and the aggravation of the infringement, which is usually less than the
plaintiff’s expectation. Thus, trademark law, which is special law aiming to protect
private interest and is one of the law that affect economic growth and development,
the problems of the trademark damages can therefore lead up to the inadequate and
ineffective protection of IP regimes.
In conclusion, the provision relating to the claimable damages for
trademark infringement should be enacted under Thai trademark law in order to give
the clear rule and guideline to the court and the parties.
1.3 Objective of Study
a. To study nature and principle of trademark, trademark infringement and
trademark damages including their legal protection from trademark principles in
Thailand, The United States, Australia, Singapore and Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS) 1994.
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b. To study the legal problems of the current trademark law on damages
under Thai trademark law.
c. To analyze the problematic effects of the Thai trademark law on
damages
d. To seek appropriate and effective solutions for the problems of
trademark law on damages under Thai trademark law.
1.4 Scope of Study
This thesis indicates studying Thai Trademark Act B.E.2534 by focusing
on legal principles of trademark including the acts which are considered as trademark
infringement and trademark damages. Comparison with trademark law in foreign
counties and related international regulations, namely The United States, Australia,
Singapore and Agreement on Trade Related Intellectual Property Rights (TRIPS)
1994 in order to seek more appropriate solutions to handle the damages for trademark
infringement under Thai trademark law.
1.5 Methodology
All sources being used in this thesis are based on documentary research
that include documents, textbooks, statutes, articles in law journals, Thai Supreme
Court’s decisions, the Intellectual Property and International Trade Court (IPITC)’s
decisions and other related sources in order to give a better understanding of the
issues.
1.6 Expected Results
This thesis aims to better understand the nature and background of
trademark including their functions; principles concerning damages in trademark
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infringement; and also the purpose of trademark law; trademark infringement;
damages for trademark infringement; and principle of tort law.
Moreover, the main topic of this thesis is the study of the legal problems
of the current trademark law on damages under Thai trademark law. Thus, the
purpose of the results section of the thesis is to understand the legal problems
concerning the non-existence types of certain damages for trademark infringement
under Thai trademark law and to seek the appropriate solutions for solving the
problems of the non-existence types of certain damages for trademark infringement
under Thai trademark law.
Review of Related Literature and Studies
In addition, the research of this thesis based on the ideas and facts in the
article “Trademark Damages: The comparative study on trademark damages in
Thailand and US” by Judge Worrawong Atcharawongchai that was published in the
Intellectual Property Court and International Trade Forum, year 2012. In the article,
the author separates the content into three main sections that is 1) Thailand trademark
law, 2) US legal framework trademark law, and 3) comparative study on the US and
Thailand trademark damages.
However, there are differences between the contents in the article and the
contents in this thesis, for example the principle of tort law and damages; TRIPS
Agreement; legal framework of trademark law in United States, Australia and
Singapore, and the comparison between those countries and Thailand regarding
damages for trademark infringement will be mentioned in this thesis. Even though the
resolution in this thesis is similar to the resolution in the article due to the fact that
there is no provision regarding trademark damages under Thai Trademark law, which
it should therefore be revised by adding a specific provision relating to damages;
however in this thesis, the author also suggests different options that the following
short-term resolutions should be implemented in order to resolve the problems where
the Trademark Act is not yet amended: (1) the guideline recommendations concerning
trademark damages which issued by the President of the Supreme Court and (2) the
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guideline and model framework for legislation on types of damages for trademark
infringement drafted and published by the Department of Intellectual Property (DIP),
as the principal agency in the development of intellectual property system in
Thailand.
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CHAPTER 2
FUNDAMENTAL PRINCIPLES OF TRADEMARK
AND TORT LAW
Intellectual property (IP) is referred to as “the novel products of human
intellectual endeavor”.17
The term of property is used to imply the existence of rights
and remedies in respect of the property. It can be owned sold, leased or given away
just like other property.18
The most common forms of intellectual property are
copyrights, patents and trademarks, but several related rights fall into this category as
well.19
Intellectual property law is designed to protect two purposes. The first
goal is to grant statutory expression to the moral and economic rights of the creators
in their creations and also the rights of the public to access the creations. The second
goal is to promote creativity and the dissemination of new knowledge and to
encourage fair trading which would lead economic and social development of
countries.20
IP law covers copyrights, patents, trademarks, and trade secrets as well as
related areas of law such as the right of publicity and unfair competition. The law
prevents others from taking unfair advantage of the invention and provides remedies
in the case of infringement in order to encourage innovation and also reward
entrepreneurs so that that they can be motivated to build new and better inventions for
public in return. Each form of intellectual property has a unique function in helping
individuals and businesses protect their business assets.
17 WIPO, supra note 11. 18 Hector MaxQueen, Charlotte Waelde, & Graeme Laurie, Contemporary
Intellectual Property Law and Policy 9 (2008). 19 Renée Marlin-Bennett, Knowledge Power: Intellectual Property, Information &
Privacy 5 (2004). 20 World Intellectual Property Organization, “Chapter 1 Introduction The Concept of
Intellectual Property”, available at http://www.wipo.int/about-
ip/en/iprm/pdf/ch1.pdf. (last visited Nov. 11, 2014)
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However, this thesis focuses on trademarks which deemed as one of
important intellectual property because trademarks are one of the few assets that can
provide a business with a long-term competition advantage and can also be a very
economically efficient communication tool.
2.1 Nature and Background of Trademark Protection
In general, a trademark is any word, name, symbol, device, service or a
combination of them that is used to identify the goods from another branding, and to
indicate the source of the goods, although the source is unknown. Trademark plays a
very important role in the marketplace.21
They permit consumers to identify the
source of goods or services. The purpose of trademark law is to ensure that consumers
are able to rely on marks in operating their choices by prohibiting competitors from
using marks in a way that confuses consumers about the source of their products or
services.22
From this point, it benefits both consumers and manufacturers. Consumers
are able to identify the source of goods or services and obtain the desired goods or
services. At the same time, manufacturers benefit due to the law help them create a
recognizable brand to attract consumer loyalty and also protect business goodwill.
Goodwill is considered an intangible business asset which can be extremely valuable.
It is defined as the benefit and advantage of the business’s image, good reputation and
connection of a business.23
However, trademark also has many roles besides
distinguishing goods or services of one manufacturer from others but it dramatically
reduce the costs of decision-making by allowing consumers to rapidly select the
desired goods or services from among competitive offerings. Furthermore, trademark
support stronger sales volume, stronger margins, and can provide price maintenance
legally.
21 Margreth Barrett, Intellectual Property 187 (2004). 22 Id. 23 “Goodwill legal definition”, available at
http://www.duhaime.org/LegalDictionary/G/Goodwill.aspx (last visited Nov. 11,
2014)
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Moreover, the historical development of the concept of trademark can be
best understood through the functions in trade of marks.24
2.1.1 Background of Trademark
About the historical background of trademark, the origin of
trademark can be traced back to the beginning of trade and circulation of goods in
market.25
The first type of marks probably was found around 10th
century, a mark
called a “merchant’s mark” which is the marks affixed to the goods by the owner. It
can be considered as one kind of proprietary mark and it used to prove the identity of
goods whose owners were missing due to shipwrecks, piracy and other disasters.26
The second type of mark was “craftsman’s mark” which were affixed to the goods
and served to identify the craftsman or the manufacturer of the goods. This kind of
marks was used in connection with the cutlery and clothier trades. This was the
beginning of the use of trademark to identify the sources of goods and to serve as
indicator of expected quality.
2.1.2 Definition of Trademark
A trademark is a word, name, symbol or device or a combination of
them, that is used to distinguish the goods or services of one manufacturer from the
goods of other manufacturers.27
Trademark is particularly important for consumer
goods. It can be said that trademarks represent brand or a company name. Company
benefits from trademark by being able to create a recognizable brand to attract
consumer loyalty. At the same time public benefits by being able to identify whose
goods or services that are using. In some cases, the trademark confer status or cachet
to a product, for example, other watches may keep time just as well and look just as
nice as a Rolex, but a Rolex watch just by its name carries prestige.28
The range of
things that are capable of serving as trademarks is great and includes not just words
but also such things as drawings and abstract designs; slogans; distinctive features of
the product packaging; and distinctive, non-functional features of the product itself.
24 Neil J. Wilkof, Trade Mark Licensing 21 (1995). 25 Institute of Intellectual Property, “Chapter 2 The History and Development of
Trademark Law”, available at http://www.iip.or.jp/translation/ono/ch2.pdf (last
visited Nov. 11, 2014) 26 Id. 27 Stim, supra note 7 28 Marlin-Bennett, supra note 19, at 31.
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For example, the manufacture of a soft drink might claim as trademark not only the
brand name of the drink, but also the artwork on the label, the distinctive shape of the
bottle, and the slogan used on the label and in advertising.29
2.1.3 Functions of Trademark
The essential function of trademark is to assure the identity of the
origin of the goods or services to consumers. Trademark also proposes to guarantee its
quality, advertises the goods or services and creates an image of the goods or services
in the minds of the public particularly the consumers or the prospective consumers of
such goods or services.
Thus, trademark does not performing only the identification of the
ownership, but also performing four functions as an indication of origin, a quality
indicator, a method of advertisement and investment vehicle.30
2.1.3.1 An indication of origin
An indication of origin is primary function of trademark. A
trademark must be distinctive so as to be capable of performing such function. The
trademark is used to differentiate products of those of one manufacturer from other
manufacturer’s products. If all products in the same category are sold under the same
name, sign or symbol, it can make the consumer feel confused, caused by the product
similarity, choice or information. As a result, the consumers may be unable to get a
product with the qualities they desire.31
Moreover, in this function, it does not matter
whether the consumer knows the identity of the source.
2.1.3.2 A quality indicator
The quality indicator means that any given mark should be
used for goods or services whose quality is constant. The trademark acts as symbol
that represents the goodwill of the business. This builds up image of certain differing
quality in the consumers’ minds. Thus, it assures quality of the product for consumers.
The quality guarantee function assumes that consumers will use the trademark to
identify goods or services which they have already known to be satisfactory among
29 Barrett, supra note 21, at 189. 30 MacQueen, Waelde, & Laurie, supra note 18, at 565. 31 S Ricketson, The Law of Intellectual Property (1984) available in Hector
MacQueen, Charlotte Waelde, & Graeme Laurie, Contemporary Intellectual
Property Law and Policy 542 (2008).
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the same type of goods or services.32
Therefore, consumer who had positive
experiences with goods will remember the trademark of goods and come back to
purchase the same goods in the future.33
Moreover, if the consumers spot the mark in different goods,
they will assume from their past experiences of goods bearing the mark that the new
goods will be of the same quality as the previously experienced goods, although the
goods are different in nature. As a matter of general practice, owner of marks promote
reputation of their marks by suggesting that the goods or services sold under their
marks live up to a certain consistent level of quality.34
This does not necessarily mean
that trademark owner cannot change the characteristics or ingredients of their goods.
The quality reputation symbolized by a mark constitutes for the owner an essential
element of his mark’s value.
2.1.3.3 A method of advertising
Trademarks are an advertising device par excellence.35
Trademarks help the owner promote and retain consumer demand. At the same time,
trademarks also help inform the consumer as to the goods or services. Thus, it is
important that trademark should not be: confusing or deceptive; used in false or
misleading advertising; and contribute in any other way to acts of unfair competition.
The advertising function is also called as the publicity or communication function that
is one of the most important functions of a trademark. The good trademark must be
noticeable from other marks so that consumers can easily recognize the trademark.
32 Noah D. Genel, “Keep It Real: A Call For a Broader Quality Control Requirement
in Trademark Law” 8 Fordham Intell. Prop. MEDIA & ENT. L.J, 269, 274 (1997). 33 IIanah Simon, The Functions of Trade Marks and Their Role in Parallel
Importation Cases – What Can the EU and Japan Learn From Each Other’s
Experience?, available at
http://www.iip.or.jp/e/e_summary/pdf/detail2006/e18_16.pdf (last visited May. 20,
2015) 34 Id. 35 World Intellectual Property Organization, Background reading material on
intellectual property 150 (1988).
14
2.1.3.4 A investment vehicle
With the growth of industry and the development of
communications technology, a trademark can be seen as an investment.36
Owing to
the fact that time, money and effort are spent on establish recognition of consumers
on a particular mark, the trademark itself can be seen as an object which can be sold,
assigned, licensed, and be the subject of security.37
In summary, by performing each function, a trademark is
useful to both manufacturers and consumers. For example, when a trademark
functions as a guarantee of quality, it assures the consumers of a certain quality of the
goods sold under the same mark because of its established reputation. Therefore, the
consumers’ decision to purchase directly benefits the manufacturer’s business.
2.1.4 Purpose of Trademark Law
“The primary purpose of trademark law is to prevent unfair
competition by applying a test of consumer confusion and providing rights and
remedies to the owner of trademark.”38
Ensuring trademark can functionally identify
the source of goods or services benefits both consumers and manufacturers.
Consumers benefit from this because they are able to identify and obtain the goods or
services that they actually need. Moreover, the consumers can identity the
manufacturers, complain for poor quality or damaged goods, and also reward good
quality by repeated purchasing, trademark can encourage businesses to maintain the
standard of quality.39
In addition, businesses benefit because trademark law helps
them create and protect business good will.40
Good will is the business’s image, good
reputation of brand and expectation of repeat purchase, which while intangible, can be
very valuable. Thus, the purpose of trademark law protects both consumer and
manufacturers.
36 MacQueen, Waelde, & Laurie, supra note 18, at 544. 37 Id. 38 The IOWA State University, Trademark Legal Basics, available at
http://www.trademark.iastate.edu/basics (last visited Apr. 1, 2015) 39 Barrette, supra note 21, at 188. 40 Id.
15
2.2 Acquiring Trademark Rights
Unlike copyright and patent laws, trademark laws do not reward
creativity. Trademark rights do not arise from invention, discovery, or creativity.
