Introduction
In 2017, Thailand welcomed the Madrid Protocol system with high hopes for streamlining international trade mark registration. However, the journey has been more complex than anticipated. Let’s explore the key challenges we’ve observed since its implementation.
1. Slow Examination
Unlike the standard 8-10 month period for national applications, International Registrations (IRs) in Thailand face a prolonged wait of 18 months for the initial provisional refusal. This delay extends further, with IRs taking over 2 years for registration, far exceeding the norm for national applications.
2. Challenges with Specification Objections
Specification objections pose a significant hurdle, affecting IRs more frequently. These objections arise from mistranslations by the Trade Mark Office, incomplete initial objections due to the extended timeframe, and stricter examinations conducted in dual languages.
3. Delays in Re-examination
Subsequent objections to specifications prolong the registration delay, often exceeding 2 years before re-examination. This delay is due to a lack of staff prioritizing the examination of new IR applications, contrasting with the more prompt re-examination of national applications.
4. Technical Troubles
Technical glitches further complicate the process as Statement of Grants remain elusive for amended IRs due to the Trade Mark Office’s challenges in updating WIPO with specification amendments. Additionally, transforming IRs into national applications faces technical constraints, highlighting a disparity with the smoother process for national applications.
Conclusion
While the Madrid Protocol aimed to streamline international trade mark registration in Thailand, its implementation has uncovered complexities that demand further understanding and potential reforms to better align with the protocol’s efficiency and uniformity goals. If Thailand is a key market requiring swift enforcement protection, businesses should carefully consider the advantages of filing under the Madrid Protocol versus national application.
The content of this article is intended to provide a general guide to the subject matter. Please reach out to us for advice about your specific circumstances.
For further information, please contact:
Nuttachai Unaratana, Rouse
nunaratana@rouse.com
