Though Thailand has joined the Madrid Protocol since 2017, obtaining trademark protection in Thailand through the Protocol has not been as smooth as expected. Some practices remain uncertain. Recently, the Trademark Office has provided further clarification on two important issues as follows:

1. Certificates and Statements of Grant to be issued

Since the accession in 2017, the Thai Trademark Office has not been able to issue Statements of Grant or registration certificates for applications facing provisional refusals due to technical limitation of the existing computer system. Currently, applicants in around 5,000 applications have managed to overcome the refusals but have not received Statements of Grant or registration certificates form the Thai Office yet. Now, with the improvement of the computer system, the Office plans to start issuing the Statements of Grant and the registration certificates shortly.

If an application faces provisional refusal (and a local agent is appointed), the Thai Office will issue the Statement of Grant to WIPO and the registration certificate to the local agent. For an application not facing provisional refusal, there will be no local agent and the Thai Office will only issue the Statement of Grant to WIPO without automatically issuing the registration certificate. The applicant may however request the certificate from the Trademark Office as evidence of registration. Especially in case of infringement, enforcement authorities may not be familiar with the Statements of Grant and will most likely require the registration certificate (which will be bilingual).

Due to the number of certificates to be issued, substantial delay may be anticipated. In case of urgency, the applicant may instead obtain a certified extract, which can be issued much more timely, as evidence of registration.

2. Partially rejected applications to proceed

It has been highly disputable whether partial refusal shall be applicable to applications filed through the Madrid Protocol or not. According to the relevant Regulations, in the case that the refusal applies to only some goods/services and the applicant does not respond, the application shall be accepted for further actions with the remaining goods/services. In practice, nonetheless, the examiners appear very reluctant to proceed with such an application, viewing that it would be inconsistent with the Trademark Act and the practice for local applications.

It is now settled that the Thai Trademark Office will proceed with those applications. Nevertheless, there may be a substantial delay in this relation since there is no deadline for the Office to do so. With insufficient manpower, the examiners’ priority may be the first-round examination to meet the 18-month provisional refusal deadline rather than reviewing applications with no response.

There remains also a concern about the scope of protection as the examiners reserve the right to reexamine the goods/services in those applications. If they find some of remaining goods/services not acceptable, the examiners will delete these goods/services from the applications. According to the examiners, such deletion shall not be notified to the WIPO or the applicant because the 18-month notification period has expired, and the applicant does not have local agent.

In order to avoid such delays and deletion of goods/services without notification, it is recommended that the applicant designate a local agent to respond to the provisional refusal or at least to establish a communication channel with the Trademark Office.

In view of ongoing changes in the Thai practices, we are monitoring the situation closely and will keep you updated.