Exclusive rights in a trademark are acquired by an owner who uses or apparent an
intention to use a mark. In this connection three different systems can be distinguished
as follows:
The first system is characterized by the requirement that a trademark must
be in actual use in order to qualify for registration. This system relies only on the use
of the trademark while the registration only has a reinforcing effect.41
The second system requires that the application for the registration of a
trademark be accompanied by a declaration from the trademark owner certifying that
he intends to use the trademark.42
Furthermore, this system provides for sanctions if
the trademark is not used after the expiration of certain time limits, for example,
removal for the unused trademark from the register.
The third system permits the acquiring exclusive rights of trademark
without any use of the latter and without any declaration of intent to use, but requires
that the trademark must be used within certain time limits. Under the laws of all
countries, the effect of the registration of a trademark is limited in time. For example,
duration of trademark protection is 10 years from the registering date, but it can be
renewed indefinitely for 10 years periods, provided the trademark is still in use at time
of expiration.
However, most countries specify that exclusive rights in trademark may
be obtained through use or through registration.
2.2.1 Through use in commerce
In countries where trademark system is based on use, the owner of
mark may obtain trademark rights through actual use in commerce of any word,
41 WIPO, supra note 35, at 161. 42 Id.
16
name, symbol or device, or combination thereof, to identify its goods without
registration. This approach is founded on the consideration that the function of a
trademark is definite for its protection.43
Furthermore, only through use can fulfill the
function of trademark because if a trademark is not use, the public does not know
such trademark, and no confusion can arise through the use of the same trademark by
other businesses.
In determining whether the use in commerce is sufficient to create
trademark rights, it should consider the totality of circumstances.44
Use is sufficient to
establish trademark rights if the use is public enough so that it identifies or
distinguishes the mark of goods in appropriate segment of the public as those of the
person using the mark.45
If the mark is used in commercial transaction, and if the use
is consistent and continuous, this is sufficient to establish the trademark rights.
2.2.2 Registration
However, the countries which apply the system based on use, also
provide for a system of registration which offer certain advantages in respect of
trademark protection, especially in regard to legal security and proof. In a large
number of countries, trademark rights may be acquired only through registration. This
approach is based on considerations of legal security46
. Moreover, it is based on the
belief that a company may have an interest in obtaining the registration of a trademark
without immediately starting to use it.47
Therefore, registration offers the possibility
of carefully planning the marketing of the goods or services for which trademark is to
be used.48
In different countries, registration system benefits trademark owner
in different way, but generally, the essential benefits are;49
43 Id. at 160. 44 Todd S. Holbrook, Alan Nathan Harris, Model jury instructions: Copyright,
trademark, and trade dress litigation 150 (2008). 45 Id. 46 WIPO, supra note 35, at 160. 47 Id. at 161. 48 Id. 49 Id.
17
1. The registration serves as substantial notice to the public of the
registrant’s;
2. The registration is preliminary evidence of the ownership of
trademark owner and gives the trademark owner an exclusive right to use the mark on
his goods or services which the mark is registered to;
3. The registration enhances the reputation of the trademark owner.
Most of the countries which provide for acquiring trademark rights
through registration nevertheless require that a registered trademark be used after a
certain period of time.50
This requirement avoids the confusion of trademark
registered with unused trademark.
In conclusion, if the trademark satisfies the legal requirements
under the jurisdiction, it can be registered. A trademark owner can register the mark
without the prior use of the mark on goods or services.
2.3 Trademark Infringement
Trademark infringement occurs when any person other than trademark
owner uses a trademark the same as or similar to a registered trademark without any
authorization of trademark owner. It creates the likelihood of confusion with the
trademark owner’s goods or services.
Infringement proceeding may be begun on or after the date on which the
trademark is registered.51
Use for the purpose of infringement is a use of a sign “as a
trademark” or “in a trademark sense” which it means the infringer has to use mark of
trademark owner as a mark in his goods or services.52
50 Id. 51 MacQueen, Waelde, & Laurie, supra note 18, at 613. 52 Id. at 614.
18
The basic elements of a trademark infringement action are:53
(1) plaintiff’s ownership of a valid mark through use in commerce, or
through acquisition of secondary meaning and;
(2) defendant’s subsequent use of the same or a similar mark, without the
consent of the plaintiff, in a manner that causes a likelihood of confusion in the
marketplace.
However, to prove a likelihood of confusion, it is not necessary to prove
that actual confusion occurred. The key factors considered by the court in most cases
are the degree of similarity between the marks at issue and whether the parties’ goods
or services are sufficiently related that consumers are likely to assume that they
originate from a common source. Moreover, the court normally consider includes how
and where the parties’ goods or services are advertised, marketed, and sold; the
purchasing conditions; the strength of plaintiff’s mark; and also the defendant’s intent
in adopting its marks.
2.3.1 Infringement of Registered Trademark
In common law countries, enforceable trademark rights normally
acquired through use and reputation. However, even under common law regimes,
registration of trademark still provides substantial procedural and advantages in
prosecuting infringement. In addition, in the European Union, a trademark registration
is a single registration that provides protection in the entire territory of the EU, while
in the United States, the ownership of registered trademark
Registration of the trademark can be considered as an evidence of
the validity of the trademark. The registered trademark owner has an exclusive right
to use the mark for his goods or services. For the infringement of registered
trademark, the infringer must have to used the mark on his goods or services that is
likely to be the same as or similar to the goods or services of the trademark owner.
Regarding legal action for infringement, trademark owner needs
only establish that the infringing mark of the infringer is identical or deceptively
53 Holbrook & Harris, supra note 44, at 162.
19
similar to the registered trademark. However, in some jurisdiction, the trademark
owner must shows that the infringing goods or services are within the scope of the
goods or services specified in the owner’s registration.
2.3.2 Infringement of Unregistered Trademark
Generally, in registration-based system, the unregistered trademark
cannot be infringed that cause the trademark owner who has suffered from the
infringement cannot bring any infringement proceedings against the infringer.
However, the trademark owner may be able to use criminal process, unfair
competition claim or passing off claim to handle the unregistered trademark case.
Passing off is a common law tort which can be used to enforce
unregistered trademark right. It protects the goodwill of trader from a
misrepresentation. Passing off mean the act that makes the public confuse about the
source of goods that the goods of infringer relate to the goods of trademark owner.
Passing off occurs where the defendant uses an identical or similar mark together with
other elements, for example, packaging, to misrepresent that the goods originate from
the plaintiff. In passing off action, the infringer’s goods or services do not need to be
the same or related category; it can be different from those unregistered goods or
service.
In common law of passing off, there are three necessary elements in
passing off action as follows:
1. The existence of goodwill
The first element requires a plaintiff to establish that the goods or
services enjoy a reputation or goodwill in the minds of consumers, that consumers
directly associate the plaintiff’s goods with a distinctive selling, marketing or
identifying feature and that purchasers rely on the feature to distinguish the plaintiff’s
goods from other competitor’s goods. Goodwill is simply defined as “the attractive
force which brings in custom”, or “whatever adds value to a business by reason of
situation, name and reputation.54
Even though goodwill may be consolidated in words,
54 Lord MacNaghten in IRC v. Muller & Co’s Margarine Ltd. [1901] AC 217.
20
names, or shapes, passing off protect the goodwill of the entire plaintiff’ business, not
individual mark.55
2. Deception due to misrepresentation
A misrepresentation that leads to confusion, need not arise from
willful misrepresentation or deception. It may also arise from careless or negligent
misrepresentation. A misrepresentation is a false statement of fact. The most common
form of misrepresentation in passing off is where a defendant falsely represents that
his goods or services are the goods or services of the claimant or in some way have a
business connection with the claimant. The misrepresentation in passing off must
connect with the origins of goods or services, not the qualities of goods. In addition,
misrepresentation can damage the claimant’s goodwill by confusion about the goods
or services in marketplace.
Misrepresentation can be made in many forms as follows;56
(1) A misrepresentation that the defendant’s goods or services has
won some award;
(2) A misrepresentation that the defendant’s goods or services which
once connected with the claimant’s business, still exists by the time the customers
make a purchase;
(3) Providing the defendant’s goods or services to customers who
requested the claimant’s goods or services without any expected explanation;
(4) Goods or services have been correctly attributed to the claimant
but misrepresented as being of greater quality; and
55 David Wilkinson & Kate Wibberley, “Overview of Passing Off”, available at
http://www.bristows.com/assets/documents/Overview_of_Passing_Off.pdf. (last
visited Jun 18, 2015) 56 Id.
21
3. Damage to the plaintiff
This element requires a plaintiff show actual loss in order to obtain
proper compensation from a passing off claim. A plaintiff in passing off action does
not have to prove any consumer was actually misled or any actual damage sustained,
but requires proving that his business has been suffered from actual or reasonably
foreseeable damage caused by the defendant’s misrepresentation. The reputation and
goodwill of business are considered valuable commercial assets. The most obvious
form of damage is loss of custom, actual or potential, arising from confusion.
However, the award of damages can be granted to the plaintiff in passing off claim,
but it is normally hard to prove and measure such damage.
Generally, the claimant alleges damage under two stages: First, loss
of sales; and second, damage to goodwill and reputation.
Thus, in order to succeed in a passing off action, the trademark
owner has to prove that (1) the trademark owner has goodwill and reputation; (2)
there is a misrepresentation in the course of trade; (3) the trademark owner has
suffered from actual or reasonable foreseeable damage.
2.4 Damages for Trademark Infringement
Where the infringement has been occurred, the court usually grants an
injunctive relief or monetary recovery to compensate the plaintiff in the case. Relief in
the form of damages is one of the remedies available in claims of tortious liability.
The Plaintiff in an action may recover any damages sustained by the plaintiff and may
also recover defendant’s profits resulting from the infringement. Some jurisdictions
allow for awards statutory damages, exemplary damages and other remedies.
However, granted damages must be reasonably proven to the court by the plaintiff.
Furthermore, there are many types of damages for trademark infringement
recognized under the law that is;
22
(1) Compensatory Damages (also called “Actual Damages)
This damages are awarded with an intention of putting the party who has
suffered injury in the same position as he would have been had the tortious act not
been committed. The amount awarded is based on the proven damage, loss, or injury
suffered by the plaintiff.
In determining the amount of actual damages, the plaintiff may include
any of the following categories;57
(1) Any profits that plaintiff would have gained from additional sales were
it not for defendant’s infringement;
(2) Any damage to plaintiff’s goodwill, including plaintiff’s business
reputation;
(3) Any expense plaintiff incurred to try to prevent consumers from being
misled; and
(4) The cost of any corrective advertising plaintiff might be required to
engage in to correct any public confusion or damage to goodwill caused by the
infringement.
(2) Nominal Damages
Nominal damages operate to affirm the infringement of a legal right.58
Nominal damages are awarded in certain cases where the plaintiff’s right has been
infringed, but no loss is sustained or the extent of the damage cannot be measured and
proved. “Such an award is in effect a declaration of plaintiff right and the
57
Holbrook & Harris, supra note 44, at 212. 58
James Edelman, Gain-Based Damages Contract, Tort, Equity and Intellectual
Property 243 (2002).
23
determination that defendant has wrongfully infringed upon it.”59
In other word, as a
general rule, actual damages need not be shown to receive nominal damages.60
Nominal damages usually are awarded after the court declines the plea of
the plaintiff that compensatory damages should be awarded. However, the plaintiff
may not be awarded nominal damages in every case where he does not receive
compensatory damages. Furthermore, the amount of nominal damages awarded is
generally a small sum.
(3) Punitive Damages
Punitive damages are awarded in addition to actual damages in certain
circumstances. Punitive damages are awarded to the prevailing party in addition to
compensatory damages when the defendant’s action is willful, malicious and
oppressive. The award of punitive damages is at the discretion of the court. Anyhow,
actual damages must exist before the court can award punitive damage. Once these
actual damages have been established, the court take the position that the punitive
damages must bear some relation to the compensatory damages received. 61
The court uses punitive damages to advance public policy goals to punish
one guilty of willful wrong and to prevent the defendant and potential offenders from
further misconduct.62
However, punitive damages are not provided in many countries
due to the principle that any punishment requires pre-established criminal provision.
(4) Statutory Damages
Statutory damages are awarded in situation where it is difficult to
determine the exact value of harm or infringement to the injured person. The court
59 John A. Bauman & Kenneth H. York, Remedies 3 (1987). 60 John F. O’Connell, Remedies in a nutshell 64 (1985). 61 Id. at 61. 62 FREGRE & BENSON LLP, “Availability of Punitive Damages for Trademark
Infringement”, available at
http://www.faegrebd.com/files/3647_Punitive_Damages.pdf (last visited Jun. 15,
2015)
24
may award the statutory damages even in the absence of proof about the plaintiff’s
losses or defendant’s profits. Before the statutory damages were an alternative, the
court awarded damages based on the plaintiff’s damages or defendant’s profits from
the sales of counterfeit goods.
There are three essential requirements on awarding of statutory damages
in trademark case that is; (1) there must be a trademark registration; (2) the infringing
mark must be nearly identical to the original mark; and (3) the infringing goods or
services is listed in the trademark registration.
In addition, the court has a broad discretion in awarding statutory
damages. Moreover, when a defendant’s profits could be determined, the court may
consider these in awarding statutory damages.
2.5 Nature and Background of Tort
“Tort” is a simply the French word for “wrong”. Tort is defined as an act or
omission which is related to a harm or injury suffered by a determinate person, giving
right to the civil remedy which is not an action of contract.63
A crime is an act against
the public pursued by the state, while the tort is a private wrong pursued by the
injured party.64
“A tort may have a cause of action from acts or omissions in the
accomplishment of a non-contractual duty of care. Conversely, the simple denial of an
act or omission is not legally actionable, as those specific duties are related to
morality or of humane concerns are not within the capacity of tort law.”65
Tort can be divided into three general categories that is intentional torts,
negligent torts, and strict liability torts. Intentional torts arise from intentional acts,
63 Academia.edu, Tort-Topic-1: INTRODUCTION- Definition, nature and scope,
available at http://www.academia.edu/6871868/TORT_-
TOPIC_1_INTRODUCTION_Definition_Nature_and_Scope (last visited Jun. 2,
2015) 64 Id. 65 Id.
