Case Brief

In October 2022, during the trademark monitoring, Unitalen noticed the preliminary examination announcement of a Thailand's trademark "" in Classes 05 and 10, with designated goods including "sexual lubricants; condoms." However, it was suspected to be a case of trademark squatting targeting a well-known domestic company specializing in mobile game peripherals. Upon our report on the monitored situation, the domestic right holder decided to file an opposition against the squatted trademark.

After the domestic right holder entrusted the case to us, we immediately formulated an opposition strategy for the right holder. In this case, since the opponent had no prior trademark rights in Thailand, the classes of the squatted trademark were utterly different from those of the opponent's main business and its domestically registered prior trademarks, and the product relevance was also low, in terms of the strategy, we suggested citing Article 8(9), which stipulates that "any mark which is contrary to public order, morality or public policy shall not be registrable" and Article 8(10), which stipulates that "a mark, which is identical with a well-known mark or so similar thereto that the public might be confused as to the origin of the goods shall not be registrable" of Thailand's Trademark Act as grounds for filing the opposition application.

Based on the aforementioned opposition clauses, we mainly submitted evidence of prior use, including distribution agreements and Letter of Authorization signed between the opponent and its distributor in Thailand, sales evidence from Thailand's e-commerce websites, photographs of exhibitions in Thailand, and promotional evidence from Thailand's video websites. In combination with certificates of domestic and overseas prior trademark registrations, company and brand introductions, etc., we claimed that the opponent is the true holder of the trademark and that its trademark has a high degree of popularity. At the same time, the trademark "" filed is entirely composed of the combination of the device portion "" and the textual portions "" and "" of the opponent's trademark, indicating that the application is not made by chance. The fact that the opposed party also squatted on trademarks of other Chinese entities further demonstrates its apparent malice.

In February 2023, the opposed party submitted a defense to the opposition. After examination, the Examiner upheld our opposition claims under Section 8(9) of the Trademark Act of Thailand. In the decision on opposition, the Examiner determined that the trademark marks of both parties were similar. Meanwhile, the evidence submitted by the opponent could demonstrate that the opponent already registered and used the mark involved in China and other overseas countries as early as 2018, establishing that the opponent is the actual right holder of the mark involved. The opposed party, on the other hand, applied for the mark as late as 2022 and did not provide any evidence in its defense to prove that its use of the trademark preceded that of the opponent. Based on the above, the Examiner concluded that the opposed party maliciously imitated and squatted on the opponent's trademark with knowledge of the opponent's trademark, violating public order, morality, or public policy. Therefore, the Examiner decided that the trademark in dispute shall not be registered.

Attorney's Comments

This case is a typical example of a successful cross-class opposition on goods with low relevance, achieved by claiming a violation of the public order, morality or public policy clause, despite the absence of prior trademark in Thailand.