Thailand: Sound marks in Thailand
Registration of sound marks in Thailand has been legally possible since the Thai Trademark Act (No. 3) B.E. 2558 (A.D. 2015) came into force on July 28 2016. However, such registrations remained only a possibility that didn't mature into reality. On September 1 2017, new Ministerial Regulations were issued and guidelines published that provide clarification on the sound mark application process in Thailand as well as details on how to properly complete the revised trade mark application form to claim protection for sound marks.
After July 28 2016, the Thai Trademark Act in Paragraph 2 of Section 7, states that:
“A trademark having or comprising any of the following essential characteristics shall be deemed distinctive. (11) a sound having no direct reference to the character or quality of the goods or a sound which is not the natural sound of the goods or a sound which does not result from the functioning of the goods”
From this wording, the regular standard of descriptiveness applicable to traditional word and device marks has been transplanted into the examination process of sound marks, with additional conditions specific to sound marks; i.e., that the sound must not be the natural sound of the goods and does not result from a function of the goods. As sounds made by the goods or resulting from the functioning of the goods can, in most cases, be considered characteristics of such goods, these added conditions merely constitute a mark type-specific application of the ordinary descriptiveness analysis.
While numerous lines of analysis were proposed surrounding sound mark registrations in Thailand at the time of enactment of the Trademark Act B.E. 2558 (A.D. 2015), very few practical developments ensued, until July 3 2017, when the official trade mark Application Form was amended to include a new space especially dedicated to sound marks. This new application form provided a concrete channel for mark owners to file for their sound marks, however there were no official practical guidelines on how to apply for protection of sound marks within the Thai system, which remains largely paper-based.
On September 1 2017, the Ministry of Commerce issued Ministerial Regulations No. 5 (B.E. 2560) (A.D. 2017). These Regulations deal with a multitude of issues under the Trademark Act, while Article 6 provides brief clarification on the sound mark application process as follows:
1) The Applicant must provide a clear description of the sound mark
2) The Applicant must submit such sound clearly recorded in a recording medium
3) The Applicant may also submit staff notation, spectrograms or other forms of transcription so as to complete the description of the sound
Further, on September 1 2017, the Department of Intellectual Property also published its updated guidelines on how to fill out trade mark application forms that now include a section on applications for sound marks. Points of note are:
1) The Applicant must indicate whether the mark is a) a human sound, b) an animal sound, c) musical (melodic) sound or d) other type of sound.
2) The description of the mark should include the context in which the mark is used (e.g., melody of bell ringing played before a news report) as well as the closest Thai syllabic expression of the melody.
3) Acceptable recording mediums include USB flash drives or CDs.
From these guidelines, there could be as many as four types of representations of one sound mark submitted with the application form. The numerous types of transcriptions and notations required to support a sound mark application are aimed – in part – at enabling the Trademark Office to compile different types of indices that will facilitate the process of similarity examination.
With these clear, practical guidelines, it will be easier for applicants and their advisors alike to master the application filing process for sound marks in Thailand.
Spruson & Ferguson
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