25
whereas negligent torts generally result from carelessness. Both intentional torts and
negligent torts imply some fault on the part of the defendant. On the other hand, in
strict liability torts, there may be no fault at all, but defendant is sometimes required
to recover for the losses of injured person which the defendant was not careless and
did not intend to do harm. In addition, the three main essential constitutes of tort are
wrongful act, damage and legal remedy. Tort obligations are duties enforced by the
law obligations to evade some type of loss to others as a matter of public policy.
The most obvious type of tort liability is physical harm to the person such
as assault, battery, wrongful death or property such as trespass. Mental suffering can
be redressed if it is a result of physical injury. Other protected interests include a
person’s reputation, privacy, and economic interests misrepresentation to secure an
economic advantage, certain forms of unfair competition.
2.5.1 Background of Tort
The early history of tort is contained in two cases.66
The first case
involved the negligent performance of undertaking, calling, or office between parties
who were in a prior relationship.67
The second case involved parties who were not
involved in the prior relationship.68
The plaintiff’s action was based on the
defendant’s failure to protect against foreseeable injury.69
A century ago Oliver
Wendell Holmes, Jr., examined the history of negligence in search of a general theory
of tort. He concluded that from the earliest times in England, the basis of tort liability
was fault, or the failure to exercise due care.70 A decade ago Morton J. Horwitz
reexamined the history of negligence for the same purpose and concluded that
negligence was not originally understood as carelessness or fault. Rather, negligence
meant "neglect or failure fully to perform a pre-existing duty, whether imposed by
66 Robert J. Kazorowski, “Common-Law Background of Nineteenth Century Tort
Law, The”, available at
http://ir.lawnet.fordham.edu/cgi/viewcontent.cgi?article=1261&context=faculty_schol
arship (last visited Jun. 16, 2015) 67 Id. 68 Id. 69 Id. 70 Id.
26
contract, statute, or common-law status.”71
Horwitz argues, the original standard of
tort liability was not fault but strict liability.72 However, at nowadays, the notion of
negligence was included into tort law by economically motivated judges for the
benefit of and businesses.73
In addition, the law of tort has been developed by case
law which it has developed through decision of the court over a very long period of
legal history according to the doctrine of precedent.
2.5.2 Purpose of Tort law
The purpose of tort law is to provide a recovery for damages
incurred and prevent other from committing the same harm. The injured person can
take a legal action against tortfeasor for an injunction to prevent the continuity of the
wrongful act or for monetary damages.74 Among the types of damages, the injured
party may recover for loss of earnings capacity, pain and suffering, and reasonable
medical expenses, which include both present and future expected losses.75
Furthermore, an essential principle of tort liability is that the obligation is always
fixed by law itself, not by any contract between the parties.
The two important remedies provide for the injured person who
suffered from tort are an injunction, to prevent future harm, and also damages to
compensate from the harm he has suffered.
2.5.3 Remedies for Tort
2.5.3.1 Damages
Since the purpose of tort law is to compensate the victim for
harm actually done, damages are usually measured by the extent of the injury.
Damages are an award of monetary compensation for loss or injury suffered. “It is
one of the oldest remedies in English.”76
The aim of damages awarded in tort liability
71 Id. 72 Id. 73 Id. 74 Cornell University Law School, Tort law: an overview, available at
https://www.law.cornell.edu/wex/tort (last visited Jun. 16, 2015) 75 Id. 76 Id.
27
is to put the injured party in the same position as he would have been in if the tort had
not occurred.77
The award therefore focuses on compensating the injured
person for the restitution. Restitutionary damages are an equitable remedy awarded
when the defendant has been unjustly enriched.78
The court may award damages
based on the benefit to the defendant. Restitution is similar to compensatory damages
as a remedy in that it may be substitutionary, for example, the restoration of money
rather than specific property.79
Anyhow, the plaintiff cannot obtain both
compensatory damages and restitutionary damages.
Restitution is based upon the gains of the defendant, which it
would be unjust for him to retain.80
Moreover, restitution is not a punitive remedy;
however, its measure of damages may be determined by the tortiousness of the
defendant’s conduct in creating situation which calls for restitution.81
Besides restitutionary remedy, there are many different types
of damages in common legal usage that can be awarded by the court that is;
(1) Compensatory Damages (also called “Actual Damages”)
The fundamental purpose of compensatory damages is to
make the plaintiff whole by compensating him for any actual loss or injury where a
tort is involved or for his lost expectancies if the relationship was a consensual one.82
Therefore, compensatory damages are awarded to compensate the injured person as a
monetary compensation for his actual loss or injury.
Compensatory damages are based upon the losses of the
plaintiff. The amount of award is based on the proven harm, loss and injury suffer by
77 Practical Law, Measure of damages in tort, available at
http://uk.practicallaw.com/4-107-7398 (last visited Jun. 16, 2015) 78 Id. 79 O’Connell, supra note 60, at 72. 80 Id. 81 Id. at 73. 82 Id. at 51.
28
the plaintiff. However, punitive damages are not included in this type, it may be
awarded when the defendant's actions are reckless or malicious.
(2) Nominal Damages
Nominal damages are the damages awarded to recover a
plaintiff who can establishes that he has suffered from an injury caused by a
defendant’s wrongful action, but no loss is sustained or the extent of the injury cannot
be measured or proved. The court shall affirm that a legal right has been violated in
order to grant nominal damages. While the plaintiff has no right to real damages, the
court gives the right to a judgment because of his legal right has been infringed.83
Furthermore, the plaintiff may not be awarded nominal damages in every case where
he does not receive compensatory damages and the amount of nominal damages
awarded is generally a small sum.
(3) Punitive Damages
Punitive damages may be available in some tort claim.
Punitive damages are awarded when the plaintiff’s injury results from willful,
oppressive or malicious action of tortfeasors. The court may award punitive damages
to advance public policy goals to punish one guilty of willful wrong and to prevent
the defendant and potential offenders from further misconduct.84
However, the
plaintiff must first has been obtained the actual damages, nominal damages or
restitutionay damages. However, punitive damages are not provided in many
countries due to the principle that any punishment requires pre-established criminal
provision.
(4) Aggravated Damages
Generally, aggravated damages are classified as compensatory.
Aggravated damages awarded to compensate a plaintiff for suffering intangible
83 Hosseini Law Firm, “Types of Damages in Civil Litigation”, available at
http://www.hosseinilaw.com/types-of-damages-in-civil-litigation/ (last visited Jun. 16,
2015) 84 FREGRE & BENSON LLP, supra note 62.
29
injuries or damages as a result of the defendant’s actions.85
However, the plaintiff’s
losses are non-pecuniary that is intangible element such as pain and suffering, mental
distress, grief, and similar matter caused by the defendant’s action.86
(5) Statutory Damages
Statutory damages are an amount stipulated within the statute
rather than calculated based on the degree of harm to the plaintiff. Statutory damages
will be granted for acts in which it is difficult to determine the value of the harm to
the injured person. More violation of the law can entitle the victim to a statutory
award, even if no actual injury occurred.
2.5.3.2 Injunctions
Injunctions can be categorized to as prohibitory and
mandatory injunctions. Prohibitory injunction is an order from the court requiring the
defendant to stop committing a continuing tort.87
It is negative in nature that requires
the defendant to discontinue wrongful conduct, while a mandatory injunction requires
the defendant to take some positive act. Mandatory injunctions are not willingly
granted as prohibitory injunctions. If the defendant impossible to comply with the
injunctions, he will be take to considerable more trouble and expenses from its
impossibility.
85 Id. 86 Id. 87 Asif Tufal, Remedies in Torts, available at
http://www.lawteacher.net/PDF/Remedies%20Lecture.pdf (last visited Jun. 15, 2015)
30
CHAPTER 3
DAMAGES FOR TRADEMARK INFRINGEMENT
UNDER INTERNATIONAL CONVENTIONS
AND IN FOREIGN COUNTRIES
3.1 International Conventions
3.1.2 Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) 1994
The TRIPS Agreement is an international agreement conducted by
the World Trade Organization (WTO) that sets down minimum standards for various
form of intellectual property regulation. TRIPS play an exceptionally important role
in constituting the current international regime for intellectual property because of
WTO’s global coverage.88
The TRIPS Agreement determines that member countries must set
minimum standards of protection according to Article 1(1);
TRIPS Article 1 (1) – “Member shall give effect to the provisions of
this agreement. Members may, but shall not be obliged to, implement in their law
more extensive protection than is required by this Agreement, provided that such
protection does not contravene the provisions of this Agreement. Members shall be
free to determine the appropriate method of implementing the provisions of this
Agreement within their own legal system and practice.”
In accordance with Article 1(1), minimum standards must be
equally complied with all member countries and the member countries are not
prohibited from regulating their laws more extensive than is required by the TRIPS
Agreement for the efficiency of IP protection.
88 Marlin-Bennett, supra note 19, at 61.
31
TRIPS covers all area of intellectual property that is copyright and
related rights such as the rights of performers, producers of sound recording and
broadcasting organizations; trademarks including service marks; geographical
indications including appellations of origin; industrial designs; patents including the
protection of new varieties of plants; the layout-designs of integrated circuits; and
undisclosed information including trade secrets and test data.89
In TRIPS, trademark is also included as one of the protectable
subject matter according to Article 15 (1);
TRIPS Article 15 (1)- “Any sign, or any combination of signs,
capable of distinguishing the goods or services of one undertaking from those of other
undertakings, shall be capable of constituting a trademark. Such signs, in particular
words including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, shall be eligible for
registration as trademarks. Where signs are not inherently capable of distinguishing
the relevant goods or services, Members may make registrability depend on
distinctiveness acquired through use. Members may require, as a condition of
registration, that signs be visually perceptible.”
The Article 15 (1) prescribes the definition of trademark as any sign
or combination of signs that can constitute as trademark if it is capable of
distinguishing goods or services of one manufacturer from others. Furthermore this
Article gives examples of what can be a sign such as personal name, letters, numerals
and so forth.
Apart from that, in regard to trademark damages, a trademark owner
is entitled to recover damages or injunctions for trademark infringement, TRIPS
provides that Member States must provide their judicial authorities with the respective
89 World Trade Organization, “Overview: The TRIPS Agreement”, available at
https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm (last visited Apr. 1, 2015)
32
power to order adequate damages to compensate the trademark owner for trademark
infringement, or with reasonable grounds to know according to Article 45 (1).90
TRIPS Article 45 (1) – “The judicial authorities shall have the
authority to order the infringer to pay the right holder damages adequate to
compensate for the injury the right holder has suffered because of an infringement of
that person’s intellectual property right by an infringer who knowingly, or with
reasonable grounds to know, engaged in infringing activity.”
According Article 45(1) of TRIPS, there are various concepts in
determining damages:
Actual loss and defendant’s profits
In most legal systems, available damages awarded to compensate the
person who injured from infringement can be set out at least two types that is the
actual loss and defendant’s profits or also called account of profits in common law
countries.
The purpose of the court in determining actual loss is to put the
infringed upon party into the same position it would have been if the infringement had
not occurred.91
However, the plaintiff has to establish that he has suffered from a loss,
for example the cancellation of sales figures.
In addition, many countries also provide the plaintiff a net profits
that the infringer has made from the infringement. “This remedy aims at preventing
the defendant from enriching himself at the plaintiff expenses.”92
Under Article 45(2) of TRIPS Agreement, this remedy is optional,
and may be provided although the infringer did not know, nor had reasonable grounds
90 World Intellectual Property Organization, “Which kind of damages are available in
IP disputes?”, available at
http://www.wipo.int/enforcement/en/faq/judiciary/faq08.html (last visited Apr. 1,
2015) 91 Id. 92 Id.
33
to know that he was engaged in infringement.93
Thus, this is different from the
requirements according to Article 45(1) that requires damages payment based on the
notion that the infringer knew or should have known the infringing activities he has
made.94
Moral damages
Moral damages are available for intellectual infringement in some
countries. This remedy is determined where the violation of rights is considered
serious, or in case the infringement has been occurred intentionally.95
This type of
damages is usually granted in cases where the plaintiff’s reputation has been
undermined by the infringement. Moral damages can be found in Article 13 (1 (a)) of
the EU Directive 2004/48/EC on the Enforcement of Intellectual Property Rights.
License analogy
Some countries also provide compensation based on license
analogy. In assessing damages is that the infringer must not be in a position than he
would found himself if he entered a license agreement with the right owner.96
The
plaintiff therefore is entitled to reasonable loyalties from an infringement, although
the plaintiff has no intention, or the capability to grant the particular license. The court
generally determines the values of the license based on rates, which are customary in
license agreements for similar product and use.97
In conclusion, TRIPS Agreement also provides member states a
various concept for determining available damages awarded in trademark
infringement cases.
93 Id. 94 Id. 95 Id. 96 Id. 97 Id.
34
3.2 Laws of Foreign Countries
The provision concerning trademark infringement and damages are also
provided in many laws of foreign countries. In this chapter, apart from TRIPS
Agreement, this thesis will examine the protection of trademark; trademark
infringement; and damages for trademark infringement under the United States,
Australia, and Singapore law.
Additionally, these countries are chosen for in-depth examination due to
the following reasons;
1. The United States
US extended the Lanham Act to govern the protection of trademark
including trademark infringement and especially set out Section 35 to help the court
and the parties to determine various types of claimable damages and the amount of
damages in infringement. The Lanham Act is derived from English law which is
supported by the precedents under common law. The Lanham Act codified many of
existing common law of trademark, and as a result, the parties benefit from this statute
law.
However, notwithstanding the Lanham Act was not the first federal
legislation on trademark, it was the first comprehensive federal legislation. Moreover,
the Lanham Act was enacted by Congress since 1946 but it is still effective at
protecting in trademark.
2. Australia
Australia made a huge change to its intellectual property law by passing
the Intellectual Property Laws Amendment Act 2012 (Amending Act). The Amending
Act, which amends both the trade marks and patents legislation constitutes the most
significant amendment to Australian Intellectual property law in twenty years.
