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 Unicharm 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.

The Intersection of Art and Law (from page 9)

Under the principle of moral rights enshrined in the above statutes, no one other than the artist may deface or mutilate a copyright work. Thus, the purchaser of a work of art may be liable to the artist for any acts that harm the reputation or dignity of the artist, which likely includes destruction of the work. In the 5 Pointz case mentioned above, the court awarded significant damages to the artists when a developer unilaterally painted over their graffiti murals.

The Banksy Work 

In the case of the Banksy work described earlier, the art was almost certainly protected by copyright as a work of visual art. The work was a framed print of one of Banksy's most recognizable works displaying a girl watching a heart-shaped balloon float away, out of her reach. The image was originally created by Banksy as a work of graffiti which he reproduced in several places throughout London, and subsequently released in several sets of limited edition prints. Banksy would therefore be entitled to enforce his copyright and moral rights as the artist of a protected work.

It was later disclosed that Banksy himself was responsible for shredding the painting and had intended to completely destroy the work, perhaps as a commentary on the commodification of art by the art world. Had he been successful, he may have been liable to the buyer for the value of the painting, for which the buyer had just bid approximately GBP 860,000. It is debatable whether such an action to recover the value of the painting from Banksy would have been successful, as the buyer had not yet transferred the payment sum for the work and the work had been valued prior to auction at approximately GBP 200,000-300,000. Unfortunately, an analysis of the above issue and the exact timing of when ownership of a piece of art sold at auction shifts to the bidder is outside the scope of this article.

Ironically, Banksy's failure to completely destroy the work had the opposite of his intended effect. The half-shredded work is now entitled "Love is in the Bin," and has been valued at double what the buyer paid for the original work. The work has increased in value due to its notoriety as first a live performance piece, and now a conceptual piece on the inherent value of art.

The buyer is happy to own a "piece" of art history as the only work to date to have been live-shredded by the artist at auction. However, in light of rumors that owners of other Banksy works have attempted similar feats by shredding their own prints, it is highly recommended to refrain from such actions. Doing so would expose the owners to legal claims by Banksy for mutilation of his work without authorization--a violation of his moral rights--and would most likely render the prints worthless.

Just as the artist is responsible for creation of the original work, only the artist may simultaneously destroy the work and increase its value.