Tag: Trademark

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Are Slogans Registrable as Trademarks under the Thai Trademark Act?

Introduction:

In the ever-evolving world of commerce, establishing a distinctive brand identity is crucial for success, both locally and globally. One important element that contributes to this distinctiveness is slogans or catchphrases. Slogans often represent a brand, its products, or its services in a unique way. This raises the question of whether such slogans can be registered and exclusively used by their respective owners. This article explores whether slogans can possess the registrable characteristics under the Trademark Act B.E. 2534 (1991) (“Trademark Act”).

Determining the Registrable Characteristics of a Trademark:

A trademark, which serves as a recognizable symbol indicating the origin of goods, is eligible for registration under the Trademark Act. According to the Trademark Act, a registrable trademark must possess the following characteristics: distinctiveness, the absence of prohibited elements, and non-similarity to or non-identity with existing registered trademarks.

Distinctiveness refers to a trademark’s ability to differentiate itself from other marks associated with different goods or services. It can include unique presentations of personal or corporate names, stylized letters or numerals, distinct color combinations, unrelated sounds, or even a word or phrase. However, the mark should not directly relate to the character or quality of the goods and should not be a prescribed geographical name.

Additionally, a registrable trademark must not contain prohibited elements such as state-related symbols, national flags, royal names, emblems of foreign states, Red Cross emblems, or anything contrary to public order, morality, or public policy.

brown brick wall with quote

Are Slogans Registrable as Trademarks under the Trademark Act?

Subject to the aforementioned registrable characteristics, a slogan can be registered as a trademark if it exhibits distinctiveness, does not contain prohibited elements, and is not identical or similar to an already registered trademark. Examples of a famous registered slogans under the Trademark Act include “รักคุณเท่าฟ้า” (Love you like the sky) and “smooth as silk.” These unique slogans are used by Thai Airways International Public Company Limited to represent their businesses, such as aircraft maintenance and repair, land and air transportation, and hotel operations.

The slogans “รักคุณเท่าฟ้า” (Love you like the sky) and “smooth as silk” are the clear exhibitions of the distinctiveness of words/phrases, as the slogans themselves do not relate to the character of businesses, do not immediately convey to the consumers, or the consumers are required to exercise more judgment/interpretation to understand the businesses provided by Thai Airways International Public Company Limited. Moreover, the sample slogans do not contain a prohibited characteristic, nor are they similar/identical to the other existing registered trademarks, making such slogans registerable.

Conclusion:

A common misconception among non-practitioners is that a trademark must only consist of a person’s name, logos, or invented images. However, slogans can also be registered as trademarks, provided that they meet all the necessary requirements. The successful registration of slogans like “รักคุณเท่าฟ้า” (Love you like the sky) and “smooth as silk” by Thai Airways demonstrates the practical application of these principles across various business sectors.

As businesses continue to navigate Thailand’s dynamic marketplace, it becomes essential to utilize intellectual property laws for trademark registration, ensuring the protection and promotion of brand identity. This highlights the strategic importance for businesses to leverage legal frameworks that uphold both legal and ethical standards, establishing a solid foundation for brand protection and growth in Thailand’s vibrant marketplace.

Author: Panisa Suwanmatajarn, Managing Partner.

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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.

gold and gray bullet tweeter speaker

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.

photo of perfume

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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USTR Annual Review on Thailand Intellectual Property Protection 2023

The Office of the United States Trade Representative (USTR) conducts an annual review of intellectual property (IP) protection and enforcement in U.S. trading partners worldwide. Countries are categorized based on their IP infringement rates, with priority given to addressing issues in countries with high rates of infringement (Priority Foreign Country: PFC), i.e., countries on the Priority Watch List (PWL), and countries on the Watch List (WL).

Thailand was previously categorized as a country on the Priority Watch List from 2007 to 2017. However, on December 15, 2017, the USTR upgraded Thailand’s IP protection and enforcement status to the Watch List. Currently, Thailand remains on the Watch List along with 22 other countries. The USTR’s Notorious Markets Report for 2022 identified the MBK Center as the only market in Thailand with a high rate of IP infringement.