Regarding the trademark damages, previously, trade mark owners could apply to the
court for an injunction and damages or an account of profits, but Section 126 of the
Trade Marks Act 1995 has now includes a second paragraph allowing the court to
award additional or punitive damages for infringement. The introduction of this new
35
section brings the Trade Marks Act more into line with the remedies available under
the Copyright Act.
Moreover, the Trade Marks Act also sets out the provision determining
when is the trade mark is not infringed, which is different from other countries
trademark law.
3. Singapore
Singapore is one of the most developed economies globally, especially
in ASEAN. Like the US and Australian law, Singapore trade marks law is derived
from English law and practice. However, Singapore then developed its own legal
system, establishing legislation and case law that are unique and effective to its social
and circumstance. Moreover, Singapore has a comprehensive judicial system.
According to the Trade Mark Act which was amended in 2005, the Act
establishing a new law for trade marks in order to enable Singapore to give effect to
certain international conventions on intellectual property protection. The Act also
specifies in the acts that not determining in infringement, which is the same as
Australian trade marks law.
3.2.1 The United States
3.2.1.1 Subject Matter of Protection
Like other countries in common law jurisdiction, trademark
protection in the United States is premised upon prior adoption and use rather than
prior registration as is generally the case in civil law jurisdiction.98
The concept of
trademark protection in the United States is completely distinct from both patents and
copyrights. In the United States, trademark protection is a common law concept that
exists independent of any statue.
The United States concept of trademark law followed this
English common law notion.99
At present, The United States federal trademark law
has been codified in the Lanham Act enacted July 5, 1946.
98 Sheldon W. Halpern, Fundamentals of United States Intellectual Property Law:
Copyright, Patent, and Trademark 275 (1999). 99 Id. at 277.
36
According to Section 45 of the Lanham Act, a trademark is
defined as any word, name, symbol, device, or any combination thereof used by a
person or which a person has a bona fide intention to use in commerce and applies to
register to identify and distinguish that person’s goods, including a unique product
and to indicate the source of the goods, although the source is unknown.
Section 45 of the Lanham Act – “the term “trademark”
includes any word, name, symbol, device, or any combination thereof
(1) used by a person, or
(2) which a person has a bona fide intention to use in
commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods, even if that
source is unknown.”
Even though, the Lanham Act was intended primarily as a
registration statute codifying common law rights, in fact, the Act does create a right of
incontestability and dilution, two concept that were not widely accepted at common
law.100
Furthermore, the source of trademark protection in the United States is state
common law, the Lanham Act does provide many significant additional protections
that make registration necessary for anyone seeking the fullest protection of their
trademarks.101
The United States trademark law generally protects trademark,
collective marks, certification marks, services marks, trade and business names if they
indicate source and are used on products, and trade dress.102
3.2.1.2 Trademark Infringement
Trademark owner has the exclusive right to use the mark in
commerce. This right includes the right to use the mark itself in connection with
100 Id. 101 Id. 102 Id. at 288.
37
identified goods or services as well as the right to license this right to third parties.103
According to Section 32 of the Lanham Act, any attempt to use the mark by others not
licensed by the trademark owner, or adoption of a similar mark on similar goods or
services, may give rise to an infringement claim by the registrant or first user.
Section 32 of the Lanham Act – “(1) Any person who shall,
without the consent of the registrant –
a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the sale, offering for sale,
distribution, or advertising of any goods or services on or in connection with such use
is likely to cause confusion, or to cause mistake, or to deceive; or
b) reproduce, counterfeit, copy or colorably imitate a
registered mark and apply such reproduction, counterfeit, copy, or colorable imitation
to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to
be used in advertising of goods or services on or in connection with such use is likely
to cause confusion, or to cause mistake, or to deceive.
shall be liable in a civil action by the registrant for the remedies hereinafter provided.”
In addition to rights in unregistered mark, the trademark
owner may enforce rights under Section 43(a) of the Lanham Act against person who
uses that mark in a manner which cause confusion as to the origin of goods or
services. Moreover, Section 43(a) also provides remedies where conduct by another
misrepresents the nature, characteristics, qualities, or geographic origin of that
person’s or another’s goods or services.104
Section 43(a) of the Lanham Act – “(1) Any person who, or
on in connection with any goods or services, or any container of goods or services,
uses in commerce any word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which—
103 Id. at 338. 104 Id. at 336.
38
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by
another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another person’s goods, services, or
commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely
to be damaged by such act…”
Thus, the important condition that must be met before finding
trademark infringement is the likelihood of consumer confusion as to the source of the
goods or sponsorship or approval of such goods. In order to prevail under Section 32
and Section 43(a) of the Lanham Act, the plaintiff must demonstrate that there is a
likelihood that the consumer will be confused, mislead, or deceived in regard to the
source or origin of the goods or services. Therefore, the plaintiff only needs to show
that likelihood of confusion has occurred, and need not establish actual confusion.
Likelihood of confusion is the central requirement in actions both at common laws
and under federal trademark statute.105
The likelihood of confusion inquiry usually
focuses on likely confusion of purchasers as to the source or origin of the goods or
services.
There are many factors to be considered in determining
likelihood of consumer confusion that includes:106
(1) The strength of plaintiff’s mark;
“Strong marks receive a broad level of protection under the
trademark law; week marks receive a narrower range of protection.”107
In evaluating
the strength of plaintiff’s mark, it should not rely solely on the fact that plaintiff has a
105 Id. at 339. 106 Id. 107 Holbrook & Harris, supra note 44, at 168.
39
registered trademark as an indicator of strength.108 A mark’s strength is measures by
how distinctive it is and by the degree of consumer recognition it has obtained in the
market place.
(2) The degree of similarity of the marks;
In evaluating the similarity or dissimilarity of the two marks,
each mark must be considered as a whole. Likelihood of confusion cannot be based
on dissection of the mark, that is, on only part of a mark.109
(3) The compititive proximity or similarity of goods or services
in the market;
If both parties use their marks to market the same realated
types of goods or services, then the likelihood of confusion increases. On the contrary,
if the parties’ goods or services are unrelated, then the likelihood of confusion
decrease.110
(4) Evidence of actual confusion;
Actual confusion is not required to find a likelihood of
confusion. However, if defendant’s use of his mark had led to instances of actual
confusion among relevant consumers, this may be strong indication that confusion is
likely.111
(5) Defendant’s good or bad faith in adoping and using his mark;
Proof of defendant’s intent to confuse or deceive consumers
by adoping and using a mark that is the same or similar to plaintiff’s mark is not
108 Id. 109 Id. 110 Id. 111 Id. at 169.
40
necessary to establish a likelihood of confusion, but is relevant to determining
whether or not confusion is likely.112
On the other hand, proof of defendant’s good
faith may also be considered.
(6) The quality of defendant’s goods and services; and
If the respective goods or services are likely to be sold in the
same or similar market, or the same or similar classes of consumers, or advertised in
similar media, this may increase the likelihood of confusion.113
(7) The sophistication of the purchasers.
More sohisticated purchasers are likely to be more careful and
discriminating when purchasing those goods or services. Consequently, such
purchasers may be less likely to be confused by similarities in plaintiff’s and
defendant’s marks.114
3.2.1.3 Trademark Damages
In very egregious cases, the statute allows for a trebling of
damages if the trademark infringed is a registered trademark. Thus, although the
United States is a use-based system, priority system based on common law, and not a
registration based system, there are still very important reasons why any trademark
owner should seriously consider filing for a federal registration.115
In case trademark infringement has been occurred, the
trademark owner is giving with the compensation through injunctions and damages. If
the plaintiff can prove the irreparable damage suffered in the absence of injunctions,
preliminary shall be granted to the plaintiff. Such irreparable damage requirement can
be proved through establishing likelihood of confusion. Plaintiff, on the other side,
can claim damages suffered from infringement. The requirement in acquiring
112 Id. 113 Id. 114 Id. at 170. 115 Halpern, supra note 98, at 278.
41
trademark damages is the evidence of actual confusion, instead of likelihood of
confusion.
Damages refer to the various forms of monetary recovery
available upon a finding of infringement. Relief in the form of damages is one of the
remedies in claims of tortious liability. Damages can include lost profits, business
losses, punitive damages, costs and attorney’s fees. When the trademark owner brings
the lawsuit against the infringer, if the plaintiff can prove that he is entitled to the
monetary damages, the damages will be granted according to Section 35(a) of the
Lanham Act that specifies the type of damages.
Section 35(a) of the Lanham Act – “When a violation of any
right of the registrant of a mark registered in the Patent and Trademark Office, a
violation under Section 1125(a) or (d) of this title or the willful violation under
Section 1125(c) of this title, shall have been established in any civil action arising
under this Act, the plaintiff shall be entitled, subject to the provisions of Sections
1111 and 1114 and subject to the principles of equity, to recover (1) defendant’s
profits, (2) any damages sustained by the plaintiff, and (3) the costs of action. The
court shall assess such profits and damages or cause the same to be assessed under its
direction. In assessing profits the plaintiff shall be required to prove defendant’s sale
only; defendant must prove all elements of costs or deduction claimed. In assessing
damages the court may enter judgment, according to circumstances of the case, for
any sum above the amount found as actual damages, not exceeding three times such
amount. If the court shall find the amount of recovery based on profits is either
inadequate or excessive the court may in its discretion enter judgment for such sum as
the court shall find to be just, according to circumstances of the case. Such sum in
either of above circumstances shall constitute compensation and not a penalty. The
court in exceptional cases may award reasonable attorney fees to the prevailing
party.”
From Section 35(a) of the Lanham Act, the Act determines the
types of claimable damages to profits; damages; and the costs of action and attorney
fees and also giving the guideline to the court for granting such damages as follows:
42
a) Profits; Damages; and the costs of action; attorney fees
(1) Defendant’s profits
In addition to actual damages, the plaintiff is entitled to any
profits earned by the defendant that are attributable to the infringement, which the
plaintiff proves by prevail of the evidence. A monetary award in the amount of the
defendant’s profits may be granted if the defendant has been unjustly enriched, the
plaintiff has sustained damages from the infringement, or an accounting in necessary
to prevent a willful infringer from infringing again.116
The court sometime permits
plaintiff to recover both the actual damages and the defendant’s profits, as long as
they do not obtain double recovery for the same sales.117
For example, a plaintiff
would not be permitted to recover both his own lost profit and the defendant’s profit
resulting from the same sale transaction to a consumer.
Furthermore, to recover the defendant’s profits, the plaintiff
must prove only the amount of the defendant’s gloss sales in connection with the
trademark infringement. On the other hand, the defendant must prove the amounts
that should be deducted from the award as costs of production and any amounts that
are not concerned with the infringement. In addition, according to the Lanham Act,
the court has the power to increase or decrease an award of profits if such amount
either inadequate or excessive under circumstances.
(2) Any actual damages sustained by the plaintiff
According to the Lanham Act, the plaintiff is also has right to
claim any damages sustained due to the infringement but the court requires the
plaintiff to proves that there is the actual confusion occurs before the award of
116 Barrette, supra note 21, at 235. 117 Id.
43
damages will be granted. Unlike the accounting of defendant’s profit, the willfulness
of the defendant is unnecessary for claiming damages.118
(a) Lost profit
The court regularly requires the defendant’s infringement
imply some implication of intent or a knowing act point to intent to infringe. Lost
profit is the profit that the trademark owner would have obtained if the infringement
had not occurred. However, the lost profit may be overlapped with the defendant’s
profit and thus the court may eliminate this profit from the total damages award.119
The approach to calculation of lost profit is to estimate the lost sales from a pre and
post infringement of the trademark owner’s sales.
(b) Reasonable royalty
The concept of reasonable royalty on infringing sale is
gaining in favor with the court. The reasonable royalty is designed to separate that
part of the income. This damages is the award in which the court makes a hypothetical
determination of a reasonable amount the defendant would have paid the plaintiff to
license to use the mark. In assessing the reasonable royalty, the court will regularly
grant in case the parties had a prior licensing relationship that expired but the
defendant still continued to use it or in case the defendant made an offer to license the
plaintiff’s mark but an agreement is finally unsuccessful.
(c) Corrective advertising
Another way of determining the trademark damages to the
plaintiff is calculation of corrective advertising. The corrective advertising is also
118 Restatement(Third) of Unfair Competition § 36 coment g, j, §37 (wrongful intent
required for an accounting but not for damages) Available in Worrawong
Atcharawongchai, “Trademark damages: the comparative study on trademark
damages in Thailand and US” 320 (2012). 119 Atcharawongchai, supra note 15, at 350.
44
granted in order to restore the brand value of the trademark from infringement. The
court generally awards the amount of money incurred by the plaintiff in correcting the
mistaken public.120
In addition, the Sixth Circuit court held that the plaintiff does not
need to show actual confusion or actual damages. In calculation corrective
advertising, the court will grant the award of corrective advertising by requesting the
plaintiff to show that 1) there was a likelihood of confusion or damages to sales, profit
or goodwill; 2) plaintiff’s damage control expenditures were caused by the violation;
3) plaintiff’s expenses were reasonable under the circumstances and proportionate of
the damage that likely to occur.121
(d) Price Erosion
Another type of actual damages for trademark owner is price
erosion. Price erosion can be proved by referring that the price would be higher but
for the infringement of plaintiff’s mark.122
Nevertheless, it is difficult to prove this
damages and the court normally unwilling to grant this type of damages.
(e) Damage to reputation and goodwill
The trademark owner can be provided with damages to
reputation and goodwill. However, it is difficult to assess the damages to reputation
and goodwill because it is likely to overlap with the lost profit and corrective
advertising. However, there still is some place for non-overlapping, for example,
while the lost profit may be well handled with the past influence of the infringement,
it is unable to deal with the negative effect of the future sale.123
120 Id. at 351. 121 See Balance Dynamics Corp. v Schmitt Indus., Inc., 750 F.2d 903, 920 (Fed. Cir.
1984) Available in Worrawong Atcharawongchai, “Trademark damages: the
comparative study on trademark damages in Thailand and US” 320 (2012). 122 See Russell L. Parr. 1993 Intellectual Property Infringement Damages: A
Litigation Support Handbook, New York: John Wiley&Sons, Incp.330 Available in
Worrawong Atcharawongchai, “Trademark damages: the comparative study on
trademark damages in Thailand and US” 320 (2012). 123 Id.
