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A Comparative Analysis of the Protection of Trade Names Under the English Tort of Passing Off and Section 18 of Thailand’s Civil and Commercial Code

Published online by Cambridge University Press:  30 May 2016

Surutchada REEKIE  and
Adam REEKIE
Surutchada REEKIE
Affiliation:
Chulalongkorn University, Thailandsurutchada.r@chula.ac.th
Adam REEKIE
Affiliation:
Thammasat University, Thailanda_reekie@tu.ac.th
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Abstract

The English common law tort of passing off came into the spotlight in 2015 with the UK Supreme Court case of Starbucks (HK) Ltd v British Sky Broadcasting Group settling the current position regarding the question of the territorial scope of goodwill. This article undertakes a comparative study of the tort with Section 18 of the Thai Civil and Commercial Code which, it argues, has been interpreted by the Thai Supreme Court to offer a materially similar remedy to the English tort in two important conceptual aspects: the requirement for misrepresentation and the so-called “hard line” approach to the territorial scope of goodwill, as affirmed by Starbucks. The analysis carries important implications for comparative lawyers and legislators in both the UK and Thailand, and challenges assumptions based on a simplistic categorization of Thailand as a civil law jurisdiction.

Type
Articles
Information
Asian Journal of Comparative Law , Volume 11 , Issue 1 , July 2016 , pp. 1 - 25
Copyright
© National University of Singapore, 2016 

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Footnotes

*

LLB (Hons) (UCL, London), LLM (UCL, London), PhD (UCL, London); Lecturer, Faculty of Law, Chulalongkorn University (Thailand).

**

MA (Oxon) (The Queen’s College, Oxford University); Solicitor (England & Wales, non-practising); Lecturer, Faculty of Law, Thammasat University (Thailand).

References

1. Starbucks (HK) Ltd v British Sky Broadcasting Group [2015] UKSC 31 [Starbucks].

2. E.g. BANERJEE, Arpan, “Spill-over Reputation in Passing Off Actions: Indian and English Law Compared” (2014) 14:1 Oxford University Commonwealth Law Journal 21 CrossRefGoogle Scholar.

3. See discussion in Starbucks, supra note 1 at paras 38-56, especially 50. The appellant claimants argued that Ireland, Canada, New Zealand, Australia, South Africa, Hong Kong, and Singapore had all adopted a soft line approach. In giving his judgment, Lord Neuberger accepted the arguments that Australia and South Africa had adopted the soft line approach, stated that Singapore (apart from in one aspect) followed the UK’s hard line approach, and concluded that the position in the other common law jurisdictions was less clear. He ultimately rejected the appellant claimants’ argument that there was a general trend towards the soft line in common law jurisdictions.

4. HICKLING, RH, “The Legal System of Thailand” (1972) 2 Hong Kong Law Journal 8 at 9 Google Scholar.

5. WADLOW, Christopher, The Law of Passing-off: Unfair Competition by Misrepresentation, 4th edn (London: Sweet & Maxwell, 2011)Google Scholar at 1-038 [Wadlow, Passing-off].

6. Reddaway v Banham [1896] AC 199 (HL) at 204.

7. For debate on whether the origin of the tort is in common law, as a legal action based on fraud arising by analogy with the tort of deceit, or in equity seen in injunctions granted against conduct considered fraudulent, see Wadlow, Passing-off, supra note 5 at 1-035ff.

8. Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 (HL) at 740 [Advocaat].

9. Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 (HL) [Jif Lemon].

10. Ibid at 499.

11. Lord Sumption, Lord Carnwath, Lord Toulson and Lord Hodge.

12. Lord Neuberger in Starbucks, supra note 1 at 15, citing Lord Oliver in Jif Lemon, supra note 9 at 499.

13. Advocaat, supra note 8.

14. AG Spalding & Bros v AW Gamage Ltd [1914-15] All ER Rep 147 (HL) [AG Spalding].

15. Wadlow, Passing-off, supra note 5 at 1-018.

16. There is a concurrent House of Lords authority for the test of passing off, in Advocat, supra note 8, which may lead to some confusion. It has been suggested that there is no fundamental difference between Advocaat and Jif Lemon, but that they approach the same principles from different perspectives and thus are useful in different contexts. This paper will take the formulation used in Jif Lemon on the basis that, per Wadlow, “Of the two decisions it must be admitted that Jif is definitely the more useful in everyday practice” (Wadlow, Passing-off, supra note 5 at 1-026).

17. IRC v Muller & Co’s Margarine Ltd [1901] AC 217.

18. Ibid at 223-224.

19. Star Industrial Co Ltd v Yap Kwee Kor [1976] FSR 256.

20. Ibid at 259.

21. Advocaat, supra note 8.

22. AG Spalding, supra note 14.

23. Gillette (UK) Ltd v Edenwest Ltd [1994] RPC 279 (Ch).

24. Ibid.

25. Burberrys v JC Cording & Co Ltd (1909) 26 RPC 693 (Ch).

26. For a recent example of this, see Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41 in which the Court of Appeal held that although the defendant’s use of the word “glee” in relation to its TV show was liable to cause confusion in relation to the claimant’s comedy club venues, such that a customer may have thought the venues and the TV show were run by the same businesses or businesses connected in the course of trade, such confusion did not amount to an actionable misrepresentation. This was because, on the facts, the Court was not persuaded that such confusion affected a significant number of customers.

27. AG Spalding, supra note 14.

28. Wadlow, Passing-off, supra note 5 at 4-007.

29. Advocaat, supra note 8 at 755 (Lord Fraser).

30. E.g. by Wadlow Passing-off, supra note 5 at 4-048ff, which also seems to be the interpretation accepted by Jacob LJ in L’Oreal (see below).

