The case here started in April 2015, when ExxonMobil filed a trademark application in Thailand for a colored drawing of a petrol station layout with their registered mark “ESSO” under Class 4 and 35.
The application was refused by the Thai Trademark Registrar and the basis was that the mark was non-distinctive due the drawing being descriptive of the applied goods and services relating to oil products. This was later appealed to the Board of Trademarks where again the drawing was deemed to be descriptive of the applied goods and services noting the fuel dispensers and service station.
A civil complaint was then filed by ExxonMobil to the Intellectual Property and International Trade Court (IP&IT Court) to overturn prior decisions.
The IP&IT Court held in favor of ExxonMobil and found that to determine distinctive in a mark, it is crucial to consider the elements that stands out in the mind of a person, in this case it was the fact that the registered mark “ESSO” is placed around and visible in the design layout. In addition, the mark has been used for a long period of time in Thailand and is recognized by the public both in locally (Thailand) and overseas.
It was then appealed by the relevant Thai Intellectual Property Registry to the Court of Appeal for Specialized Cases, where the appeal court held that the mark is inherently distinctive when seen as a whole, despite separate physical elements common to service station and fuel dispensers bearing descriptiveness.
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