Scope of rights
The acceptance by the Thai Supreme Court of shapes as being registrable as two-dimensional trademarks also raises another difficult issue regarding the scope of trademark rights. Can the trademark owner of a two-dimensional shape mark prevent a competitor from selling a product that contains the three dimensions of the object depicted by the registered two-dimensional mark? This will depend on whether the use of the shape in presentation of the goods is considered “use as a trademark.” In other words, it will be infringement of the trademark rights if the two-dimensional shape as applied to the goods has inherent features that would lead a potential purchaser to perceive the shape as an indication of an origin of the product, rather than a representation of the product itself. The issue, however, has not been tested in the Thai courts.
Conclusion
The public policy considerations with respect to shape mark protection in Thailand are not completely clear. The essential issue concerning this form of protection for Thailand is whether the registration of configuration marks will restrict access to functional features or innovations.
We are of the view that the law should clarify the following issues:
Since trademark rights are essentially unlimited in potential duration, the issue with respect to the relationship and dichotomy between trademarks and other intellectual property rights, such as industrial designs and copyrights, should be clarified by the statute.
The law of Thailand implementing the TRIPS trademark provisions should make it clear that shapes that substantially perform a technical function are not registrable. This is to ensure that “functional” marks cannot be registered.
Shapes that do not serve as a function should be capable of registration on the basis of their inherent distinctiveness. Otherwise, it has to be shown that through continued use consumers perceive the appearance of the product itself as an indication of origin.
These clarifications under Thai law would help trademark owners and practitioners to more effectively implement shape mark protection in the jurisdiction.