31. See, for example, the debate between different approaches highlighted in WADLOW, Christopher, “Passing Off at the Crossroads Again: A Review Article for Hazel Carty” (2011) 33(7) European Intellectual Property Review 447 Google Scholar; CARTY, Hazel, “Passing Off: Frameworks of Liability Debated” (2012) 2 Intellectual Property Quarterly 106 Google Scholar [Carty, “Passing Off”]; DAVIS, Jennifer, “Why the United Kingdom Should Have a Law Against Misappropriation” (2010) 69 Cambridge Law Journal 561 CrossRefGoogle Scholar; CARTY, Hazel, “Passing Off at the Crossroads” (1996) 18 European Intellectual Property Review 629 Google Scholar.

32. See DE VREY, Rogier W, Towards a European Unfair Competition Law: A Clash Between Legal Families (The Netherlands: Koninklijke Brill NV, 2006)Google Scholar.

33. LAFRANCE, Mary, “Passing Off and Unfair Competition: Conflict and Convergence in Competition Law” (2011) Michigan State Law Review 1413 Google Scholar.

34. See discussion in de Vrey, supra note 37 at 5.5.1.7.

35. L’Oreal SA v Bellure NV [2007] EWCA Civ 968 [L’Oreal].

36. Although it should be noted that decisions of judges in passing off nevertheless remain divided on the subject of the proper role of the tort, as noted by commentators: see, for example, the discussion in Carty, “Passing Off”, supra note 36.

37. Arsenal Football Club Plc v Reed [2003] EWCA Civ 696.

38. L’Oreal, supra note 35 at 139.

39. Ibid at 141.

40. Alain Bernardin v Pavilion Properties Ltd [1967] RPC 581 (Ch).

41. Ibid at 584.

42. Baskin-Robbins Ice Cream Co v Goodman [1976] FSR 545 (Ch).

43. Ibid at 547.

44. Maxim’s Ltd v Dye [1978] 2 All ER 55 (Ch).

45. Ibid at 58.

46. Pete Waterman Ltd v CBS UK Ltd [1993] EMLR 27 (Ch).

47. Ibid at 53.

48. Ibid at 58.

49. E.g. Banerjee, supra note 2.

50. Starbucks, supra note 1 at 47.

51. Ibid at 49.

52. Ibid at 60.

53. Dominion Rent A Car Ltd v Budget Rent A Car Systems (1970) Ltd [1987] 2 TCLR 91.

54. Starbucks, supra note 1 at 62.

55. Maxwell v Hogg (1867) LR 2 Ch 307 (CA).

56. Starbucks, supra note 1 at 66.

57. See, for example in relation to trade marks, Thailand’s Trademark Act BE 2534 as amended by the Trademark Act (No 2) BE 2543.

58. See, for example, Dika Case 949/2525 and Dika Case 3151/2525 (both decided in 1982 CE)

59. Thai Civil and Commercial Code, s 18 (trans from SANDHIKSHRETRIN, Kamol, The Civil and Commercial Code Books 1-VI and Glossary (Bangkok: Nitibannakan, 2008)Google Scholar).

60. It is clear from Dika Court judgments (see case 37/2541 discussed below) that damage (actual or likely) is necessary, despite the use of the word “or” in Section 18: mere dispute over the use of the name does not appear to be sufficient.

61. Sandhikshetrin, supra note 59.

62. Section 4 of the Thai Civil and Commercial Code, supra note 59, states that, where written law does not cover a particular issue, local custom should be used and, failing this, analogy to the provision most nearly applicable or, as a last resort, general principles of law. Therefore court decisions are not an official source of law in Thailand. However Dika Court judgments are continually published and cited in argument, being considered highly persuasive as they represent an authorized manner of interpreting and applying the law.

63. [translated by first author].

64. Case 37/2541 [translated by first author].

65. Ibid.

66. Ibid.

67. The word usually used in Dika Court judgments is simply ชื่อเสียง (chua sieng). The additional ความมี (kwam mee) means “the property of having” (ชื่อเสียง chua sieng) (i.e. reputation/goodwill).

68. A civil and commercial code, drafted by French legal advisers, was promulgated in Thailand in 1923; after two years, this was repealed and replaced with a new civil and commercial code drafted along the lines of the contemporary Japanese Civil Code, itself modelled on the German Civil Code: this is the basis for the current Thai Civil and Commercial Code. See KASEMSUP, Preedee “Reception of Law in Thailand, A Buddhist Society” in Masaji CHIBA, ed, Asian Indigenous Law in Interaction with Received Law (London: KPI, 1986), 267 Google Scholar.

69. Case 425/2537 [translated by first author].

70. Case 425/2537 [translated by first author].

71. E.g. AG Spalding, supra note 14.

72. E.g. Rolls-Royce Motors Ltd v Zanelli [1979] RPC 148 (CA).

73. E.g. Ewing v Buttercup Margarine Co. Ltd [1917] 2 Ch 1 (CA).

74. E.g. Illustrated Newspapers v Publicity Services [1938] Ch 414 (Ch).

75. Case 949/2525 [translated by first author].

76. Starbucks, supra note 1 at 47.

77. Case 949/2525.

78. 2015 Kuala Lumpur Declaration on the Establishment of the ASEAN Community, done at Kuala Lumpur, 22 November 2015, online: ASEAN <http://www.asean.org/storage/2015/12/KL-Declaration-on-Establishment-of-ASEAN-Community-2015.pdf>.

79. Starbucks, supra note 1 at 61.

80. Ibid.

81. Charter of the Association of Southeast Asian Nations, done in Singapore, 20 November 2007, s 34.