45
(3) The costs of action
The trademark infringement litigation in the United States is
not cheap, but it is not the most expensive type of litigation, for example it is clearly
significantly less expensive than patent litigation. In the United States, the procedure
rules probably make the country the most expensive jurisdiction to litigate. Those
rules include extensive discovery where documents are produced, witness examined
under oath and written interrogatories and requests to admits are served and require
answers.124
(4) Attorney fees
The Lanham Act permits the court to award reasonable
attorney fees to the prevailing party in exceptional cases. An exceptional case
includes one in which the trademark infringement can be characterized as malicious,
fraudulent, or willful. Attorney fees generally are not available under the common
law.125
In summary, the Lanham Act provides a various types of
money recovery to the plaintiff. The Act is also provides for treble damages subject to
Section 35 that the court has discretion to increase the award up to three times the
amount proven, and to increase and decrease the award of profits, according to the
circumstance of the case. However, such award shall be compensation and not a
penalty. Thus, considering intangible nature of trademark, the legal concept of the US
trademark law is very helpful for assisting the court to determine the amount of
damages. The court would have discretion to increase the damages in case that the
damage is not shown by the plaintiff or likely to be underestimated, and to decrease
the damages if it is likely to be overestimated.126
Although, the plaintiff is entitled to
124 Ethan HORWITZ, “Cost of Action VS. Damages in Trademark Infringement
Actions in the United States”, available at
http://www.ficpi.org/library/montecarlo99/damages.html (last visited May. 10, 2015) 125 Barrette, supra note 21, at 235. 126
Atcharawongchai, supra note 15, at 363.
46
recover any or all types of statutory damages, however, the damages would be granted
as long as the plaintiff can prove them.
3.2.2 Australia
3.2.2.1 Subject Matter of Protection
Trademark protection in Australia is based on common law
use-based system like the US trademark law. At present, Australian trademark law has
been codified in the Trade Marks Act 1995. The Trade Marks Act defines trade
marks, what constitute trademark infringement and also what relief can be obtained
from the court. The procedure to register a trade mark in Australia is same as other
countries.
According to Section 17 of the Act trade mark is defined as a
sign used, or intend to be used, to distinguish goods or services dealt with or provided
in the course of trade by a person from goods or services so dealt with or provided by
any other person.127
In Australia, if trade mark is registered, the registered owner of
trade mark, subject to Section 20, has an exclusive rights to use the trade mark and to
authorize other person to use the trade mark.
The term of registration in Australia is 10 years, which may be
extended for additional periods of 10 years. Failure to use a registered trade mark for
a period of three years or more may expose the registration to cancellation on the
grounds of non-use.
3.2.2.2 Trademark Infringement
In accordance with Section 120 of the Trade Marks Act
provides that the infringement of the registered trade has been occurred when;
“(1) A person uses as a trade mark a sign that is substantially
identical with, or deceptively similar to, the trade mark in relation to goods or services
in respect of which the trade mark is registered;
(2) A person uses as a trade mark a sign that is substantially
identical with, or deceptively similar to, the trade mark in relation to:
127 “Commonwealth of Australia Consolidated Act”, available at
http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/s17.html (last visited
May. 20, 2015)
47
(a) goods of the same description as that of registered in respect of which the trade
mark is registered; or
(b) services that are closely related to registered goods; or
(c) services of the same description as that of registered in respect of which the trade
mark is registered; or
(d) goods that are closely related to registered services.
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
(b) the person uses as a trade mark a sign that is substantially identical with, or
deceptively similar to, the trade mark in relation to:
(i) unrelated goods that are not of the same description as that of the
goods in respect of which the trade mark is registered goods or are not closely related
to services in respect of which the trade mark is registered services; or
(ii) unrelated services that are not of the same description as that of
the registered services or are not closely related to registered goods; and
(c) because the trade mark is well known, the sign would be likely to be taken as
indicating a connection between the unrelated goods or services and the registered
owner of the trade mark; and
(d) for that reason, the interests of the registered owner are likely to be adversely
affected.”
Moreover, the Trade Marks Act also provides the provision
determining when is the trade mark is not infringed under Section 122, which is
different from other countries trademark law.
48
Section 122 of the Trade Mark Act – “(1) In spite of section
120 a person does not infringe a registered trade mark when:
(a) the person uses in good faith:
(i) the person's name or the name of the person's place of business; or
(ii) the name of a predecessor in business of the person or the name of
the predecessor's place of business; or
(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value, geographical
origin, or some other characteristic, of goods or services; or
(ii) the time of production of goods or of the rendering of services; or
(c) the person uses the trade mark in good faith to indicate the intended purpose of
goods (in particular as accessories or spare parts) or services; or
(d) the person uses the trade mark for the purposes of comparative advertising; or
(e) the person exercises a right to use a trade mark given to the person under this Act;
or
(f) the court is of the opinion that the person would obtain registration of the trade
mark in his or her name if the person were to apply for it; or
(fa) both:
(i) the person uses a trade mark that is substantially identical with, or
deceptively similar to, the first-mentioned trade mark; and
(ii) the court is of the opinion that the person would obtain registration
of the substantially identical or deceptively similar trade mark in his or her name if
the person were to apply for it; or
49
(g) the person, in using a sign referred to in subsection 120(1), (2) or (3) in a manner
referred to in that subsection, does not (because of a condition or limitation subject to
which the trade mark is registered) infringe the exclusive right of the registered owner
to use the trade mark.
(2) In spite of section 120, if a disclaimer has been registered
in respect of a part of a registered trade mark, a person does not infringe the trade
mark by using that part of the trade mark.”
3.2.2.3 Trademark Damages
A monetary recovery for trademark infringement that can be
obtained from the court is provided under Section 126 of the Trade Mark Act 1995 as
follows:
Section 126 of the Act – “(1) The relief that a court may grant
in an action for an infringement of a registered trade mark includes:
(a) an injunction, which may be granted subject to any condition that the court think
fit; and
(b) at the option of the plaintiff but subject to Section 127, damages or an account of
profits.
(2) A court may include an additional amount in assessment of
damages for an infringement of a registered trade mark, if the court considers it
appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of registered trade marks; and
(c) the conduct of the party that infringed the registered trade mark that occurred:
(i) after the act constituting the infringement; or
(ii) after the party was informed that it had allegedly infringed the
registered trade mark; and
(d) any benefit shown to have accrued to the party because of the party infringement;
and
50
(e) all the relevant matters.”
As prescribed in the Act, the remedies for trade mark
infringement available for the successful plaintiff also include injunction; damages or
account of profits. Moreover, the court also has the power to grant the additional
amount in assessment of damages if the court considers it appropriate to do.
In addition, the Trade Marks Act also specifies the special
case that the plaintiff not entitled to damages under Section 127.
Section 127 of the Act – “plaintiff not entitled to damages if
(a) in an action for the infringement of a trade mark registered in respect of particular
goods or services, the court finds that the defendant has infringed the trade mark; and
(b) either:
(i) the defendant has applied to the court under subsection 92(3) for an
order directing the Registrar to remove the trade mark from the Register in respect of
those goods or services; or
(ii) the defendant has applied to the Registrar under subsection 92(1)
for the trade mark to be removed from the Register in respect of those goods or
services, and the matter has been referred to a court under section 94; and
(c) the court finds that, because the trade mark has not during a particular period
(critical period) been used in good faith by its registered owner in relation to those
goods or services, there are grounds (under subsection 92(4)) for so removing the
trade mark from the Register;
the court may not grant relief to the plaintiff by way of damages or
an account of profits in respect of any infringement of the trade mark that happened
during the critical period.”
51
3.2.3 Singapore
3.2.3.1 Subject matter of Protection
Singapore has a dual system of trade mark law.128
The
protection for trade marks may be available under both the Trade Marks Act (Chapter
332), which is revised in 2005 and at common law.129
These two systems are
independent of each other.130
However, the Act establishing a new law for trade
marks in order to enable Singapore to give effect to certain international conventions
on intellectual property protection.
According to Part I Preliminary, Interpretation Section 2 – (1)
of the Act131
“trade mark” means any sign capable of being represented graphically
and which is capable of distinguishing goods or services dealt with or provided in the
course of trade by a person from goods or services so dealt with or provided by any
other person.
Singapore trade mark law stipulates that a registered trade
mark is protected under the Act and the owner of registered trade mark has the rights
and remedies for infringement provides by the Act. Moreover, for infringement of
unregistered trade mark, the Act does not provide the prevention or recovery damages
unless shall not affect the law relating to passing off or rights under the Geographical
Indications Act.132
If a trade mark is registered, the owner has the exclusive rights to
use the trade mark and to authorize other persons to use the trade mark.
128 Singapore Academy of Law, “Subject Matter of Protection”, available at
http://www.singaporelaw.sg/sglaw/laws-of-singapore/commercial-law/chapter-
12#section5 (last visited Jul. 2, 2015) 129 Id. 130 Id. 131 Singapore Statutes Online, “Trade Mark Act (Chapter 332)”, available at
http://statutes.agc.gov.sg/aol/search/display/view.w3p;page=0;query=DocId%3A%22
eda8ae51-9095-4ada-b5e4-
0407c03ca714%22%20Status%3Ainforce%20Depth%3A0;rec=0 (last visited Jul. 2,
2015) 132 Singapore Academy of Law, supra note 128.
52
For duration of registration, the Act provides that a registered
trade mark shall be protected 10 years from the date of registration and it may be
renewed for further periods of 10 years subject to Section 19.133
3.2.3.2 Trademark Infringement
The Act also specifies in the acts that determining of
infringing of registered trademark under Section 27 and the acts that not determining
in infringement under Section 28.
Section 27 of the Act – “(1) A person infringes a registered
trade mark if, without the consent of the proprietor of the trade mark, he uses in the
course of trade a sign which is identical with the trade mark in relation to goods or
services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if, without the
consent of the proprietor of the trade mark, he uses in the course of trade a sign where
because —
(a) the sign is identical with the trade mark and is used in relation to goods or services
similar to those for which the trade mark is registered; or
(b) the sign is similar to the trade mark and is used in relation to goods or services
identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public….”
Moreover, the Act also provides the protection for well known
trademark in Singapore under Section 27 (3)
Section 27 (3) of the Act – “A person infringes a registered
trade mark which is well known in Singapore if –
(a) without the consent of the proprietor of the trade mark, he uses in the course of
trade a sign which is identical with or similar to the trade mark in relation to goods or
133 Id.
53
services which are not similar to those for which the trade mark is registered;
(b) the use of the trade mark in relation to those goods or services would indicate a
connection between those goods or services and the proprietor;
(c) there exists a likelihood of confusion on the part of the public because of such use;
and
(d) the interests of the proprietor are likely to be damaged by such use.”
The acts not amounting to infringement under Section 28
“(1) Notwithstanding section 27, a person does not infringe a
registered trade mark when —
(a) he uses —
(i) his name or the name of his place of business; or
(ii) the name of his predecessor in business or the name of his
predecessor’s place of business;
(b) he uses a sign to indicate —
(i) the kind, quality, quantity, intended purpose, value, geographical
origin or other characteristic of goods or services; or
(ii) the time of production of goods or of the rendering of services; or
(c) he uses the trade mark to indicate the intended purpose of goods (in particular as
accessories or spare parts) or services,
and such use is in accordance with honest practices in industrial or commercial
matters.
(2) Notwithstanding section 27, a person does not infringe a
registered trade mark by using an unregistered trade mark that is identical with or
similar to the registered trade mark in relation to goods or services identical with or
similar to those for which the trade mark is registered if he, or he and his predecessor
in title, have continuously used in the course of trade the unregistered trade mark in
relation to those goods or services from a time before —
(a) the date of registration of the registered trade mark; or
(b) the date the proprietor of the registered trade mark, or a predecessor in title, or a
person who was a registered user of the trade mark under the repealed Act, first used
the trade mark, whichever is the earlier.
54
(3) Notwithstanding section 27, a registered trade mark is not
infringed by the use of another registered trade mark in relation to goods or services
for which the latter is registered.
(4) Notwithstanding section 27, a person who uses a registered
trade mark does not infringe the trade mark if such use —
(a) constitutes fair use in comparative commercial advertising or promotion;
(b) is for a non-commercial purpose; or
(c) is for the purpose of news reporting or news commentary.”
Like Section 122 of Australian Trade Marks Act, Singapore
Trade Marks Act also stipulates the provision determining the acts that not deemed as
infringement under Section 28. Therefore, it would be advantageous to both parties
and the court proceedings.
3.2.3.3 Trademark Damages
In accordance with Section 31 of the Act that provides action
and remedy for infringement of registered trademark.
Section 31 of the Act – “(1) An infringement of a registered
trade mark is actionable by the proprietor of the trade mark.
(2) Subject to the provisions of this Act, in an action for an
infringement, the types of relief that the Court may grant include the following:
(a) an injunction;
(b) damages;
(c) an account of profits;
(d) in any case to which subsection (5) applies, statutory damages under
subsection (5)(c).
(3) When the Court awards any damages under
subsection (2)(b), the Court may also make an order under subsection (2)(c) for an
55
account of any profits attributable to the infringement that have not been taken into
account in computing the damages.
(4) Except as provided for in subsection (3), the types of relief
referred to in paragraphs (b), (c) and (d) of subsection (2) are mutually exclusive.
(5) In any action for infringement of a registered trade mark
where the infringement involves the use of a counterfeit trade mark in relation to
goods or services, the plaintiff shall be entitled, at his election, to —
(a) damages and an account of any profits attributable to the infringement that have
not been taken into account in computing the damages;
(b) an account of profits; or
(c) statutory damages —
(i) not exceeding $100,000 for each type of goods or service in
relation to which the counterfeit trade mark has been used; and
(ii) not exceeding in the aggregate $1 million, unless the plaintiff
proves that his actual loss from such infringement exceeds $1 million.
