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
(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.
Nos. 496-502 Amarin Plaza BuildingUnit Nos. 1806-1807, 18th
Floor, Ploenchit Road, Lumpini Sub-District, Pathumwan
District, Bangkok 10330 Thailand
Tel: +66 2 305