The USTR’s report acknowledges that Thailand has made progress in improving IP protection and enforcement. Efforts have been made to seize counterfeit and pirated goods, combat the sale of counterfeit goods online, and enhance cooperative measures among governmental agencies. Notable proceedings and plans by governmental agencies include:

  1. Amendment to the Copyright Act B.E. 2537 (1994) to strengthen copyright owners’ rights, allowing them to initiate takedowns or block access to copyright infringement contents on the internet. The amendment also extended the lifespan of photography protection and facilitated Thailand’s accession to the World Intellectual Property Organization (WIPO) Copyright Treaty (WCT).
  2. The development of the Thai Customs IPR Recordation System (TCIRs), an online system where right holders can submit trademark and copyright information to customs officials for verification of authenticity in imported, exported, or transit goods.
  3. Cooperative measures among governmental authorities and organizations to combat the sale and advertisement of counterfeit goods online and online piracy. A Memorandum of Understanding (MOU) has been established between right holders and advertising associations to restrict support for websites that infringe on intellectual property.

However, the USTR report also highlights concerns and areas of improvement. The USTR recommends amending the Patent Act B.E. 2522 (1979) to streamline the patent registration process, reduce patent backlog and pendency, and prepare for accession to the Hague Agreement. Additionally, an amendment to the Copyright Act B.E. 2537 (1994) is suggested to address enforcement obstacles and enable Thailand’s accession to the WIPO Performances and Phonograms Treaty (WPPT).

The Department of Intellectual Property (DIP) is aware of the USTR’s concerns and is taking action to address them. The DIP is currently in the process of redrafting the Patent Act B.E. 2522 (1979) to provide additional protection for right holders, improve the registration process, and align with global standards for accession to the Hague Agreement. Similarly, the Copyright Act B.E. 2537 (1994) is undergoing legislative amendments for Thailand’s accession to the WPPT. Enforcement issues are being addressed through cooperative measures among 17 governmental authorities responsible for seizing and enforcing the law against IP infringers.

Despite ongoing efforts at the administrative, policy planning, and enforcement levels, intellectual property infringement remains a significant challenge in Thailand. The DIP is committed to resolving this issue and working towards removing Thailand from the Watch List countries.

Please note that the information provided is based on the USTR’s Special 301 Report 2023 and other relevant published sources.

Author: Panisa Suwanmatajarn, Managing Partner.

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Thailand – Plan to Accede to WIPO Performances and Phonograms Treaty  

Following being a member of the Regional Comprehensive Economic Partnership (RCEP), Thailand is planning to update the Copyright Act B.E. 2537 (1994) in respect of performing rights in preparation for acceding to WIPO Performances and Phonograms Treaty (WPPT).  

RCEP is a free trade agreement that involves 15 countries in the Asia-Pacific region, one of which is Thailand since 15 November 2020. RCEP includes a chapter on intellectual property which encompasses various aspects of intellectual property protection, such as trademarks, copyrights, patents, trade secrets, and geographical indications. As a party to RCEP, countries are expected to comply with minimum standards for intellectual property protection, based on international agreements such as the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and other relevant treaties like WPPT. It primarily deals with the protection of performances and phonograms, which are a subset of intellectual property. Currently, the current Copyright Act B.E. 2537 (1994) does not meet the minimum standards of WPPT. Thus, the Department of Intellectual Property, Ministry of Commerce is proposing the revision of the current Copyright Act B.E. 2537 (1994).  

black android smartphone on top of white book

What will be changed?  

Originally, performing rights under the current Copyright Act B.E. 2537 (1994) primarily followed the Rome Convention for the Protection of Performers, Producers of Phonograms, and Broadcasting Organizations (Rome Convention). The definition of “Performers” under the Rome Convention differs from that of WPPT. Under WPPT, “performers” are actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore. The latter part of the preceding definition will be imported to the Copyright Act B.E. 2537 (1994). The definitions of “sound recording,” “publicly available,” and “advertising” will also be changed to align with WPPT.  

Increase the performer’s rights to have exclusive rights over the recorded performance. The right to receive fair compensation for the use of sound recordings when such recordings have been uploaded on the Internet, regardless of whether it has a commercial purpose or not. Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.  

Impose fairer remuneration for performers and moral rights for the use of sound recordings in broadcasting or communicating to the public.  

Abolish the minimum penalty rate in the Copyright Act B.E. 2537 (1994) so that the court can exercise its discretion to punish offenders at an appropriate rate.  

The benefits of this revision are expected to enhance the performing rights and producers of sound recordings in accordance with international standards. Currently, the proposed revision is in an early stage. It needs to go through the final stage of the administrative level and then the parliament.

Author: Panisa Suwanmatajarn, Managing Partner.

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