Problems of the use of registered trademark in the case of fair use

Abstract

According to Section 44 of the Trademark Act B.E. 2534, once the trademark has been registered, the trademark owner will have the exclusive right to authorize or prohibit others from using the mark. For this reason, if a person uses a trademark that is same to or similar to that registered trademark on registered goods of that class without permission from the registered trademark owner under the law and causes damage to the trademark owner who is the registrant, it would be considered an infringement of the right to use the trademark under this Section 44. However, in Thailand determines exceptions to the protection of trademark rights in cases where the trademark is a name, surname, company name, office name in good faith. According to Section 47, exceptions to the protection of trademark rights, it occurs when a person uses the mark's name as a first name, last name, or any bona fide description of the character or quality of goods because it is not being used as a trademark. Therefore, the trademark owner has no exclusive right to prohibit others from using their registered trademark. Nonetheless, this exception to Section 47 is rarely applied in Thai law, as it is extremely difficult to find information, especially examples of Supreme Court decisions, when researching Section 47 exemptions. The ambiguous laws or regulations, including the exception for the use of registered trademarks, may cause confusion to trademark users in Thailand about how to use a trademark for fair use or for "descriptive use" in accordance with Section 47, and the seller is also unaware of the scope or conditions for using this exception under Section 47. Due to the fact that there are some instances that trademark user simply uses or need to use the registered trademark for sale or advertising to describe its origin or source of goods. In addition, the trademark user of the trademark does not intend to deceive consumers or the public regarding the origin of the product, nor does he or she intend to sell counterfeit or imitation products, but rather to explain the genuine origin or quality of the product in order to promote the user's trademark product. The study of trademark law in Thailand reveals that trademark infringement in Thailand involves strict and absolute protection for trademark owners, but no clear protection or exemption laws encourage users of trademarks in the event of fair use. From this study of foreign Trademark Laws, the United States and South Korean Trademark Laws have provisions to protect trademark users from the use of registered trademarks, which is recognized as the exemption concept of trademark owners' exclusive rights. In other words, a trademark user that is identical or similar to a registered trademark, for which the owner has registered the trademark, may be used without concern for trademark infringement if the trademark is used in accordance with fair use. The study of trademark law in the United States and South Korea revealed that Thailand's trademark laws have unclear legislation or guidelines that clearly set criteria for determining conditions or scopes for the use of registered trademarks in terms of fair use. So, the author proposes a guideline for determining the conditions or scopes of the use of a registered trademark in cases of fair use by providing both the legal establishment of additional amendments for trademark fair use in the Thai Trademark Act and the scope and conditions of fair use of trademark rules.