… Should the law be more open for ‘Signature Trademark’?
What is ‘Signature Trademark’: –
In Thailand, there is no current laws nor any regulations which provides the formal description of the term “signature trademark”.
However, if considering the principles of trademark law, it is clear that any photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colors, figurative element, sound or combination thereof, which is used or proposed to be used on or in connection with goods/services to distinguish the goods/services of the trademark owner from goods/services of others, can be registered as a trademark.
In this regard, “signature trademark” could be any personal signature (including but not limited to their personal looks, styles, voices, poses, body movements) of a person which is a symbol used in connection with goods/services for indicating that they are the goods/services of the owner of the trademark. Also, it must be assured that such signature look or pose should be distinctive and unique. For instance, if a signature pose or look is to be trademarked, then the description should be so precise that there is no chance for any sort of confusion or similarity with the look/pose created by another.
Why is ‘Signature Trademark’ important: –
In today’s times, given that everything is already digital, everyone can easily become a digital celebrity and get famous on social media e.g., TikToker, Youtuber.
In this role, they are crucial influencers or multipliers for trends in genres including fashion, cooking, technology, traveling, games, movies, politics, music, sports, entertainment which make people get attracted to their personalities.
Thus, their personal signatures (e.g., looks, styles, voices, poses, body movements) can give a commercial value for :
- promoting themselves e.g., a famous pose of the Turkish chef (“Salt Bae – ”) sprinkling salt in his iconic pose, and
- branding propose e.g., Nike’s famous Jumping-man trademark which shows “Michael Jordan’s slam dunk – ”.
What are the challenges of ‘Signature Trademark’: –
1. Thai Trademark Law is not yet extended to cover the protection of motion and multimedia marks.
The Trademark Act B.E. 2543 has laid out a legal concept that a trademark can only be those marks that have been defined by law.
The current definitions of the term ‘mark’ are written in a way that is too narrow to allow for the protection of motion and multimedia marks.
it can be said that Thailand Trademark law now provides protection for those ‘2D’ or ‘3D’ device marks but does not extend to those “signature movement”.
2. Submitting a video file (showing the real movements) with trademark application is still not possible in Thailand.
The problems of the registration of motion and multimedia marks are not only about the improper definition of ‘mark’ and uncovered provisions under the law, but the registration procedure of trademark under Thai law is also one of the gigantic obstacles as well.
In Thailand, if an applicant wishes to file his or her trademark application for registration, the applicant must present the mark sought to be registered by submitting a registration application with a picture of the trademark applying for the registration in Kor.01 form as an original document.
In order to file a trademark application, even if an applicant can file a trademark application using electronic methods (E-filing) where an applicant can submit relevant documents in electronic form, an applicant is still required to submit pictures of such mark in all points of view if the mark is in the format of a picture, drawing, image, invented device or consists of such format thereof and can attach an audio file as required by the Competent officer in the case of a sound mark.
The acceptance of other specimen of trademark representation such as series of still images, screenshots or video clips which are easier to prove the distinctiveness of filed mark remains silence in practical e-filing application.
3. Current trademark protection does not extend to the physical pose per se – people can use such a pose in real-life without fear of infringing the owner’s mark.
“Madam Pang’s pose” and “Carabao’s hand” are famous examples in Thailand. Both are Thai celebrities and their iconic poses have successfully become their registered trademarks.
Although these signature poses are registered as trademarks, the owners (celebrities) only have exclusive rights over those registered goods/services per se – preventing others from using the same/similar trademark on any relevant goods/service.
So far, they seem to have no infringement claim succeeded against the copycat attempts.
The protection of any distinctive “Signature Trademark” is essential in the sense of profits which can be reaped by transfer, licensing, or commercializing the iconic body movements and poses. If these can be protected as “motion marks” and “multimedia marks”, this will increase the ability to expend the goods/services reputation through a wider distribution channel i.e., digital platform. Also, this will enable customers to easily recognize and distinguish these goods/services from those of others.
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Saowaluck Lamlert (APPLE)