Music to the Ears of Trademark Owners: Thailand Opens the Door to Sound Marks
The new Trademark Act, Trademark Act (No. 3) B.E. 2559 (2016) (the Trademark Act), which came into effect on 28 July 2016 introduced registration for sound marks, something which was not covered in prior versions of the Trademark Act. However, it was not until Ministerial Regulation No. 5 B.E. 2560 (A.D. 2017) (the Ministerial Regulation) was issued on 1 September 2017 that it became possible to file applications for sound marks in Thailand.
1. Filing a sound mark application
Pursuant to Clause 11 bis of the Ministerial Regulation, a sound mark applicant must include a clear description together with a clear audio recording of the sound mark. In addition, the applicant may also submit musical notation, sonograph or other graphical representation along with the application in order to illustrate the sound. However, in practice, the Trademark office is only accepting flash drives containing audio files of sound marks saved in MP3 or other format.
The application form requires the applicant to indicate whether the sound mark is a human sound, an animal sound, music/musical sound or other type of sound. In addition, a written description of the mark will also be required in the application form. The sound mark can be of any length, however, according to one of the registrars, if the sound mark is too long i.e. longer than 30 seconds, it is possible that such sound mark may be considered non-distinctive.
2. Distinctiveness of a sound mark
According to Section 7 (11) of the Trademark Act, a sound which is deemed distinctive should not be (a) any sound that is directly descriptive of the characteristics of the goods or services applied for, (b) a natural sound of the relevant goods or services and (c) a sound produced by the operation of such goods or services.
The Department of Intellectual Property (DIP) gave some examples of non-distinctive sound marks as follows:
- the sound of cows for milk products
- the sound of ducks for products made from duck
- the sound of a toilet flushing for sanitary products
3. Proving distinctiveness through use
It is possible to prove distinctiveness acquired through use of a sound mark which is considered non-distinctive if the subject mark has been extensively used and is well known in Thailand such that it has acquired distinctiveness through use. In this regard, evidence to support this argument would mainly be in the form of video or audio files submitted in a flash drive. Other supporting evidence may be in written form.
4. Assessment of the similarity of the sound marks
According to Section 13 of the Trademark Act, a sound mark which is registrable must not be identical or confusingly similar to a mark which is registered by another person for goods or services in the same and/or related classes. This also includes prior word marks which contain an identical or confusingly similar word also found in the sound mark. According to sources at the DIP, although other graphic representations of a sound mark, such as musical notation or sonogram may be submitted along with the application, it is optional. Thus, it is very likely that the registrar would principally consider the similarity of sound marks by listening to the sounds.