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March 6, 2019

An Update on Sound Mark Protection in Thailand

Informed Counsel

Applications for registration of sound marks have been accepted by Thailand’s Department of Intellectual Property (DIP) since September 1, 2017, in accordance with recent amendments to the Trademark Act B.E. 2534 (1991) and Ministerial Regulation No. 5 B.E. 2560 (2017), as reported in previous issues of this publication (see Informed Counsel Vol. 8 No. 4 and Vol. 9 No. 1). As of the end of January 2019, 39 sound mark applications had been filed by IP owners, including the first Thailand sound mark application—filed by Tilleke & Gibbins on behalf of Uni- charm Corporation—for SOFY and MAMY POKO. Those two marks are also the first two to have successfully matured into registrations.   

Generally speaking, eligibility for trademark registration depends on distinctiveness, not being confusingly similar to a previously registered or filed mark, and not being specifically prohibited by legislation. The bar is raised slightly for sound marks, which must also be shown not to be descriptive of, associated with, or directly caused by the goods or services in question. They must also be no more than 30 seconds long.

The protection of a sound trademark is a relatively new concept in Thailand, and is another option for trademark protection that IP owners from around the world should take great interest in. A full list of sound trademark applications that have been filed with the Department of Intellectual Property so far, and their countries of origin, is detailed below.

Applicants seeking to avail themselves of these protections should be mindful of a number of unique considerations, including the additional criteria that sound marks must meet to be registered, the specific requirements of the application process, the potential conflicts between different types of mark if a sound mark bears certain similarities to an existing word mark, and the potential copyright implications of using certain sounds. Given the number of applications in the first year, and the interest that this new form of protection has received, it is certain that these considerations will not prevent IP owners from protecting their audio brand assets, and this number will only continue to grow as the concept of sound trademark protection in Thailand continues to expand.

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