Earlier this summer, several news outlets reported that U.S. fast food conglomerate Yum! Brands, the operator of Kentucky Fried Chicken (KFC), was considering taking legal action against a fast food restaurant in Bangkok, Thailand shockingly called “Hitler.” The Hitler restaurant was selling fast food under a logo similar to KFC’s iconic logo, replacing the face of Colonel Harland Sanders, KFC’s founder with his signature white suit and string tie, with the face of Adolph Hitler, former German Chancellor, warmonger and mass-murderer.
Despite the Hitler restaurant’s subsequent removal of their offensive interpretation of the KFC logo, the incident highlighted legal issues businesses may face in foreign markets beyond the unauthorized use of their marks (aka infringement). I’m talking about foreign trademark tarnishment. Trademark tarnishment is the unauthorized use of a well-known mark that degrades consumers’ positive associations with such mark, thereby harming the mark’s overall reputation.
What does this mean in an international context? Foreign trademark tarnishment can result in reduced foreign demand for a business’ goods or services, and hinder their ability to take advantage of foreign market opportunities. Although protecting against trademark tarnishment is generally difficult, KFC’s recent altercation with the Hitler restaurant shows ways in which foreign businesses can take advantage of foreign national trademark laws to protect their marks against tarnishment—even if such countries do not main specific protections against tarnishment.
Thai trademark law does not providing express protections against tarnishment. However, KFC’s logo likely qualifies for tarnishment-like protections in Thailand because it would qualify as a “well-known mark.” Unlike the U.S. and other common law countries (Australia, Canada, India, South Africa and the United Kingdom, among others), Thailand is a “first to file” country, meaning that a mark can normally only obtain full protection under Thai law through registration with the Thai Department of Intellectual Property (DIP). However, Section 8(10) of the Thai Trademark Act (“Act”) acknowledges rights for unregistered well-known marks. Since 2005, an unregistered mark can be designated as a well-known mark under Thai trademark law if it meets several evidentiary criteria upon petition to the DIP’s Board of Well-Known Marks.
Similar to most countries, meeting such criteria in Thailand generally requires that a mark possess nationwide recognition. Article 16(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and Article 16bis of the Paris Convention for the Protection of Industrial Property require that a mark have nationwide recognition among consumers to qualify as a well-known mark. Likewise, Thailand requires that a mark have nationwide consumer recognition, yet this recognition can be established through predominant use of the mark abroad. Once established, a well-known mark is granted protections in all classes of goods and services.
In the case of KFC, it is likely that their logo qualifies as a well-known mark in Thailand based on KFC’s global and national recognition. KFC has more than 450 outlets in Thailand and approximately 15,000 outlets worldwide—not to mention extensive global advertising and promotional campaigns. These facts likely qualify the KFC logo for well-known mark protection in Thailand (upon petition), giving KFC broad protection under the Act for its logo among multiple if not all classes of goods and services.
By obtaining trademark protection, a trademark owner can normally prevent others from most forms of unauthorized use of such mark. Yet, you might asking yourself, o.k., while supplanting Adolf Hitler for Colonel Sanders is detestable, isn’t it permitted as free speech? The answer varies from country-to-country and from case-to-case. Several major markets including the U.S., the European Union and India, recognize that unauthorized users of a mark may defend against infringement or tarnishment claims through fair use, namely the ability to use a registered mark for legitimate free speech purposes such as parody. In the U.S., such a defense is upheld sometimes in a confusing way. For example, a U.S. Court found that the unauthorized noncommercial use of marks from a L.L. Bean catalogue can be parodied in an adult magazine, but the unauthorized use of the Dallas Cowboys football cheerleading team’s trademark in a pornographic film did not. In terms of Nazis and terrorists, a U.S. Court did allow an unauthorized user to conjure up Nazi and Al-Qaeda themes in their use of Wal-Mart’s well-known mark when such use was non-commercial.
Fortunately for KFC, Thailand does not appear to afford such a fair use defense. Section 109 of the Act prohibits any person who “imitates” a registered mark to mislead the public as to its true ownership, subjecting such user to fines up to 200,000 Baht (approx. US$ 6,250.00) and/or two years imprisonment. Due to the inherent broadness of “imitates” without any express fair use defenses provided under the Act, Thailand appears to possess little to no trademark fair use exceptions for parody or other recognized fair uses. Based on these facts, KFC would likely be able to seek enforcement of their trademark rights in their logo as a well-known mark against the Hitler restaurant.
What’s the takeaway? The moral of this story is that understanding foreign national IP laws can help businesses to find effective solutions to protect against tarnishment and other unauthorized uses abroad, even if such protections are not expressly provided in foreign national legislation. Although few business maintain as well-known marks as KFC’s logo, most businesses can adopt tailored foreign trademark protection strategies to prevent tarnishment or infringement of their marks. Businesses who have tarnishment issues in a particular market should consult with qualified local counsel to understand what protections can be afforded to their marks.
 Britt N. Lovejoy, Tarnishing The Dilution by Tarnishment Cause of Action: Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. and V Secret Catalogue, Inc. v. Moseley, Compared, 26 Berkeley Tech. L. J. 623, 626 (2011) (citing J. Thomas McCarthy, 4 McCarthy On Trademarks & Unfair Competition § 24:89 (4th ed.)).
 See Somboon Earterasarun, Criteria In Determining Well-Known Trademarks in Thailand, Tilleke & Gibbins, (2010), available at http://www.tilleke.com/sites/default/files/2010-AsiaIP-Criteria-Well-Known-TM_0.pdf.
 See Keola R. Whittaker, Trademark Dilution in a Global Age, 27 U. Pa. J. Int’l Econ. L. 907, 937 (2006).
 Department of Intellectual Property Regulations on Recordal of Well-Known Marks B.E. 2548 (AD 2005), Ch. 7, 11.
 Say Sujintaya and Jomjai Jintasuwon, Well-known Trademarks in Thailand – A Bump in the Road, Baker & McKenzie, Mar. 23, 2012, available at http://www.lexology.com/library/detail.aspx?g=ce280c13-d28e-45f6-8a45-e45a9af8a74e.
 About KFC, KFC.com, available at www.kfc.com/about; Yum! Brands, Yum! Financial Data, Restaurant Counts (2012), available at http://yum.com/investors/restcounts.asp.
 See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st. Cir. 1987); compare Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 376 (S.D.N.Y. 1979).
 See Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1339-40 (N.D. Ga. 2008) (Use of the terms WAL★OCAUST and WAL-QAEDA in referencing Wal-Mart’s trademarks in tee-shirts was held to be protected parodic noncommercial speech).