Since Thailand’s accession to the Madrid Protocol in November 2017, applicants filing international trademark applications through this system have faced challenges. One long-standing issue has been the lack of statements of grant of protection issued by Thailand’s Department of Intellectual Property (DIP) for Madrid applications that had successfully overcome provisional refusals. This has been a source of uncertainty for trademark owners who waited for clear confirmation of protection in Thailand.

However, good news arrived in the fourth quarter of 2024. The DIP has finally begun issuing statements of grant of protection and certificates of registration for these applications.

I. Key Developments

Statements of Grant of Protection: These are now being sent directly to WIPO, ensuring formal recognition of the trademark’s protection status under the Madrid system.

Certificates of Registration: These are now being sent in parallel to local agents only. Local agents can collect these certificates in person or have them delivered to them by post.

These positive steps mark significant progress in resolving a long-standing bottleneck. However, applicants should be aware that due to the DIP’s limited personnel and the substantial backlog of applications, there may be delays in the issuance of these documents.

II. Unresolved Questions

Despite this progress, the following uncertainties remain:

Ambiguity Around the Date of Grant of Protection

• Neither the statement of grant of protection nor the certificate of registration specifies a clear date of grant.
• Multiple dates are associated with the registration process, including the signature date on the statement of grant of protection, the issuance date of the certificate of registration, and the acceptance date recorded in the DIP’s public database. Additionally, under Thai trademark law, the filing date is deemed the registration date. These dates often differ, leaving applicants unclear about when the registration officially takes effect.
• This ambiguity raises concerns, particularly about when exactly a trademark registration becomes vulnerable to cancellation for non-use.

Applications Without Response to Provisional Refusals

• For applications where the applicants did not respond to provisional refusals, statements of grant of protection remain pending.
• This is especially problematic for applications subject to partial refusals, where the DIP required amendments to certain goods or services. If no response was submitted, the application risks the deletion not only of the refused items but also of other goods or services that were not originally subject to the partial refusal. Upon reexamination before allowing publication, examiners may determine that certain items are overly broad and, at their discretion, remove them from the application. These deletions may occur without notification to WIPO or the applicant, significantly narrowing the scope of protection without the applicant’s awareness. For more details, refer to our previous article “Navigating Madrid Protocol in Thailand: Recent Clarifications from the Trademark Office.”

III. Recommendations

To avoid delays, unexpected deletions, and other complications, it is strongly recommended that applicants appoint a local agent in Thailand to respond to provisional refusals or at least to establish a communication channel with the DIP to ensure timely updates and resolution of any issues. These proactive steps can help applicants protect their trademark rights and navigate the evolving Madrid Protocol processes in Thailand more effectively.

The DIP’s recent actions are a welcome development, demonstrating its commitment to addressing longstanding procedural gaps. Nevertheless, applicants should remain vigilant and take necessary measures to safeguard their trademarks in Thailand. As these processes continue to evolve, DS&B will monitor the situation closely and provide updates in due course. If you have any questions about trademark applications in Thailand or the Madrid Protocol, our team at Domnern Somgiat & Boonma would be happy to assist.