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

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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


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




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3.2.3 Singapore (The Trade Marks Act 1998, revised ed. 2005) 51




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.

12

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).

13

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).

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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


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.


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.”


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


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.


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


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.

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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.


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.


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.


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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<http://statutes.agc.gov.sg/aol/search/display/view.w3p;page=0;query=DocId%

3A%22eda8ae51-9095-4ada-b5e4-

0407c03ca714%22%20Status%3Ainforce%20Depth%3A0;rec=0> (accessed

July 2, 2015)

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BIOGRAPHY

Name Miss Narisa Aeimamnuay

Date of Birth February 28, 1987

Educational Attainment

Year 2009: Bachelor of Law


Work Experiences Legal Officer

WFS-PG Cargo Co., Ltd.

damages for trademark infringement in thailand

Documents