8 June, 2018
Since Thailand’s adoption of the Madrid system over 6 months ago, the working group of the Department of Intellectual Property (DIP) has become a source of interesting insights and statistics as detailed below:
Number of Applications
As of May 2018, there have been more than 1,200 international registrations (IR) in which Thailand has been designated a subsequent jurisdiction. This represents a six-fold increase since January 2018, which suggests that more brands will consider seeking trademark protection in Thailand now that they may do so through the Madrid system. This follows trends observed in other member countries.
Composition of Workforce
A "Madrid Application Receiving Office" working group has been formed to handle both inbound and outbound IRs.
The working group is comprised of nine members – two registrars who moved from the local registration team and seven support staff. The registrars are experts from the Trademark Office who are responsible for substantive examination work, while support staff are tasked with, among other things, translating applications from English to Thai. All nine members have better English skills than those who typically handle national applications. We recently learned from our sources that two additional registrars may be assigned to the working group if the increasing number of applications so warrants.
Specifications of Goods and Services
Under current practice, the working group has adopted the Thai Trademark Office's Classification Index of Goods and Services ("Classification Index") as a reference when examining the description of goods/ services for IRs, as well as applications filed under the national route. Among other things, the working group translates specifications of goods/services from English into Thai before determining whether they will be acceptable under Thai practice. If any items are not in accordance with goods and services acceptable under Classification Index, it is likely that the registrars will issue offices action for amendment.
In the future, it is possible that the DIP may collaborate with WIPO to provide the Classification Index database for the public to check acceptability under Thai practice.
Trademark Registrability Trend
The chief of the working group revealed that consideration of trademark registrability under current practice will remain the same for the foreseeable future. However, as detailed in the Pause for Thought section below, decisions of the Thai registrars under current practice are not always reasonable or consistent.
Pause for Thought
Before deciding to obtain trademark protection in Thailand, the applicant may consider whether their marks are better-suited for IR or national applications. While the Madrid Protocol provides a global registration process that may be useful for some, there are still plenty of factors to consider.
For example, the Madrid system is most suitable for clearly distinctive marks or marks which have been continuously used in the country where the IR application is based. Such applications should proceed easily, without the risk of encountering a "central attack" – a situation where applications or registrations in designated countries are adversely affected based on cancellation of the home-country application or registration. On the other hand, applications for weaker marks may run into issues, delays, and refusals, which in the end may result in greater costs than those associated with filing individual national applications.
Some Thai registrars are somewhat notorious for their stances on distinctiveness and descriptiveness of foreign language marks (i.e., English, Japanese, or Chinese), frequently denying registration of marks based on a fairly narrow and conservative application of local laws and practices. Often such decisions are difficult to understand even for native speakers of the languages concerned.
It is still unclear whether and how the Trademark Office may seek to standardize examination of IRs.
Stated plainly, not every trademark is an ideal candidate for IR filing. It may be worth seeking pre-filing advice from local practitioners in Thailand to avoid potential obstacles or objections.
For further information, please contact:
Nont Horayangura, Partner, Baker & McKenzie
nont.horayangura@bakermckenzie.com
