It is common for businesses to adopt their founders’ personal names and/or surnames as trademarks to exploit reputations attached to the said names, especially for celebrities, singers, actors, and designers. However, registering such names has been challenging in Thailand largely due to Section 7 Paragraph 2(1) of the Trademark Act, which states that “a personal name, a surname of a natural person not being commonly understood as such, a full name of a juristic person in accordance with the relevant law, or a trade name presented in a special manner and not having direct reference to the character or quality of the goods” is distinctive. Pursuant to this provision, the Registrar and the Trademark Board reject the names unless they are presented in a special lettering style.
Nonetheless, this problem seems to be alleviated now as our client’s mark “GABRIELLE CHANEL” has been found inherently distinctive and accepted by the Courts even though it is in non-stylized letters. In that case, the Registrar initially rejected the trademark saying that it is an individual’s first name and family name not represented in a special manner. Chanel disagreed with the Registrar’s orders and appealed against them to the Trademark Board; nonetheless, the Board still affirmed the Registrar’s rejections. Chanel brought the lawsuit for cancellation of the rejections, submitting arguments to demonstrate that the mark “GABRIELLE CHANEL” is inherently distinctive and capable of distinguishing the applicant’s products from those of others.
Thereafter, the IP&IT Court announced its decision finding the mark inherently distinctive. Recognizing the unique nature of a designer’s brand, the Court ruled in essence as follows. Though the mark does not meet the specific requirement of being presented in a special form under the above Section 7 Paragraph 2(1), the mark may still be registrable if it meets the general distinctiveness requirement, i.e. being capable of distinguishing the applicant’s goods from those of others. For this case, “GABRIELLE CHANEL” is the first name and surname of the globally famous French fashion designer and founder of applicant, who has run the business under her family name “CHANEL” since 1909. The word “Chanel” has thus become recognized and well-received in numerous countries, including Thailand, for a long time. Due to such recognition, the said name is not merely a common name with reference to Ms. Chanel herself, but it is capable of indicating the relationship to the famous French designer and founder of Chanel. Therefore, the mark can differentiate the goods under the trademark from those of others. Moreover, the mark is not directly descriptive.
However, the Trademark Office appealed to the Court of Appeal for Specialized Cases arguing that the said trademark is obviously an individual’s first name and surname not presented in a special manner.
In January 2021, the Appeal Court not only upheld the IP&IT Court’s ruling that the mark is distinctive pursuant to the general requirement but also ruled further that the mark meets the specific requirement under the above Section 7 Paragraph 2(1) as well. The Court elaborated that the term “represented in a special manner” in this Section is applicable only to the immediately preceding term, i.e. “a tradename”, but not “a personal name”, “a surname”, or “a juristic person name”. For this case, “GABRIELLE CHANEL” is used as a trademark, not merely as the personal first name and surname to refer to Ms. Chanel. Therefore, it is not understood as a first name and a family name. The mark is inherently distinctive according to section 7 paragraph 2 (1) with no need to be presented in a special manner.
Still disagreeing with the Court of Appeal, the Trademark Office requested permission to further appeal to the Supreme Court. Nonetheless, the request was denied and the above decision of the Court of Appeal becomes final.
We are pleased with these decisions as both Courts interpret the laws in the manner which is consistent with business practice and a consumer’s perception. It is a good sign for trademark protection in Thailand. Our firm hopes that this case will be a useful precedent for owners in registering their design brands or designer labels.