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Madrid Protocol: Trademark Registration System and Thailand’s Preparation for Accession

Intellectual properties, particularly copyright, patent and trademark, serve as profoundly valuable assets for a business, and different sets of laws have been established to protect the exclusive rights of each holder of intellectual property. Some intellectual properties require notification or registration in order to obtain protection. Formerly, protection of rights only applied exclusively in the countries where the properties were created. Systems of international protection over intellectual properties have now been adopted by means of multilateral agreements.

Thailand places high importance on protection over intellectual property, and in order to expand such protection to meet international standards, Thailand has entered into several international conventions on intellectual property, namely the Berne Convention for the Protection of Literary and Artistic Works, the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty. Additionally, Thailand is in the midst of preparing for accession to the Madrid Protocol concerning the international registration of trademarks.

One crucial aspect for accession to the Madrid Protocol is to reform the current Trademark Act B.E. 2534 (the “Trademark Act”) to be in line with the regulations of the Madrid Protocol. The Department of Intellectual Property, the government authority mainly in charge of leading Thailand into the accession to the Madrid Protocol, has created a draft amendment of the Trademark Act (the “Bill”) to be proposed to the Cabinet and Parliament for approval.

Key Features of the Bill

  1. Description of Goods and Services

    Applicants are no longer required to give descriptive details of their goods or services, according to the Nice Classification.
  2. Filing an Application with Classes of Trademarks

    More than one class of goods and services can be filed within one application (multi-class application). Currently, the Trademark Act only allows for one application per one class of goods or service.
  3. Registration of Series Trademarks

    The Registrar’s authority to order whether identical or similar trademark applications of the same applicant shall be associated and registered as a series trademark shall be revoked.
  4. Assignment of Rights and Inheritance Rights

    Rights of each trademark can be assigned and inherited in whole or in part of the classes registered with the mark. And, the provision of the law on assigning and devolving an entire series of trademarks shall be nullified.
  5. Renewal of Trademarks

    Trademark owners may file trademark renewal applications within 6 months after the expiration of such trademarks; however, an additional 20% of the renewal fees must be paid.
  6. Significant Provisions on Registration of Trademarks under the Madrid Protocol System
    • Registration Date

      Once a trademark is successfully registered under the Madrid Protocol system, it is deemed that the date on which the application was filed to the Office of Origin is the registration date.
    • Time Frame of the Issuance of Registrar’s Office Notification/Action

      A registrar is obligated to examine the trademark and issue an Office Notification/Action within 18 months from the date the application was filed notifying whether such trademark is able to be registered. If the registrar fails to fulfill this obligation under such period of time, it is deemed that the trademark is registered.
    • Central Attack System

      Within five years from the date of registration of application filed under the Madrid Protocol system, any whole or partial withdrawal, abandonment, refusal or cancellation of the basic application or basic registration, which is first filed or registered in the country of office of origin, and are used as a base for such Madrid Protocol application, will lead to the withdrawal, abandonment, refusal or cancellation of the registration of the Madrid Protocol application to the same extent.
    • Conversion of Application under the Madrid Protocol System to Conventional Application System

      Three months after a trademark application filed into the Madrid system is revoked, abandoned, rejected or cancelled, the applicant may convert their application to a conventional application. The filing date under the Madrid Protocol system will be deemed as the filing date of the conventional application system.

This trademark bill does not provide any amendments on the current examination method that a registrar shall follow in order to meet international standards, but such amendments may be mentioned in ministerial regulations to be enacted in the near future. However, if the current method of examination remains in force, it is most likely that a large number of applications filed under the Madrid Protocol system will be rejected. Consequently, rejected applications will lead to the Central Attack System which may subsequently affect the registration results of other contracting states. Conversion of the Madrid Protocol system applications to conventional applications system can be an escape to this complication; however, it this time-consuming and not cost-effective for the applicants.

By Rawat Chomsri (Partner) and Panisa Suwanmatajarn (Associate) © July 2012
Khun Rawat can be reached at Rawat@siampremier.com
Khun Panisa can be reached at Panisa@siampremier.com