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3 August 2017

Assessment of Similarity Under the Amended
Trademarks Act: Closer Look at Goods/services

Coming into effect since as from July 28, 2016, the Trademark Act (No. 3) B.E. 2559 introduced a new criterion in assessing confusing similarity. Prior to this amendment, a mark is rejected on the relative grounds if there is a prior identical or confusingly similar mark in (i) the same class, or (ii) different classes but covering related goods/services. This literally means that, when a junior mark faces a prior identical or confusingly similar mark in the same class, the junior mark will be rejected even when the specific goods/services are not related. Only when the marks are in different classes will the authority need to consider the nature of the goods/services.
Under the new Act, nonetheless, the prior identical or confusingly similar mark will be an obstacle only if it covers goods/services of the same nature regardless of whether they are in the same or different classes. Accordingly, even when the marks are in the same class, the authority will have to further analyze whether the goods/services are of the same nature or not.
Recently, the Trademark Board has issued some interesting rulings in line with this amendment. The Board held typewriters not related stamps, newspaper, books, photos, and posters reasoning that they are different in terms of the natures and purposes of use (Decision No. 1499/2559). In Decision No. 1521/2559, the Board allowed co-existence of similar marks in I.C. 1 on the grounds that specific goods of both parties were different. The senior mark is registered in relation to additives, ingredients and other chemicals for use in production of hair and skin care products whereas the junior mark is applied for modifiers agents for coating. The Board elaborated that the goods were specialized chemical products for industrial use and the relevant consumers should be able to exercise a high degree of care when selecting the goods.
Similarly, in Decision No. 41/2460, the Board found the marks in the same class similar but still accepted the junior one reasoning that there would be no likelihood of confusion due to different goods. While the senior mark covers electric drills, the junior mark is filed for machine parts. Having considered these, the Board found them totally different in term of characters, purposes of use, intended buyers, and trade channels. Especially for the trade channels, the Board emphasized that the machine parts were not sold at regular shops but through specific authorized distributors.
In Decision. No. 43/2560, the Board held glue for industrial use not related to cellulose ester for production of paint, color, and coating. The Board explained that the goods of both parties were chemicals but they were used for different purposes and industries. The Board also added that relevant consumers will carefully select the goods in accordance with their intended use.
This new approach should allow more flexibility in assessing similarity. Rather than taking a formalistic approach by relying strictly on the classification, the authority can take a more realistic view by considering an actual nature of the relevant goods/services. This should lead to a more reasonable assessment of likelihood of confusion.