Background
A manufacturer of various safety products including disposable respirators (i.e., masks for protecting against dust and pollutants), traffic cones and reflective tapes, applied for registration of the trade mark VFLEX in respect of disposable respirators in Class 9 with the Thai Trademark Office. The trade mark Registrar rejected the application, saying that the mark was descriptive of the goods it was intended to cover because the letter V was a letter not shown in a stylised form and the word FLEX meant ‘bendable or flexible’ which, when used in respect of a disposable respirator, directly described the product (the Registrar explained further that a disposable respirator must be adjusted and bent along the contour of a human face.)
Action Taken
The applicant appealed the Registrar’s ruling to the Trademark Board, who affirmed the ruling. The Trademark Board also added that the letter V could be an abbreviation of the word ‘very’ which, when used in combination with the word FLEX, could amplify the descriptiveness of the word FLEX.
The applicant filed a civil lawsuit against the Trademark Board in the Intellectual Property and International Trade Court (IP & IT Court, a specialised court and a court of first instance) claiming that the Trademark Board gave a decision that was unlawful because the mark VFLEX was in no way descriptive of disposable respirators and asked the IP & IT Court to reverse the Trademark Board’s decision.
Outcome
The IP & IT Court decided in the applicant’s favour, saying that the letter V did not necessarily stand for ‘very’, adding that it could in fact stand for many other words. Moreover, they determined that the word FLEX did not only mean ‘bendable or flexible’, and VFLEX was deemed to be a coined word which did not have any meaning, and therefore not capable of making the public think only of disposable respirators. Whether or not the applicant’s product could be bent to the contour of a human face was irrelevant. Therefore, the court did not find VFLEX descriptive of disposable respirators and the decision of the Trademark Board was unlawful and to be cancelled (this decision was given on 30 October 2013.)
The Trademark Board is appealing the decision of the IP & IT Court to the Supreme Court (the court of last resort). The decision of the Supreme Court will be final.
Lessons Learned
- When you face a decision from the Trademark Registrar or the Trademark Board which you find unsatisfactory or unjust, you can still seek help from the IP & IT Court.