(6) In awarding statutory damages under subsection (5)(c), the Court shall have regard
to —
(a) the flagrancy of the infringement of the registered trade mark;
(b) any loss that the plaintiff has suffered or is likely to suffer by reason of the
infringement;
(c) any benefit shown to have accrued to the defendant by reason of the infringement;
(d) the need to deter other similar instances of infringement; and
(e) all other relevant matters.”
56
In summary, the Act provides the various types of relief that
the court may grant to a plaintiff in infringement case which includes injunction,
damages and account of profits or defendant’s profits. Furthermore, the Act clearly
specifies that when the damages awarded to compensate the infringement, the court is
also permitted to award an account of any profits distributable to an infringement.
This benefits for the trade mark owner and the court. Moreover, for trade mark
counterfeiting, the trade mark owner is entitled, at his election to obtain (1) damages
and account of any profits that has not been considered in calculating the damages, (2)
an account of profits, or (3) statutory damages. In this regard, the Act also provides
the court in determining statutory damages under Section 31(6).
57
CHAPTER 4
PROTECTION OF TRADEMARK AND
DAMAGES FOR TRADEMARK INFRINGEMENT
UNDER THAI LAWS
4.1 Trademark Act B.E. 2534 (1991) as amended by the Trademark Act (No.2)
B.E. 2543 (2000)
In the old days when Thailand was only an agricultural society,
trademark, which were very important to trades and services, did not play an
important role and were rearely used.134
However, “Thailand then developed trade
relations with several foreign countries.”135
The increasing numbers of foreign goods
and businesses were established in Thailand.136
The traders introduced commercial
practices by using trademark with their goods and required for the protection of their
trademark rights.137
Thus, trademark protection in Thailand became more important
and needed more efficient operation.
Trademark protection in Thailand is specified in the Trademark Act
(No.2) B.E. 2543. Under the law, the legal protection is also included with
trademarks, service marks, certification marks and collective marks. A trademark law
is aimed at protecting the benefits of traders and consumers. Traders benefit from law
by receiveing the right to use their own trademark exclusively. On the other hand,
consumers are also protected by the law through the requirement to register, which
prevents the likelihood of confusion and deception.138
In general, exclusive rights in a trademark may be obtained through use or
through registration. However, in Thailand, trademark are legally protected by the
134 The Central Intellectual Property and International Trade Court (IPITC), Thai
Trademark Law Background: Chapter 3 Trademarks 39 (2002). 135 Id. 136 Id. 137 Id. 138 Id.
58
registration-based system and when a trademark is registered, the date on which its
application was filed or deemed to be filed shall be the date of registration and the
owner of the trademark shall have the exclusive rights to use registered goods.139
Therefore, the registrant obtains the exclusive rights in his registered trademark only
for specific categories of goods. The exclusive rights do not extend to use of the
trademark in other categories.140
Moreover, there are three different systems regarding
the requirement of use of a trademark in order to obtains the exclusive rights.141
“The
first system is characterized by the requirement that a trademark must be in actual use
in order to qualify for registration.”142
“The second system requires that the
application for registration of a trademark be accompanied by a declaration from the
trademark owner certifying that he intends to use the trademark.”143
The third system
permits the acquisition of an exclusive right without any use of the latter and without
any declaration to use, but requires that the trademark be used within certain time
limits.144
However, the Trademark Act of Thailand adopted the third system. The
Act does not require that a mark must be used before registration. Although, there is
no requirement that a trademark must be used before registration, it may be subject to
revocation if it is not actually used in commerce after registration.
4.1.1 Definition of Trademark
The Trademark Act B.E. 2534 (1991) provides the definition of
trademark in paragraph 2 of Section 4 of the Act;
Section 4 paragraph 2 of the Act – “trademark is defined as a mark
used or proposed to be used on or in connection with goods to distinguish those
trademarked goods from other trademarked goods”
From Section 4 paragraph 2 of the Act, to become a trademark, the
mark must consist of these following requirements;
139 Atcharawongchai, supra note 15, at 322. 140 IPITC, supra note 134, at 45. 141 Id. 142 Id. 143 Id. 144 Id.
59
1. It must be a “mark” under the definition given under Section 4 of
the Act.
To be a trademark, first thing to be considered is whether it qualifies
as a “mark” under Trademark Act B.E. 2534 (1991) “Mark” is also defined in Section
4 of the Act;
Section 4 of the Act – “Mark is defined as a brand, name, word,
letter, photograph, drawing, device, manual, signature, combinations of colors, shape
or configuration of an object or any one or combination thereof.”
According to the Section 4 of the Act, a mark which may be used as
a trademark shall include a photograph, portrait, invented picture, brand, name, word,
letter, numeral, signature, or any combination thereof but not including a product
design according to the Patent Act.145
Thus, it is fundamental requirement that a mark
must be visible and therefore anything that is not included in the term of mark cannot
be a trademark. This means it cannot be registered under Trademark Act B.E. 2534 as
well.
2. It is used or proposed to be used on or in connection with goods.
A trademark is defined as a mark used or proposed to be used in
connection with goods for the propose of indicating that it is the goods of the owner
of such trademark, by virtue of manufacture, selection, certification, dealing with, or
offering for sale.146
Thus, the mark owner must show that he uses the mark or willing
to use the mark in the purpose of differentiation a goods from others’ goods by
affixing the mark on his products so that the public can differentiate the goods under
the mark of the owner from other goods under other marks.
145 IPITC, supra note 134, at 40. 146 Id.
60
3. It can distinguish those trademarked goods from other
trademarked goods
To be a trademark, it must be distinctive or significant enough for
the public to recognize and differentiate the mark of the owner form other marks in
market. This means trademark owners have to use his trademark in order to serve the
function of trademark; to differentiate the goods under the mark from other goods
under different marks. In the case that trademark owner use the mark in different
purpose such as to name the corporation or to describe the product available to use
with his goods, his mark cannot serve the function as trademark and as a result, it
cannot be a trademark.147
4.1.2 Protection of registered trademark
A trademark is fully protected by law if it is correctly registered. A
trademark must meet two requirements in order to be qualified for registration, which
are requirement of distinctiveness and requirement of non-existence of a misleading
character and of violation of public order or morality.148
To be registered, Section 6 of Trademark Act B.E. 2534 states that
trademark must contain all of these following features;
Section 6 – “To be registrable, a trademark must:
(1) be distinctive;
(2) not be prohibited under this Act;
(3) not be the same as or similar to a trademark registered by another
person.”
1. Trademark must be distinctive.
Distinctiveness is one of the main points of trademark that it makes
the consumer able to distinguish the product of one manufacturer from other
147 วัส ติงสมิธ, ค ำอธบิำยกฎหมำยเครือ่งหมำยกำรคำ้ 8 (2545). (Wat
Tingsamit, Trademark Law 8 (2002)). 148 IPITC, supra note 134, at 42.
61
manufacturers’ products. Distinctiveness can be categorized to (1) inherent
distinctiveness, and (2) distinctiveness through use.
Inherent distinctiveness
The law makes each inherent distinctiveness independent of one
another, which it means a trademark that meets at least one characteristic of inherent
distinctiveness is qualified for registration although it does not another kind of
inherent distinctiveness. “For example, although the trademark “MILAN” is generally
known as a geographical name, it is considered registrable as the company’s name
which is shown in a special feature.”149
Inherent distinctiveness is determined under Section 7 paragraph 2
of the Act, which states that any trademark contains any of the following essential
characteristics, will be deemed as distinctive.
Section 7 Paragraph 2 of the Act – “A distinctive trademark is one
which allows the public to distinguish between those trademark goods and other
goods.
The following describes the characteristics essential to a distinctive
trademark;-
(1) a personal name, a surname which is not according to its ordinary
signification, a name of juristic person or tradename represented in a special manner;
(2) a word or words having no direct reference to the character or
quality of the goods and is not a geographical name prescribed by the Minister in the
Ministerial Notifications;
(3) a specially designed combination of colors, stylized letters,
numerals or invented word;
(4) the signature of the applicant or another person who has given his
or her permission;
(5) a representation of the applicant or of another person with his or
her permission or of a dead person with the permission of his or her heirs;
149 IPITC, supra note 134, at 43.
62
(6) an invented device.”
According to (1) of this provision, a personal name, a surname, a
name of juristic person or trade name represented in a special manner must not be the
name from imagination or literature; and (6) an invented device means any picture
made out of imagination or made by adaptation, and must represent the goods.
As mentioned above, under Section 7(1)-(6), a trademark must be
inherently distinctive which means it must be distinctly from other marks so that the
consumer can recognize and sort out the product that they really want.
However, generic terms can never function as trademarks. A generic
term is common word, name, or term which identifies goods or services and is not
specific to any particular source. A generic term describes an entire class of goods or
services. For example, car, instant noodles are all generic terms and the majority of
the public associates these terms with a type of goods, not a specific brand.150
For
example, there are many types of instant noodles- Mama, Nissin, Cup Noodles but
there is no brand of instant noodles known simply as Instant noodles. Generic cannot
be trademark due to trade competitors have the right to use these terms and because
the terms are not distinctive enough to identify or differentiate a particular
manufacturer’s goods or services from other manufacturer’s goods or services.151
Distinctiveness through use
The Act allows the registration of trademarks that are not inherently
distinctive upon the submission of evidence supporting the acquired distinctiveness.
Thus, the distinctiveness of trademark can be acquired through use, which is stated
150 Richard Stim, Intellectual Property: Patents, Trademarks, and Copyrights 280
(2001). 151 International Trademark Association, “Trademarks vs. Generic Terms”, available
at
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarksvsGenericTermsF
actSheet.aspx. (last visited May. 20, 2015)
63
under Section 7 paragraph 3 of the Act; a distinctive trademark may also include
names and words not having the characteristics under (1) or (2) if used as trademarks
with goods which have been widely sold or advertised in accordance with the rules
prescribed by the Minister by notification and if it is proved that the rules have been
duly met shall be deemed distinctiveness.152
In this matter, the requirement of distinctiveness, whether inherent
or through use, is essential because the distinctiveness enables consumer to identify
and distinguish the goods from other goods which bear different marks.153
However,
use of a trademark may cause the loss of distinctiveness. It may occur to both
categories of distinctiveness. Loss of distinctiveness will happen if the trademark is so
well known for the product that the public use the mark as the generic name of the
same kind of product even when produced by other manufacturers.154
The legal
consequences of the loss of distinctiveness differ in many countries. According to
Thai Trademark Act, a distinctiveness of trademark, which is lost, shall be removed
from the register by an order of the court.
2. Trademark must not be prohibited under the Act.
Section 8 of the Act states that it cannot be registered if such
trademark contains any of these following characteristics;
“(1) State arms or crests, royal seals, official seals, Chakkri emblems,
emblems and insignia of the royal orders and decorations, seal of office, seal of
ministries, bureaus, departments or provinces;
(2) National flags of Thailand, royal standard flags or official flags;
152 Trademark Act B.E. 2534 Sec.7 ¶ 3
“A distinctive trademark may also include names and words not having the
characteristics under (1) or (2) if it is used as a trademarks with goods which have
been widely sold or advertised in accordance with the rules prescribed by the Minister
by notification and it is proved that the rules have been duly met.” 153 IPITC, supra note 134, at 42. 154 Id. at 44.
64
(3) Royal names, royal monograms, abbreviations of royal names or
royal monograms;
(4) Representations of the King, Queen or Heir to the Throne;
(5) Names, words, terms or emblems signifying the King, Queen or
Heir to the Throne or members of the royal family;
(6) National emblems and flags of foreign states, emblems and flags
of international organizations, emblems of head foreign states, official emblems and
quality control and certification of foreign states or international organizations, name
and monograms of foreign states or international organizations, unless permission is
given by the competent officer of the foreign state or international organizations;
(7) Official emblems and emblems of the Red Cross or appellations
Red Cross or Geneva Cross;
(8) A mark identical with or similar to a medal, diploma or certificate
or any other marks awarded at a trade exhibition or competition held by the Thai
government or a Thai government agency for public enterprise or any government
organ of Thailand, a foreign government or international organization unless such
medal, diploma, certificate or mark has been actually awarded to the applicant for
goods and is used in combination with the trademark;
(9) Any mark which is contrary to public order, morality or public
policy;
(10) A mark registered or not, which is identical with a well-known
mark as prescribed by the Ministerial Notifications, or so similar thereto that the
public might be confused as to the owner or origin of the goods;
(11) Trademarks similar to those under (1), (2), (3), (5), (6) or (7)
65
(12) Geographical indications protected under the law on geographical
indications;
(13) Other trademarks prescribed by the Ministerial Notifications.”
3. Trademark must not be the same or similar to the former registered
trademark.
Section 13 of the Act sets out adequate standards for determining
whether trademark is the same or similar to the former registered trademark as
follows;
Section 13 of the Act – “…. in the case that the Registrar finds the
trademark;
(1) is identical with a trademark already registered by another
person; or
(2) is so similar to a registered trademark of another person that the
public might be confused or misled as to the owner or origin of goods
And such application is for goods of the same class or for goods of a
different class found by the Registrar to be of the same character, he shall not register
such trademark.”
In addition, according to Section 44 of the Act, the trademark owner
shall have the exclusive right to use the registered trademark for the goods which such
trademark is registered.
Section 44 of the Act – “... A person who is registered as the owner
of a trademark shall have the exclusive right to use it for the goods for which it is
registered.”
66
From this Section, the trademark owner who already registers his
trademark shall have the exclusive right to use the registered trademark for his goods.
Any person other than trademark owner has no right to use such trademark without
permission of trademark owner. If there are other uses for registered trademark, it will
be deemed as trademark infringement according to Section 44 of the Thai trademark
law.
According to the first paragraph of Section 46, in case a registered
trademark is alleged to be infringed, the trademark owner can shall has the right to
bring a lawsuit against the infringer and can request for the following remedies:
damages, no further use of the trademark by the defendant, seizing the goods bearing
the infringed mark. Besides, the registered trademark owner may file an action for
removal of the trademark if his trademark is registered by another person for another
type of goods by claiming that he has a better title to the trademark.155
Section 46 paragraph 1 of the Act – “No person shall be entitled to
bring legal proceeding to prevent or to recover damages for the infringement of an
unregistered trademark.”
