Scent and Sound Trademark under the Thai Trademark Act

Introduction

In the dynamic world of intellectual property, trademarks play a crucial role in distinguishing goods and services. Traditionally, trademarks have been associated with visual symbols. However, the Thai Trademark Act B.E. 2534 (1991) (Trademark Act) recognizes the need for innovation beyond the visual realm, albeit with certain limitations. While visual and auditory trademarks can be registered under the Trademark Act, the registration of scent trademarks is not yet permitted. This article explores the unique provisions of the Thai legal framework that allow for the registration and protection of select non-traditional trademarks, with a focus on sound trademarks. It also highlights the constraints related to scent trademarks.

Sound Trademark

Sound trademarks introduce a new dimension to brand recognition by utilizing auditory elements for a memorable brand identity. Unlike traditional symbols, sound trademarks engage the sense of hearing, often through jingles or musical sequences, enhancing brand recall and establishing consumer connections.

The amendment of the Trademark Act in 2016 expanded the definition of trademarks to include sounds. For a sound to be registrable as a trademark, it must possess distinctiveness, be free from prohibited elements, and not be similar or identical to existing registered trademarks.

Recognizing the challenges in proving the distinctiveness of sound trademarks, the Department of Intellectual Property (DIP) issued a Ministerial Regulation that outlines the registration process for sound trademarks. According to this Ministerial Regulation, applicants for sound trademarks must provide a clear and explicit explanation of the sound, along with an accurate copy of the sound recording. Additionally, applicants have the option to submit musical notes, sound graphs, or other transcripts that effectively illustrate the sound associated with the trademark. This regulatory refinement ensures a comprehensive and detailed procedure for the registration of sound trademarks, aligning with the evolving landscape of intellectual property law.

According to the DIP’s handbook on trademark registration B.E. 2565 (2022), a sound trademark is considered distinctive if its sound quality does not directly relate to the nature of the products associated with the mark. For example, a sound resembling that of a cow would not be eligible for registration with milk products, and the sound of sea waves would not qualify for registration in the category of hotel services. Furthermore, sounds associated with concepts like speed would be restricted from registration in categories related to cars or delivery services. The handbook emphasizes that the registrar will conduct a comparative analysis of similar sound marks, considering factors such as melody, musical notes, and the words used in the sound marks to determine their distinctiveness and avoid conflicts in registration. This meticulous approach ensures a nuanced assessment of sound trademarks, maintaining a balance between innovation and market clarity in the registration process. One of the notable sound trademarks which have been successfully registered with the DIP is the sound of the pronunciation of “Sofy” which is an adult diaper brand owned by Unicharm Corporation, a Japanese company that manufactures disposable hygiene products and household cleaning products. The pronunciation of the trademark “Sofy” has been notable and recognizable in Thailand for a very long time. On the other hand, an individual, who is the owner of a body massage cream, namely, “Clein” was rejected from registration primarily due to the fact that the pronunciation of the word “Clein” or in Thai pronounces as “คลาย” which in Thai means “loosen” may be considered as relating to the qualities of the body massage cream.

Scent Trademark

Scent trademarks uniquely identify brands through the olfactory senses, providing a memorable consumer experience by linking a specific smell directly to a brand or product. An example of this type of mark is the Play-Doh scent trademark, where Hasbro, a manufacturer of children’s toys and board games, registered the unique fragrance of its popular modeling compound in 2018 with the United States Patent and Trademark Office (USPTO).  However, describing scents precisely remains a challenge, as clarity is essential for registration. This case illustrates the evolving landscape of intellectual property, demonstrating that even scents associated with childhood toys can receive legal protection.

Although the DIP, a member of the World Trade Organization (WTO) and World Intellectual Property Organization (WIPO), acknowledges the existence of scent trademarks. They still do not allow for registration for scent trademarks. The latest development regarding scent as a trademark in Thailand was in 2016 when a bill proposing the amendment of the Trademark Act to include scent trademarks was proposed but ultimately denied. The denial was due to the difficulty in describing a clear and precise distinctiveness of scent, which could be deemed subjective and challenging for the registrar to determine its registrability.

Conclusion

In conclusion, Thailand’s intellectual property laws demonstrate adaptability by accommodating non-traditional trademarks which is sound. While scent trademarks currently face limitations, the global recognition of their importance suggests potential developments in Thailand. Sound trademarks have notably expanded thanks to a forward-thinking 2016 amendment, enabling businesses to register and protect unique sounds. As Thailand continues to evolve its trademark landscape, the inclusion of non-traditional elements reflects a commitment to modern brand protection. Businesses can strategically leverage these provisions to safeguard their innovative brand elements, paving the way for a multisensory future in intellectual property.

Author: Panisa Suwanmatajarn, Managing Partner.

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