In more detail

In Thailand, functional or common product shapes cannot be sought for protection as a trademark unless they have acquired secondary meaning. In a recent court decision, the IPIT Court upheld that the common shape of water bottles, which are widely used and serve functional purposes, should not be monopolized by a single entity.

Background of the case

The dispute centers around the alleged infringement of a 3D trademark, specifically the cylindrical shape of a water bottle. The claimant, a renowned brand in the premium bottled water market, argued that the defendant mimicked its distinctive cylindrical design — one that the claimant had invested in by commissioning an international famous designer, had marketed globally for an extended period, and had heavily promoted through advertising — resulting in consumer confusion and potential harm to its brand reputation.

Brief arguments and proceedings

The claimant contended that their cylindrical bottle design, despite not being registered as a trademark in Thailand, should be protected under the Trademark Act B.E. 2534 (1991). They argued that the design had acquired distinctiveness through extensive use and marketing efforts, making it recognizable to consumers as associated with their brand. Consequently, the claimant asserted that the defendant's use of a similar cylindrical bottle design amounted to passing off, as it could mislead consumers into believing that the defendant's products were associated with or endorsed by the claimant.

In response, the defendant argued that the cylindrical shape of their branded mineral water bottle was a common design in the industry, lacking the distinctiveness required for trademark protection. They emphasized that the shape was functional rather than serving as a source identifier. The defendant further argued that their branding elements, including logos and labels, clearly differentiated their products from those of the claimant. Therefore, the defendant maintained that their actions did not constitute passing off.

Court's decision

The court ultimately ruled in favor of the defendant, dismissing the claimant's passing off claims. The court found that the claimant had never sold their goods in the claimed cylindrical-shaped bottle alone without applying their mark (brand title). Furthermore, such a cylindrical shape is considered a general three-dimensional shape commonly used for containing liquid goods. As such, the cylindrical shape alone is not sufficient for consumers to distinguish the claimant's goods from those of others. Therefore, the cylindrical shape of the claimant's bottle, without the brand title, is not eligible for protection under the Trademark Act. Additionally, the brand titles on the claimant's bottle and the defendant's branded mineral water bottle are significantly different, so the defendant is not liable for passing off.

The ruling also emphasizes the importance of maintaining a competitive market and preventing undue restrictions on the use of common designs by a single entity.

What's the fine line?

The Thai Trademark Act provides legal protection to three-dimensional shapes as trademarks. To be eligible for trademark protection, a three-dimensional shape (mark) must be inherently distinctive. Specifically:

• The three-dimensional mark eligible for trademark protection must not be (i) the natural form of the goods (e.g., the shape of vegetables or fruits for selling vegetable or fruit products); (ii) a shape necessary to achieve a technical result (i.e., functional form) (e.g., the shape of a gear for gear products, a spherical shape for ball products, or the shape of a spare part for spare part products); or (iii) a shape that adds value to the goods (e.g., using gold or diamonds to decorate an otherwise ordinary container).
• Alternatively, the claimant must demonstrate that the mark has acquired secondary meaning through extensive use, meaning customers associate the shape with the goodwill or business reputation of the applicants or claimant over time. A well-known example of a three-dimensional mark that has acquired distinctiveness through extensive use is the Coca-Cola contour bottle. Although it was originally a functional design, over time it became so closely associated with the brand that it acquired distinctiveness and was subsequently granted trademark protection.

From this instance, it is evident that common or functional product shapes are generally not eligible for protection unless they have acquired secondary meaning. This raises important questions about whether such secondary meaning can realistically be established for generic product designs or packaging — such as circular plates, square tiles, rectangular books, or oval mirrors. If so, should the owners of these shapes be entitled to prevent others from using similarly common or functional product designs? Would this hinder market competition or negatively affect consumers by enabling monopolistic pricing or limiting product choices?

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