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10 August, 2017
On August 7, 2017, the Thai Ministry of Foreign Affairs submitted its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) with the World Intellectual Property Organization (WIPO), making Thailand the 99th nation to become a contracting state under this international treaty and confirming its commitment to the ASEAN Economic Community Blueprint.
The Madrid Protocol will take effect in Thailand on November 7, 2017, and will enable trademark owners in the country to file a single international application designating other members under the Protocol, as well as enabling other member states’ trademark owners to designate Thailand to seek protection in the country. It should be noted, however, that the decision as to whether or not an applied mark is registrable in Thailand will still be based on the Thai Trademark Act, as amended in July 2016.
Some key characteristics of Thailand’s accession to Madrid Protocol are summarized below:
Thailand DIP as Office of Origin and Designated Office
An applicant in Thailand who chooses to file an international application with the Thai Department of Intellectual Property (DIP) must have a pending basic Thai trademark application or registration. After receiving the international application, the DIP will certify the information in the application before forwarding it to WIPO. At that stage, the applicant may choose to extend their trademark protection by requesting to designate jurisdictions under the Madrid Protocol, or wait until after receiving international registration, which should take around two months from the filing date.
There are requirements specific to Thailand for international applications. First, the list of goods for an outgoing international application should match the DIP’s list of goods of basic application/registration, bearing in mind the narrower scope of goods and services as part of the strict examination criteria of the Thai registrar. Second, incoming designations to Thailand from other countries will be examined in the Thai language according to current examination guidelines, which may require amendments to the list of goods or services for compliance with local practice.
Time Frame for Notification of Refusal in Thailand
Thailand has opted for a time period of 18 months, within which the registrar is obliged to issue a notification of refusal of international registrations. However, in the case where an opposition is raised by a third party, the DIP may still notify WIPO of a notification of refusal after the expiry of the 18-month time limit.
In comparison, registration under the national route takes about 12 to 15 months for an applicant to receive the first notification or notice of publication.
Fees and Validity of Registration
Under Thailand’s Declaration of Accession to Madrid Protocol, the government fee (individual fee) for one outgoing jurisdiction designation or one subsequent designation is THB 14,400 per class (approx. USD 420), while the government fee for renewal is THB 18,000 per class (approx. USD 520). An international application is valid for 10 years, with the possibility of renewal.
In comparison, the government fee for filing a new trademark application in Thailand under the national route is THB 9,000 per class (approx. USD 260), and the government fee for renewal under the national route is THB 18,000 per class (approx. USD 520). The government application and renewal fees are lower if the list of goods includes less than five items in one class.
It is important to note that, while the Madrid Protocol will provide a good international registration option, it is unlikely to substantially change the way that trademark applications are examined in Thailand, with the DIP continuing to examine classification of goods and services, and the distinctiveness of trademarks, based on local laws and practices.
For further information, please contact:
Somboon Earterasarun, Director, Tilleke & Gibbins
somboon.e@tilleke.com
