VICTORY for “GOPRO” AFTER 6 YEARS AGAINST REGISTRAR’S REJECTION

As we step into the new year, let’s celebrate with Our Client “GoPro, Inc.” for declaring its FINAL WIN! …

Thailand Supreme Court now ‘refuse’ to accept the appeal and it has confirmed the Decisions of 1^st Court and 2^nd Court, whereby a combination of “GOPRO” was held to be inherently distinctive and the DIP was ordered to register the mark per our client’s applications.

For the past story:

Despite the brand’s global success, GoPro, Inc. has been unsuccessful in registering its house mark, “GOPRO”, in Thailand – until this victory declaration at the Supreme Court.
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 and our superior litigation team managed to win the case for GoPro.

Please visit our previous article THAILAND’S COURT “GOES PRO” for the full past story.

“5 Lessons” for Foreign Brand Owners to Learn from GOPRO’s Case:

Lesson 1:

Thailand has a very strict analytical practice on distinctiveness and the Trademark Office often rejects marks that are descriptive of anything i.e. colors, numbers, and/or the words and devices that have direct/indirect reference to the characteristic of goods/services. Most of the time……, this rejection is obviously far beyond the scope of law.

Lesson 2:

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. It seems that…… low English proficiency among Thai Registrars now hinder not only trademark registration system but also the country’s development.

Lesson 3:

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. It is no wonder that ………. Thai courts have to work hard, and the period of waiting for the final decision in each case could be continued longer.

Lesson 4:

Foreign brand 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.

Lesson 5:

In order to successfully deal with above situations, It’s always better to put your trust in the specialized IP law firm. It will always give you an advantage when the team of lawyers who pursue your case has experience dealing with cases similar to the one that you are dealing with can walk you through the details of that case and its outcome.