4.1.3 Protection of unregistered trademark
The owner of unregistered trademark in Thailand can take civil
action if his trademark is used by another person in passing off action. Under Thai
trademark law, unregistered trademark is protected from any passing off action
according to the second paragraph of Section 46.
Section 46 paragraph 2 of the Act – “The provisions of this Section
shall not affect the right of the owner of an unregistered trademark to bring legal
proceedings against any person for passing off goods as those of the owner of the
trademark.”
This provision makes clear that the owner of a trademark which is
not registered, or is registered only in respect of certain categories of goods, can
155 IPITC, supra note 134, at 54.
67
institute a passing off action against a person who use his trademark without
permission.
Passing off is a common law tort which can be used to enforce
unregistered trademark right. It protects the goodwill of trader from a
misrepresentation. Passing off mean the act that makes the public confuse about the
source of goods that the goods of infringer relate to the goods of trademark owner.
Passing off occurs where the defendant uses an identical or similar mark together with
other elements, for example, packaging, to misrepresent that the goods originate from
the plaintiff.
However, The award of damages can be granted to the plaintiff in
passing off claim but it is normally hard to prove and measure such damage.
Generally, the claimant alleges damage under two stages: First, loss of sales; and
second, damage to goodwill and reputation.
Hence, in order to succeed in a passing off action, the trademark
owner has to prove that;
(1) the trademark owner has goodwill and reputation;
(2) there is a misrepresentation in the course of trade; and
(3) the trademark owner has suffered from actual or reasonable
foreseeable damage.
In Thailand, to be successful in a passing off claim, the plaintiff
carries the burden of proof as following;156
1. The plaintiff has to prove that the defendant has misled consumers
into believing that the goods or services of the defendant are those of the plaintiff’s by
using a mark that is confusingly similar, or identical to the plaintiff’s mark.
156 ไชยยศ เหมรัชตะ, ลกัษณะของกฎหมำยทรัพย์สนิทำงปญัญำ
(พืน้ฐำนควำมรูท้ั่วไป) 341 (2550).(Chaiyos Hemarajata, General Principle of
Intellectual Property Law 341 (2007)).
68
2. The plaintiff has to prove that the plaintiff has built up a
reputation in the mark.
3. The plaintiff has issued that the defendant passed off his products
in the complaint.
However, the plaintiff on passing off claim does not need to prove
that the use of the plaintiff’s trademark by the defendant has caused actual harm in
some way to the plaintiff’s business or reputation unlike the burden of proof of the
plaintiff in common law system such as UK, or Canada.157
The burden of proof of the plaintiff in passing off action is much
more heavier and time consuming than the burden of proof of the plaintiff of
registered trademark claim. In passing off claim, the plaintiff has to prove the mark is
belongs to him, while registered trademark owner only needs to prove that the mark
of infringer is similar or deceptively confusion. However, in passing off action, the
owner of unregistered trademark can request the same remedies as the owner of
registered trademark. Aside from passing off action, the owner is entitled to take an
action for removal of a trademark from the register if he can show that he has a better
title to the trademark.158
The action for removal may be filed separately from or
together with the passing off claim.159
4.2 The problems of the current Thai trademark law on damages
4.2.1 Trademark Infringement
The use of registered trademark without consent of registered
trademark owner shall be deemed as trademark infringement according to Section 44
of the Trademark Act.
157 Id. 158 IPITC, supra note 134, at 55. 159 Id.
69
Section 44 of the Act – “Subject to Section 27 and 68, a person who
is registered as the owner of a trademark shall have the exclusive right to use it for the
goods for which it is registered.”
Moreover, infringement of unregistered trademark is determined
under Section 46 of the Trademark Act.
Section 46 of the Act – “No person shall be entitled to bring legal
proceedings to prevent or to recover damages for the infringement of an unregistered
trademark.
The provisions of this Section shall not affect the right of the owner
of an unregistered trademark to bring legal proceedings against any person for passing
off goods as those of the owner of the trademark.”
However, it should be noted that Section 44 and Section 46 do not
specify what act is regarded as trademark infringement. First paragraph of Section 44
only define the right and restriction of the registered trademark owner, and the right of
unregistered trademark owner for passing off according to second paragraph of the
Section 46.
Thus, if the trademark owner filed a trademark infringement lawsuit
agaist the infringer, the court therefore applies the general provision of tort law,
subject to Section 420 of the Civil and Commercial Code.160
Section 420 prescribes the act that unlawfully injures the life, body,
health, liberty, property or any right of another person is infringement. This Section
does not specify what act constitutes the trademark infringement like Section 44 and
Section 46 of the Trademark Act. Furthermore, applying Section 420, seems to be
misled with th fundamatal concept of trademark because the trademark infringement
160 Section 420 of the Civil and Commercial Code
“A person who, willfully or negligently, unlawfully injures the life, body, health,
liberty, property or any right of another person, is said to commit a wrongful act and
is bound to make compensation therefore.”
70
generally based on the strict liability, in which the intent of infringer is not seen as
essential factor to find the liability. It is different from the concept of general tort law
where the infringer’s intent or negligence is neccessary.
However, at present, a number of trademark infringement still
increasingly arises and when the trademark infringement occurs, the trademark holder
would usually seek the civil remedies to the court such as injunctions and damages in
order to cover their injury.
4.2.2 Remedies for trademark infringement
4.2.2.1 Injunctions
Once infringement has been occurred, the plaintiff in a
trademark infringement lawsuit can seek an order form the court preventing the
infringer from any further infringing activity. The court regularly grant injunctions
against further trademark infringement. The court’s order may include additional
elements, for example, the infringer must recall infringing merchandise, or provide
corrective advertising. Furthermore, if the infringer violates the injunctions, the court
may hold it in contempt and require payment for a fine.161
Initially, the court regularly
grant preliminary injunctions against trademark infringement.
There are 4 factors most commonly emphasized in determining
whether to grant a preliminary injunctions against trademark infringement include:162
(1) the plaintiff’s likelihood of success on the merits;
(2) the existence of irrepearable injury to the plaintiff;
(3) the respective difficulty that the court’s grant or denial
shall have on each party; and
(4) the public interest
4.2.2.2 Damages
The other main remedy for trademark infringement is
monetary recovery. Apart from injunction relief, the court may also award monetary
recovery which includes damages, the defendant’s profits and costs of action.
161 Stim, supra note 7, at 133. 162 Barrette, supra note 21, at 234.
71
At current situation of Thailand, many trademark
infringements still increasingly arise and when the trademark infringement occurs, the
trademark owner would usually seek the civil remedies to the court such as
injunctions and damages in order to cover their injury. However, in Thailand, the
Trademark Act does not provide the provision determining the types of damages that
the plaintiff can claim.
Within the Thai jurisdiction, the court applies trademark law
and civil tort law to the problem of trademark infringement. However, in case of
compensation, the court applies Section 438 of the Civil and Commercial Code to
determine the damages and Section 161 of the Civil Procedure Code163
, to determine
the cost of action and attorney fee.
However, in terms of attorney fee, the power of the court to
determine the attorney fee fall under the limitation identified in the Schedule 6 that
fixed the maximum attorney fee which it is normally cannot be granted to cover the
real amount of attorney fee paid by the parties.
Moreover, different jurisdictions may view the problems of
trademark infringement differently and the courts then grant the different recovery,
which may cause the inadequate amount of damages.
Considering the main problem of damages for trademark
infringement under Thai law that is the Trademark Act does not provide any
provisions clearly determining the types of damages that plaintiff can claim. Thai
court applies the concept of tort damages with the trademark cases through Section
438 of the wrongful act in the Civil and Commercial Code prescribes that:
163 Section 161 of the Civil Procedure Code –
“Under the provisions of the following five Sections, the ultimate liability for all
costs shall subject to the party losing the case, however, whatever party wins the total
or partial allegation, the Court shall have the power to decide the winning party to be
liable for all costs or each party to be liable for his own part of costs or as the
proportion of the costs paid before by all parties, as the Court’s consideration, with
taking into consideration of proper reason and good faith in proceedings…”
72
Section 438 of the Civil and Commercial Code –
“The court shall determine the manner and the extent of the
compensation according to the circumstance and the gravity of the wrongful act.
Compensation may include restitution of the property of
which the injured person has been wrongfully deprived or its value as well as
damages for any injury caused.”
From Section 438, all types of damages seem to be included
in the word “damage”.164
Thus, it is too broad to give the rules and guidelines to the
parties and the court concerning what types of damages can be granted.
Furthermore, the main reason that Section 438 is improper to
apply to infringement of trademark because the limitation of section 438; it does not
provide for the profits and the plaintiff has to prove the defendant’s intention or
negligence and the amount of actual damages can only be granted.
Although, Section 438 is the principal concept of
compensation for an infringement but it may lead to the failure to achieve the
compensation due to the fact that trademark law aims to protect human intellect which
is intangible values property where the related damage is more complicated and
different than the general infringement of tangible property.
Moreover, Section 438 only determines the damages for
general tort infringement that is mostly relevant to the injury to death, body, health
and tangible property. Even though, the court may grants damages in connection with
intangible element such as mental distress, pain, grief, or similar caused by the
defendant’s conduct, which deemed as non-pecuniary losses and the most common
type of non-pecuniary loss is compensation for pain and suffering. While, trademark
is intangible asset that can be evaluated in financial losses and it can affects economic
systems. Thus, it depends on the court’s discretion to grant any profits to the plaintiff
through Section 438.
164 Atcharawongchai, supra note 15, at 324.
73
Furthermore, based on the Thailand Supreme Court decisions
and the Central Intellectual Property and International Trade Court (IPITC)’s
decisions, the total sum of damages for trademark infringement case were frequently
granted without indicating what types of damages be included, for example;165
IPITC decision No.1/2549: Infringement on the registered
trademark “Three lady cooks brand” with the defendant’s mark “Thai lady cooks
brand” on the same kind of goods. The plaintiff in this case claimed damages for loss
of sales at 1,000,000 Baht and damages incurred by infringement at 50,000 Baht a
month until the defendant stop infringing. However, the court did not award the
damages as requested by plaintiff’s lost profit is not caused by only the defendant’s
infringement. The plaintiff’s conduct is viewed as one of the factors affecting the lost
profit. Anyhow, the court granted damages from the infringement at 300,000 Baht and
50,000 a month until the defendant stop infringing.
IPITC decision No.3/2550: Infringement on the registered
trademark “OHAYO” with the defendant’s mark “Ohiyo”. The plaintiff claimed
damages for corrective advertising, damages for loss of opportunity in the franchise
business operation and damages for loss of opportunity in manufacturing the product
at the total sum of 50,000,000 Baht. The court did not award the amount of damages
as requested by the plaintiff due to the plaintiff did not have the real franchise
business project and the defendant’s product was not competitive to the plaintiff’s
product. However, considering circumstance and gravity of the infringement, the
court then granted total damages at 200,000 Baht.
IPITC decision No.174/2550: Infringement on the registered
trademark “EASYPACK” with the defendant’s mark “Easyset” for the same kind of
product. The plaintiff claimed for damages from the infringement at 500,000 Baht a
month until the defendant stop infringement. The court then granted damages from
165
Id. at 340.
74
the infringement at 100,000 Baht.
IPITC decision No.14/2552: Infringement on the registered
trademark “TANG TOH KANG” with the defendant’s mark “TOH KANG
YAOWARAT” on the same kind of products and service. The plaintiff claimed for
damages from the infringement at 5,000,000 Baht but the court did not award
requested damages because the plaintiff was unable to prove such amount of
damages; however, considering circumstance and gravity of infringement, the court
then granted total damages at 3,000,000 Baht.
Moreover, the problem of the non-existence of the types of
damages for trademark infringement seems to be unusual given that other IP laws like
copyright and patent law clearly specify the types of claimable damages and
presumably, the lack of damages for trademark infringement is caused by the
speediness in changing Thai law in order to allow Thailand to become a member of
WTO and to implement TRIPS obligations within the WTO regime.
Section 64 of the Copyright Act B.E. 2537 –
“In the case of infringement of copyright or performer’s rights,
the Court has the authority to order the infringer to compensate the owner of
copyright or performer’s rights for damages the amount which the Court considers
appropriate by taking into account the seriousness of injury including the loss of
benefits and expenses necessary for the enforcement of the right of the owner of
copyright or performer’s right.”
In addition, Section 64 of The Copyright Act B.E. 2537 as
amended by the Copyright Act (No.2) B.E. 2558 has now includes a second paragraph
allowing the court to award punitive damage, not exceeding two times of the damages
according to first paragraph. The purpose of the amendment was to protect the
75
copyright owner or performer’s right and to deter the infringer from willful and
malicious conduct.
Section 77ter of the Patent Act B.E. 2522 (1979) as amended
by Act (No.3) B.E. 2542 (1999) –
“In case of an infringement of the rights of the owner of a
patent or petty patent under Section 36, 63 or Section 65decies and 36, the court shall
have the power to order the infringer to pay owner of the patent or petty patent
damages in an amount deemed appropriate by the court, taking in to consideration the
gravity of the injury including the loss of benefits and expenses necessary to enforce
the rights of the owner of the patent or petty patent.”
As mentioned above, the copyright and patent law clearly
specifies the claimable damages that the court may grant in an action for an
infringement. The Copyright Act gives the power to the court to order the infringer to
compensate the owner of copyright or performer’s rights for damages including the
loss of benefits; expenses necessary for the enforcement of the right of the owner of
copyright or performer’s right and punitive damages.
Similar to the copyright law, the Patent Act also gives the
power to the court to order the infringer to pay the owner of patent or petty patent
damages including loss of benefits and expenses necessary to enforce the rights of the
owner of the patent or petty patent.
Therefore, besides actual damages, damages awarded in
copyright infringement may be the loss of benefits; expenses necessary for
enforcement the rights of the owner of copyright or performer’s right and punitive
damages. While damages awarded in patent infringement are similar to copyright, but
punitive damages excluded.
