The new Trademark Act (No. 3) (2016), which came into effect on 28 July 2016, introduced registration for sound marks, something not covered in prior versions of the act. However, it was not until Ministerial Regulation No. 5 (2017 amendment) was issued on 1 September 2017 that it became possible to file applications for sound marks in Thailand.

Filing a sound mark application

Pursuant to clause 11 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, Thailand’s trademark office is only accepting flash drives containing audio files of sound marks, saved in MP3 or other formats.

The application form requires indicating whether the sound mark is a human sound, an animal sound, music/musical sound or other type of sound. A written description of the mark is also required. The sound mark can be of any length, however, if the sound mark is too long — i.e., longer than 30 seconds — it is possible that it may be considered non-distinctive.

Distinctiveness of sound mark

According to section 7 (11) of the Trademark Act, a sound deemed distinctive should not be: (1) any sound that is directly descriptive of the characteristics of the goods or services applied for; (2) a natural sound of the relevant goods or services; and (c) a sound produced by the operation of such goods or services. Examples of non-distinctive sound marks would include the sound of cows for milk products, the sound of ducks for products made from duck, or the sound of a toilet flushing for sanitary products.

It is possible to prove distinctiveness acquired through use of a sound mark that 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. Evidence to support this would mainly be in the form of video or audio files submitted in a flash drive.

According to section 13 of the act, a sound mark that is registrable must not be identical or confusingly similar to a mark registered by another person for goods or services in the same and/or related classes. This also includes prior word marks that contain an identical or confusingly similar word also found in the sound mark.

Business Law Digest is compiled with the assistance of Baker McKenzie. Readers should not act on this information without seeking professional legal advice. You can contact Baker McKenzie by emailing Danian Zhang at danian.zhang@bakermckenzie.com