Step to Madrid: The DIP’s Preparation
for the Madrid Protocol
For years, the Thai
Department of Intellectual Property has gradually taken various steps to
prepare for accession to the Madrid Protocol. As the
effective date (November 7, 2017) is
fast approaching, significant progress is being made as follows.
The Madrid Division
currently with 8 staff has been established within the Trademark Office. This Division will be responsible for preliminary examination of the international applications
filed through the Thai Trademark Office as an office or origin as well as
preparation of Thai translations and substantive examination of international
applications designing Thailand.
However, the relevant
officer has insisted that both Madrid and local applicationsbe
examined under a consistent standardsuggesting that that marks held non-distinctive
as well as terms of goods/services held too broadunder the current practice willstill
face the same rejections even when filed through the Madrid system. To avoid such rejections, applicants may have to
specifically customize their international applications in accordance with
the Thai practice or file local applications instead.
Moreover, it would be prudent to ensure that the
terms of goods/services in the international
applications are accurately translated into Thai. Otherwise,
they may be rejected or even worse the scopes of protection may be
jeopardized or unreasonably narrowed.
- Computer system
The Department of
Intellectual Property has implemented an on-line filing
system, under which certain details of Thai basic applications/registrations
can be automatically converted into international applications.
Before using this system, applicants and agents have to register and
verify their identities by presenting original official documents to the
Trademark Office in person. Paper applications may not
system should facilitate filing processes of international applications, but
there may be some difficulties if applicants wish to file basic applications
and international applications simultaneously because
NOVEMBER 1, 2017
Office will have to promptly input details of basis applications into the
system in order that they can be used for filing international applications. Currently, it takes approximately 5 working days for the
Trademark Office to update such details of new applications.
- Relevant regulation
The draft regulation
specifying details of the Madrid procedure has been approved by the Council
of State and should be promulgated soon. According to
this draft, international applications submitted through the Thai Office will
be examined in 25days
after filed, and the applicants will have to rectify incorrectness or
incompleteness (if any) in 15 days
upon receipt of the official notices. In case that the
applications are in good order, the applicants will have to pay official fees
to the International Bureau within 3 days upon receipt of requests from the
Trademark Office. In view of these tight deadlines, the
applicants should closely and consistently monitor status of their
applications in order to ensure timely responses to official notices.
applications, the applicants will have to deal with provisional refusals issued
by the Thai Trademark Office through local agents within 60 days upon receipt
of the relevant notices.
It is a universal truth
that there is no one-size-fit-all system. There is no exception for
the Madrid Protocol, which may not perfectly function in all member states. The authorities, including the Thai Trademark Office, will
have to finely tune the system in accordance with their specific
circumstances. For trademark owners, it would be
beneficial to familiarize themselves to not only the Protocol but also
characteristics of relevant jurisdictions in order that they can effectively
employ the Protocol in those jurisdictions.
THAILAND JOINS MADRID PROTOCOL
On August 7, 2017, the Thai
government officially deposited the instrument of accession to the Madrid
Protocol with the WIPO, marking the starting date of the three-month period
before the Protocol becomes effective in Thailand. Consequently, the Madrid
System will come into effect for Thailand (the 99th member) as from November
In its instrument, the government makes declarations on three issues.
Firstly, a period to issue provisional refusal will be extended to eighteen
months, with further extension possible in case of an opposition. Secondly,
an individual fee to be specified in Ministerial Regulations to be issued by
virtue of the accession will apply to international
applications/registrations. designating Thailand. Thirdly, recordal of
license agreements with the International Bureau will not be effective with
regard to Thai applications/registrations.
After this deposition, the next step is to issue Ministerial
Regulations to elaborate on the process. It is anticipated that the
Regulations will contain the following details:
- All documents submitted through the Thai Trademark Office to the
International Bureau must be in English. If the Thai Office finds an
international application incorrector incomplete, the applicant will have to
remedy it within 15 days upon receipt of a notice. Otherwise, the Thai Office
may not be able to forward the application to the International
Bureau within 120 days and the date of filing with the Thai Office will
not be considered as the filing date of the international application.
AUGUST 17, 2017
If the applicant does not comply with the Thai Office’s notice within
120 days, the application will be deemed abandoned.
- For an international application designating Thailand, the Thai
Trademark Office will translate the necessary content into Thai. In case of
provisional refusal, the applicant is required to appoint an agent in
Thailand to deal with it. The response may have to be in Thai. Incase of
failure to respond, the Thai Office may partially accept the application for
the goods/services in relation to which the refusal does not apply.
- For certification marks and collective marks, the applicant is
required to submit a rule on use and a list of authorized users in
- The relevant forms, e.g. the application form and forms for various
notices, will be prescribed by the Director- General of the Department of
Intellectual Property. Inaddition, the DIP establishes a specialized unit to
handle both inbound and outbound applications under the Madrid System.
As the effective date is approaching, we are monitoring this matter
closely and will keep you informed of all updates.