76
Hence, trademark law as one of intellectual property laws,
does not provide the certain claimable damages like other Thai IP laws may cause the
problems of remediable inefficiency and inadequate compensation in trademark
infringement case.
4.3 A comparative analysis of trademark damages
In addition, the table below shows a comparison of damages that plaintiff
may obtain in an action for trademark infringement in the United States, Australia,
Singapore and Thailand.
Comparative table: Types of claimable damages for Trademark
infringement in the US, Australia, Singapore, and Thailand.
United States
(Section 35 (a)
of the Lanham
Act 1946)
Australia
(Section 126 of
the Trade
Marks Act
1995)
Singapore
(Section 31 of
the Trade
Marks Act
2005)
Thailand
(Trademark
Act B.E.
2534 (1991))
(1) defendant's
profits
(1) damages or
account of profits (1) damages
N/A
(2) any damages
sustained by the
plaintiff
(2) additional
amount in
assessment
of damages
(2) an account of
profits
(3) the costs of
action
(4) attorney fees
77
From the table, in the United States, damages awarded in an infringement
case are prescribed in various types which includes defendant’ profits, any damages
sustained by the plaintiff, the costs of action and attorney fees. While Singapore law
also gives the power to the court to award actual damages and account of profits, but
does not provide the costs of action and attorney fees like US law.
However, it should be noted that in Australia, the trademark law provides
that at the option of the plaintiff, the court may grant damages or an account of
profits. It is therefore different from the US and Singapore law that the plaintiff may
be entitled to obtain both damages and defendant’s profits. However, in Australia, the
court may also include an additional amount in assessment of damages for an
infringement of a registered trademark, if the court considers it appropriate to do.166
Comparing those foreign laws and Thai law, Thai Trademark Act does not
have the provision stipulating the types of damages that plaintiff is entitled to claim in
an infringement case. As mentioned earlier, the court applies Section 438 of the Civil
and Commercial Code to determine the damages and Section 161 of the Civil
Procedure Code to determine the costs of action and attorney fees.
In terms of damages, Sections 438 seems to be inadequate remedy due to
the fact that it only determines the damages for general tort that is mostly relevant to
the injury to death, body, health and tangible property. Although the court may grant
166 Section 126 (2) of the Trade Mark Act 1995
“A court may include an additional amount in assessment of damages for an
infringement of a registered trademark, if the court considers it appropriate to do so
having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of registered trade marks; and
(c) the conduct of the party that infringed the registered trade mark that occurred:
(i) after the act constituting the infringement; or
(ii) after the party was informed that it had allegedly infringed the registered
trade mark; and
(d) any benefit shown to have accrued to the party because of the party
infringement; and
(e) all the relevant matters.”
78
the damages in connection with intangible element such as pain and mental suffering,
but it usually depends on the court’s discretion to award plaintiff any profits through
Section 438. Even though, profits are normally deemed as a part of damages, the court
may, at its discretion, decline to grant any profits caused by an infringement.
In conclusion, as mentioned earlier, trademark law should therefore be
amended, at least, like the copyright and patent law due to the fact that it is not
appropriate to only apply Section 438 of the Civil and Commercial Code to the
trademark infringement case which is different from tort action.
79
CHAPTER 5
CONCLUSIONS AND RECOMMENDATIONS
5.1 Conclusions
Intellectual Property (IP) refers to the unique, value-adding creations of
the human intellect which result from human’s knowledge. IP protection system
grants the inventors or creators the exclusive rights in inventions and creative works
to encourage them to spend time and other resources innovating and creating and also
to profit their creations by preventing others from using their creative works without
permission. Ownership of intellectual property is similar to ownership of other forms
of property. IP law is the law which concerns legal rights associated with effort,
creativity, business reputation and goodwill.167
IP involves in almost aspects of people
life, especially, economic aspect. Thus, it can stimulate economic growth.
In ordinary economic life, the business of branding products has been part
of society for a long time. Trademark is one type of intellectual property right that
affects most publicity traded business transaction today.
A trademark serves to identify the source of the goods or services even
though the source is unknown. In addition to the identification of source, a trademark
represents the goodwill of business. Goodwill represents the reputation of the
producer of goods or services. Consumers come to rely upon an established level of
quality in purchasing particular goods or services. Trademark, therefore become the
embodiment of this goodwill.168
Trademark can contribute to the economic development of developing
countries in the following manner:169
(1) improvement of the market position of domestic company through
protection of their trademark;
167 Bainbridge, supra note 4. 168 Halpern, supra note 98, at 289. 169 WIPO, supra note 35, at 151.
80
(2) improvement of the export possibilities of domestic company through
international protection of their trademarks; the investment for international
protection are worthy if the trademark has gained a reputation on the basic of its
domestic protection;
(3) improvement of the market situation in favor of the consumer through
goods identification and possibility of information on the identity of companies
offering goods or services;
(4) improvement of the attractiveness of the country in international trade
by means of an efficient and balanced system of trademark; such attractiveness
creates competition on the domestic market and thus improves the position of the
consumer.170
At current situation of Thailand, many of trademark infringements still
increasingly arise and when the trademark infringement occurs, the trademark holder
would usually seek the civil remedies to the court such as injunctions and damages in
order to recover their injury.
In conclusion, the problems of Thai trademark law on damages are as
follows:
1. The Trademark law has no provision determining the types of damages
that plaintiff is entitled.
The court applies Section 438 of the Civil and Commercial Code to
determine the damages caused by trademark infringement which is improper for the
Intellectual Property regimes because trademark law aims to protect the human
intellect and private economic right, while Section 438 aims to compensate the
damages from tort that is mostly relevant to the injury to death, body, health and
tangible property. Even though, the court may grants damages in connection with
intangible element such as mental distress, pain, grief, or similar caused by the
170 Id. at 152.
81
defendant’s conduct, which deemed as non-pecuniary losses and the most common
type of non-pecuniary loss is compensation for pain and suffering, but it still depends
on the court’s discretion.
While, trademark is intangible asset that can be evaluated in financial
losses and it can affects future economic systems, business development and business
competition. Moreover, most of court decisions do not differentiate the types of
damages, but rather granted the award of total damages representing all types of
damages claimed by the plaintiff.171
Regarding the limitation of Section 438, this Section does not clearly
stipulate that any profits such as defendant’s profits, or loss of profits can be granted.
The plaintiff has to prove the defendant’s intention or negligence and the amount of
actual damages can only be granted. Even thought the court may award any profits
caused by infringement through Section 438, but in practice it relies on the court’s
discretion. Thus, the amount of claimed damages may not be granted in adequate
amount for the damages occurred in infringement case.
2. The assessment of damages
Thai court is given with the broad discretion to grant damages based on
the evidences shown by the parties according to Section 438 of the Civil and
Commercial Code.172
The only limitation on the court’s discretion is the granted
amount of damages must be within scope of the plaintiff’s request amount. This result
from Section 142 of the Civil Procedure Code173
specifies that the court is prohibited
to make a decision in excess of or not included in such plaint. Thus, the court cannot
grant the amount of damages exceeding the plaintiff’s requested amount of damages.
171 Atcharawongchai, supra note 15, at 360. 172 Id. 173 Section 142 of the Civil Procedure Code
“A judgment or order of a Court disposing of a case shall decide on every claim in
the plaint, but no judgment or order shall be given for anything in excess of or not
included in such plaint…”
82
Such broad discretion without the examination of guideline for the court seems to be
ineffective for granting damages.
From the mentioned reasons, focuses on the non-existence of types of
claimable damages that plaintiff is entitled in an action for trademark infringement, it
is therefore improper to only apply Section 438 of the Civil and Commercial Code
through the trademark infringement case due to the fact that trademark law is a
specific law aiming to protect human intellect and prevent unfair competition.
Moreover, Section 438 does not clearly stipulate that any profits such as account of
profits or lost profits can be granted. Although, profits are generally deemed as a part
of damages, the court may, at its discretion, decline to grant any profits caused by an
infringement.
Furthermore, Thai trademark law is derived from English law which is
supported by precedents under common law. In fact, the Thai judges could easily steal
from English precedents all those causes and remedies from various types of
damages. However, unlike other countries laws, Thai trademark law has not yet been
sufficiently developed in enforcement of rights and rules for remedies.
Moreover, the lack of damages for trademark infringement is presumably
caused by the speediness in changing Thai law in order to allow Thailand to become a
member of WTO and to implement TRIPS obligations within the WTO regimes. Thai
trademark law was legislated a long time ago that it had become obsolete and unable
to respond to the economic and commercial development of the country, especially
the problems concerning enforcement of rights and remedies.
As time went by, trademark became more important and need more
efficient operation of law. Trademark protection also an indirect but important effects
on the growth of the economic. Thus, the inadequate and ineffective protection of
trademark law is a condition for trade countermeasure from trading partner country,
such as the US and the EU. Thailand has increased its enforcement of copyright and
patent law and also has improved its protections, but trademark law, especially in
83
respect of enforcement and remedies, still not improved.
Thai trademark law should therefore be amended in order to resolve the
problems of non-existence trademark damages and harmonizes with TRIPS
Agreement that requires Member Countries to provide more extensive protection of
intellectual property and the appropriate method of implementing the provisions of
The Agreement within each own legal system and practice.
5.2 Recommendations
According to the legal problems discussed in previous chapter,
conclusions and the reasons given earlier, the author would like to provide the
following suggestion concerning trademark damages that should be specified into the
Thai Trademark Act like the Lanham Act of the United States; Australian Trade
Marks Act; and Singapore Trade Marks Act.
However, for the ease comprehensions, the author would like to combine
the legal concept of trademark damages describing in the US, Australia, Singapore
and Thai Copyright law due to the fact that US law provides comprehensive provision
in determining types of claimable damages and clear guidelines for assessment of
damages; while Australian trade marks law provides the statutory damages for
counterfeit trademark; and Thai Copyright law, which has just been amended, gives
the authority to the court in awarding punitive damages.
In this regard, the resolutions of problem of non-existence trademark
damages under Thai trademark law are separated into a short-term and a long-term as
follows;
Short-term resolutions
To resolve this problem in short-term where the Trademark Act is not yet
amended, the President of the Supreme Court should issue the recommendation
relating to types of claimable damages in trademark infringement case in order to give
84
the clear rules and guidelines for the parties and the civil courts in the proceeding. The
recommendations should address the following rules and guidelines;
What constitutes trademark infringement – it should provide the clear
rules in determining the occurrence of the registered trademark
infringement.
Claimable damages – it should provide the types of claimable damages
that the court may award to compensate the plaintiff in trademark
infringement case. Damages should include (1) actual damages sustained
by the plaintiff; (2) an account of profits; (3) loss of benefits; (4) expenses
necessary for the enforcement of the right of the owner of trademark; and
(5) punitive damages.
The assessment of damages – it should provide the rules and procedure of
assessment of each damages, that the court generally awards to
compensate the plaintiff in trademark infringement case.
The other short-term resolution is that the Department of Intellectual
Property (DIP), as the principal agency in the development of intellectual property
system in Thailand, should draft and publish the guideline and model framework for
legislation on types of damages for trademark infringement. The guideline and legal
framework should address the categories of damages that the trademark owner may
claim in infringement.
Damages should include (1) actual damages sustained by the trademark
owner; (2) an account of profits; (3) loss of benefits; (4) expenses necessary for the
enforcement of the right of the owner of trademark; and (5) punitive damages that aim
to protect the trademark owner and to deter the infringer from willful and malicious
conduct.
This would help clarify and enhance the problems arising in enforcement
of IP rights and also enhance the enforcement.
85
Long-term resolution
However, Thailand as a member country of the WTO has the obligations
of TRIPS Agreement to set the extensive and sufficient protection of intellectual
property in accordance with TRIPS standards. Thus, in order to resolve the problem
of trademark damages in long-term resolution, the Trademark Act B.E. 2534 should
be amended by adding the provision regarding the types of claimable damages that
the court may grant in trademark infringement case as follows;
Section XX of the Trademark Bill –
“In the case of infringement of registered trademark, the Court has the
authority to order the infringer to compensate the owner of trademark for damages the
amount which the Court considers appropriate by taking into account the seriousness
of damage including (1) actual damages; (2) an account of profits; (3) the loss of
benefits; and (4) expenses necessary for the enforcement of the right of the owner of
trademark.
The court may include punitive damages for an infringement of registered
trademark but not exceeding two times of the damages according to the first
paragraph if the court considers it appropriate to do so.
The court shall assess such profits and damages or cause the same to be
assessed under its direction. In assessing profits the plaintiff shall be required to prove
defendant’s sale only; defendant must prove all elements of costs or deduction
claimed.”
According to the first paragraph of proposed provision, the court has the
power to award actual damages and an account of profits as appeared in the legal
framework of the United States, Australian, and Singapore trademark law. About loss
of benefits; expenses necessary for the enforcement of right of the owner of
trademark; and punitive damages in case where the infringement was committed
willfully and maliciously are the same types of damages as appeared in the Thai
Copyright and Patent law
86
However, the second paragraph offer the same identification of damages
as appeared in the new legal framework of the Copyright Act (No.2) B.E. 2558. With
regard to punitive damages that aim to protect the trademark owner and to deter the
infringer from willful and malicious conduct, it has the limitation in awarding this
type of damages not exceeding two times of the damages that the court may award in
the first paragraph.
In addition, the third paragraph provides that the plaintiff may obtain both
actual damages and defendant’s profits occurred from infringement. However, in
assessing profits, the plaintiff shall be required to prove only defendant’s sale in order
to prevail in making their claim; the burden of proof then shifts to the defendant to
prove all element of costs or deduction claimed. This will help the plaintiff lessen the
onus of proving the actual damages that is frequently hard to award and it provides
the court with considerable discretion in awarding an appropriate remedy for
trademark infringement.
87
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BIOGRAPHY
Name Miss Narisa Aeimamnuay
Date of Birth February 28, 1987
Educational Attainment
Year 2009: Bachelor of Law
Thammasat University
Work Experiences Legal Officer
WFS-PG Cargo Co., Ltd.