GoPro, Inc. really needs no introduction: the California-based company’s action cameras under their “GOPRO” brand has topped all major tech rankings. But, curiously, despite the brand’s global success, the company has been unsuccessful in registering its house mark, “GOPRO”, in Thailand – until a court has now decided the mark is registrable.
WE IP has had the privilege of leading the prosecution of GoPro’s litigation against the Thai Department of Intellectual Property (“DIP”), whose Registrars and Appeal Board had consistently refused to register the “GOPRO” word mark. Armed with the client’s confidence and a faith in legal certainty, WE IP with our BRILLIANT litigation team managed to win the case for GoPro.
Here is the full story:
- The first three applications by GoPro for the word mark “GOPRO” by itself were filed in Thailand in March 2016 – six years ago – for goods in classes 9, 12 and 28. All three applications were rejected in May 2017, and the Registrars’ analyses were the same: ‘…the Subject Mark is non-distinctive because it comprises the word “GO”, meaning to go, belonging to, appropriate for, and to attain, and “PRO”, which is an abbreviation for “PROFESSIONAL”, meaning a professional person. Combination of the two words enables the understanding that the relevant goods are fit for professional use, which is directly descriptive of a quality or characteristic of the goods claimed.’
- Then, GoPro appealed these three rejections to the Thai Trademark Appeal Board (TTAB), who, after three years of deliberation, decided in 2020 to uphold the Registrars’ rejections based on the same analysis. By that point, when one’s trademark has been consistently refused registration for four years, many applicants would give up – but not GoPro, who decided to appeal the three TTAB’s decisions to the Central Intellectual Property and International Trade Court (CIPITC) as a combined case in April 2021.
- To ensure that all salient arguments are laid out and in the best way possible, in July 2021, WE IP’s trademark and litigation teams made a major overhaul of the Complaint as originally filed, and the CIPITC rendered its Decision on 24 February 2022, whereby “GOPRO” was held to be inherently distinctive and the DIP was ordered to register the mark in classes 9, 12 and 28 per our client’s applications.
Lessons from CIPITC’s Decision:
- Marks may, evidently, be formed by compounding multiple pre-existing words, i.e. “GOPRO” – these may be called “invented compound word marks”. For such marks, each pre-existing word component is likely to be polysemic (interpretable in multiple senses), making the search for meaning of the overall mark consist in examining all possible permutations of all components’ possible meanings.
- The present Decision shows that, if one particular permutation of components’ meanings allows for interpreting the mark in a manner that is descriptive of the goods/services claimed, such observation is not sufficient to conclude that the overall mark is descriptive.
(Above) Ms. Saowaluck Lamlert (APPLE), WE IP’s Managing Partner, attending a CIPITC hearing for GoPro.
- The test for trademark descriptiveness – as established, developed, upheld, and consistently applied by the Thai courts – dictates that the mark must be directly indicative of a quality or characteristic of the goods claimed, such that it enables the public to discern said quality or characteristic immediately or with little use of discretion/imagination.
- Thus, for invented compound word marks formed by polysemic components, vast variety of possible meanings of the overall mark naturally renders it impossible for the public to discern any quality/ characteristic of the relevant goods/services immediately or with little use of discretion/imagination.
- However, we observe that part of the reason the DIP lost its case this time was its failure to justify the Registrar’s and TTAB’s choices of meanings she/it attributed to “GO” and “PRO”, which formed the bases of her/its rejections. This suggests the court still leaves open the possibility that existence of just one particular interpretation of an invented compound word mark which renders it descriptive may still be sufficient to conclude that the mark as a whole is descriptive, but the court will be looking for a strong justification for the Registrar’s or TTAB’s choice of such particular permutation of components’ meaning. Without much precedents on this point, we believe such choice may be justified, perhaps, where such particular meaning is by far the most prevalent in ordinary usage.
To international trademark practitioners, Thailand’s trademark registration system is rather infamous for being unpredictable. With wide discretionary powers given to Registrars, trademarks applied for are often interpreted in convoluted ways that neglect principles of translation. Examples abound:
- A three-word trademark might have its first and third words interpreted by their meanings in English, while the second word by its meaning in Japanese.
- An English word that is most obviously a personal surname might be interpreted through its ancient meaning as “a type of mammals similar to cats” (imagine the brand owners’ faces when they learnt that the Registrar insists their company founder was practically a polecat!)
Though Thailand has decades worth of case law providing rational guidelines for interpreting foreign-language trademarks to determine their distinctiveness, but the landfill of Registrars’ and TTAB’s rejections that have been quashed by the courts still keeps growing. This highlights a devastating disjuncture between the courts’ rationalized statutory interpretation of the Trademark Act and the DIP’s day-to-day, haphazard, implementation of the same law.
Trademark owners may learn from our story that a court of law may be the most reasonable and reliable organ within Thailand’s trademark registration infrastructure. Trademark owners’ chances of getting their marks registered seem to be fairer at court level. So, if you have just received a TTAB rejection, it is a good idea to consider taking the DIP to court.
In short, with their firm adherence to reason and clarity, Thai IP courts generally maintain their “PRO”. (How would the DIP interpret the word in this case? We wonder.)
For more information, please contact us at firstname.lastname@example.org.
|Saowaluck Lamlert (APPLE)
Senior Associate / Relationship Specialist